Friday, 16 November 2012

Continuing an action after the patent content is resolved

Ningbo Wentai Sports Equipment Co Ltd v Wang [2012] EWPCC 51, decided in the Patents County Court, England and Wales (Judge Birss QC) on 9 November, was a relatively small affair. The court was dealing with an application to revoke a patent for a folding golf cart; the ground of revocation was lack of novelty on account of prior art which, the patentee argued, counterclaiming for damages, was made public virtue of the claimant's contractual and equitable breach of confidence. This was a low-key contest over a low-tech product and the submissions were all made on paper. At an earlier stage the patent was held invalid but the counterclaim for damages for breach of confidence remained to be dealt with.

Could the Patents County Court continue to hear the action now that the patent bit of it had been resolved given that, if the action had consisted of nothing other than the counterclaim in the first place, it would have been an action before the Chancery Division of the High Court?  Yes, said Judge Birss QC: the action had been properly started there and the counterclaim clearly arose from the same subject-matter as the patent revocation action.

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