Hughes v Paxman [2006] EWCA Civ 818 (23 June 2006)

Hughes v Paxman [2006] EWCA Civ 818 (23 June 2006)

The Comptroller has jurisdiction under s.37 of the Patents Act 1977 to order the grant of a licence under a patent at the request of a co-proprietor, as Parliament intended to prevent deadlock and enable exploitation of inventions; company law arguments do not bar such jurisdiction, and any fiduciary duty issues are for the company to pursue, not individual shareholders.

Citation
[2006] EWCA Civ 818
Parties
Appellant/respondent: Derek Hughes; Respondent/applicant: Neil Paxman
Jurisdiction
England and Wales
Judgment Date
23 June 2006
Procedural Posture
Appeal From High Court (chancery Division, Patents Court) / Court of Appeal Judgment
Outcome
Appeal dismissed
Legal Topics
Patent Co Ownership, Jurisdiction of Comptroller, Licensing of Patents, Fiduciary Duties of Directors
Intellectual Property Law Company Law Patent Co Ownership Jurisdiction of Comptroller Licensing of Patents Fiduciary Duties of Directors

Case Brief

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Parties

Derek Hughes

Appellant/respondent

Neil Paxman

Respondent/applicant

Procedural Posture

Appeal From High Court (chancery Division, Patents Court) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether the Comptroller has jurisdiction under s.37 of the Patents Act 1977 to order the grant of a licence under a patent at the request of one co-proprietor
  2. 2 Whether company law or fiduciary duties prevent a co-owner from seeking such a licence

Ratio Decidendi

The Comptroller has jurisdiction under s.37 of the Patents Act 1977 to order the grant of a licence under a patent at the request of a co-proprietor, as Parliament intended to prevent deadlock and enable exploitation of inventions; company law arguments do not bar such jurisdiction, and any fiduciary duty issues are for the company to pursue, not individual shareholders.

Court Disposition

Appeal dismissed

Orders

  • Reference under s.37 reinstated; matter remitted to Comptroller for further consideration.