Journal of Intellectual Property Law & Practice Advance Access originally published online on March 2, 2006
Journal of Intellectual Property Law & Practice 2006 1(5):338-343; doi:10.1093/jiplp/jpl021
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© The Authors (2006). Published by Oxford University Press. All rights reserved.
Markem v Zipher—the Court of Appeal provides guidance on entitlement proceedings
*David Knight is a partner and Beatriz San Martin an assistant in the Field Fisher Waterhouse IP litigation team. They may be contacted at david.knight{at}ffw.com and beatriz.san-martin{at}ffw.com
Legal and practical context. The Markem v Zipher Court of Appeal judgment provides useful guidance on patent entitlement proceedings and, more generally, on the conduct of litigation.
Key points. (i) Patent entitlement. To bring an entitlement action under sections 8, 12, and 37 a party must invoke a breach of some rule of law. Validity is only relevant in entitlement proceedings where a patent or part of it is clearly and unarguably invalid. A claim-by-claim approach is not appropriate in proceedings under sections 8, 12, and 37 and ‘invention’ in these sections refers to information in the specification. The proper approach to entitlement should be to identify who contributed to the invention and determine whether he has any rights to the invention.
(ii) Litigation generally. A witness should be cross-examined as to the truthfulness of his evidence whenever a party wishes to challenge that evidence. Where a party has more than one cause of action relating to the same factual background, consideration should be given to bringing all causes of action in the same proceedings to avoid a future claim being struck out for abuse of process.
Practical significance. This case highlights the importance of a properly pleaded case and of the ongoing need to review the case strategy throughout proceedings.