Oxonica Energy Ltd v Neuftec Ltd [2009] EWCA Civ 668 (09 July 2009)

Oxonica Energy Ltd v Neuftec Ltd [2009] EWCA Civ 668 (09 July 2009)

The royalty obligation under the licence deed is determined by whether the product falls within the claims of the original PCT application, not by the scope of granted patents in any particular country at the time of sale. This construction reflects the commercial context, the significance of the know-how licence, and avoids impractical and unreasonable results. The words 'or Licensed Patent' in the definition of Licensed Products do not apply for royalty purposes in this context.

Citation
[2009] EWCA Civ 668
Parties
Claimant/appellant: Oxonica Energy Limited; Defendant/respondent: Neuftec Limited
Jurisdiction
England and Wales
Judgment Date
09 July 2009
Procedural Posture
Civil Appeal / Appeal From High Court (patents Court) to Court of Appeal
Outcome
Appeal dismissed
Legal Topics
Patent Licensing, Know How Licensing, Contract Interpretation, Royalty Payments
Intellectual Property Law Contract Law Patent Licensing Know How Licensing Contract Interpretation Royalty Payments

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Parties

Oxonica Energy Limited

Claimant/appellant

Neuftec Limited

Defendant/respondent

Procedural Posture

Civil Appeal / Appeal From High Court (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether royalties are payable on products falling within the claims of the original PCT patent application but outside the claims of granted patents under the licence deed.
  2. 2 Proper construction of the phrase 'falling within the scope of claims in the Licensed Application or Licensed Patent' for royalty purposes.

Ratio Decidendi

The royalty obligation under the licence deed is determined by whether the product falls within the claims of the original PCT application, not by the scope of granted patents in any particular country at the time of sale. This construction reflects the commercial context, the significance of the know-how licence, and avoids impractical and unreasonable results. The words 'or Licensed Patent' in the definition of Licensed Products do not apply for royalty purposes in this context.

Court Disposition

Appeal dismissed

Orders

  • Judgment of the High Court (Patents Court) upheld
  • Oxonica to pay royalties on products falling within the claims of the PCT application, including Envirox 2