Horler & Anor v Everseal Stationery Products Ltd [2011] EWPCC 29 (21 October 2011)

Horler & Anor v Everseal Stationery Products Ltd [2011] EWPCC 29 (21 October 2011)

Acceptance of outstanding payments by Mastermailer (assignee of Mail a Doc's debt claim) constituted affirmation of the contract and waiver of the right to demand reassignment under clause 7.2. The right to reassignment was extinguished upon acceptance of payment, and ESPL's ownership of the patent was affirmed. Mail a Doc is not entitled to compel reassignment.

Citation
[2011] EWPCC 29
Parties
Part 20 Claimant: Jonathan Howard Horler; Part 20 Claimant: Mail A Doc Limited; Part 20 Defendant: Everseal Stationery Products Limited
Jurisdiction
England and Wales
Judgment Date
21 October 2011
Procedural Posture
Part 20 Claim in Patent Proceedings / Trial of Preliminary Issue
Outcome
Part 20 claim dismissed
Legal Topics
Patent Ownership, Assignment of Patent, Relief Against Forfeiture, Waiver and Affirmation, Penalty Clauses, Specific Performance
Intellectual Property Contract Law Patent Ownership Assignment of Patent Relief Against Forfeiture Waiver and Affirmation Penalty Clauses Specific Performance

Case Brief

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Parties

Jonathan Howard Horler

Part 20 Claimant

Mail A Doc Limited

Part 20 Claimant

Everseal Stationery Products Limited

Part 20 Defendant

Procedural Posture

Part 20 Claim in Patent Proceedings / Trial of Preliminary Issue

Legal Issues

  1. 1 Whether Mail a Doc Ltd or ESPL owns UK patent GB 2 340 073
  2. 2 Whether ESPL is obliged to reassign the patent to Mail a Doc Ltd under clause 7.2
  3. 3 Whether clause 7.2 is a penalty or forfeiture clause

Ratio Decidendi

Acceptance of outstanding payments by Mastermailer (assignee of Mail a Doc's debt claim) constituted affirmation of the contract and waiver of the right to demand reassignment under clause 7.2. The right to reassignment was extinguished upon acceptance of payment, and ESPL's ownership of the patent was affirmed. Mail a Doc is not entitled to compel reassignment.

Court Disposition

Part 20 claim dismissed

Orders

  • ESPL is entitled to be named as defendant to the main revocation claim