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United Kingdom Intellectual Property Office Decisions |
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You are here: BAILII >> Databases >> United Kingdom Intellectual Property Office Decisions >> Allergan Inc v Merz Pharma GmbH Co. KGaA (Patent) [2006] UKIntelP o27106 (22 September 2006) URL: http://www.bailii.org/uk/cases/UKIntelP/2006/o27106.html Cite as: [2006] UKIntelP o27106 |
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For the whole decision click here: o27106
Summary
Allergan, which is already the proprietor of this patent, sought a determination from the comptroller under section 37 that it is indeed the true proprietor. They brought this action because they thought Merz might contend its entitlement in the future, Merz having brought entitlement proceedings against related patent applications in Germany. Merz said they did not wish to be party to the action but wanted to have the patent revoked, had brought an action to that end in the Patents Court, and gave an undertaking that they would not commence entitlement proceeding in the UK.
Merz contended that section 37 does not provide for a patentee to refer the question of entitlement in respect of its own patent to the comptroller, that given their undertaking there was no cause of action for Allergan to pursue and that Allergan should therefore withdraw, or failing that, that the comptroller should refuse to entertain the reference. Alternatively, they said that the UK entitlem ent action was the same or a related cause of action to those being pursued in the German courts, that Article 27 or 28 of the Brussels Regulation (EC) 44/2001 should apply, and the comptroller should therefore stay the UK action pending the outcome in Germany.
The hearing officer found that section 37 did allow a proprietor to make a reference in respect of its own patent but only if a claim of right had been made against it. In the present case, no claim of right had been made since the actions in Germany, although related, were different causes of action. In addition in the present case it was doubtful whether the proprietor could make an effective case on behalf of the defendant. The Hearing Officer consequently found that the case was not one that should be determined by the comptroller and struck out the action.
