Permavent Ltd v Makin

Permavent Ltd v Makin

There is a serious issue to be tried regarding patent entitlement. The claimant faces a real risk of irreparable harm if the defendant is not restrained from disposing of or licensing the patents, and the balance of convenience favours preserving the status quo. However, to avoid injustice, the injunction is conditional on the claimant paying the defendant quarterly royalties at the rate set in the licence agreement, subject to adjustment. Both parties are granted liberty to apply to vary the terms after a specified date.

Parties
Claimant: Permavent Limited; Defendant: Mr. Stephen John Makin
Jurisdiction
England and Wales
Judgment Date
24 July 2017
Procedural Posture
Civil Patent Entitlement Dispute / Interim Injunction Application
Outcome
Interim injunction granted, conditional on quarterly royalty payments and cross-undertaking in damages.
Legal Topics
Patent Ownership, Fiduciary Duties, Interim Injunctions, Constructive Trust, Exclusive Licence Agreements
Intellectual Property Law Company Law Patent Ownership Fiduciary Duties Interim Injunctions Constructive Trust Exclusive Licence Agreements

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Parties

Permavent Limited

Claimant

Mr. Stephen John Makin

Defendant

Procedural Posture

Civil Patent Entitlement Dispute / Interim Injunction Application

Legal Issues

  1. 1 Whether the claimant or defendant is entitled to ownership of the patents in dispute
  2. 2 Whether an interim injunction should be granted restraining the defendant from transferring or licensing the patents pending trial
  3. 3 Whether the balance of convenience and risk of irreparable harm favours granting the injunction

Ratio Decidendi

There is a serious issue to be tried regarding patent entitlement. The claimant faces a real risk of irreparable harm if the defendant is not restrained from disposing of or licensing the patents, and the balance of convenience favours preserving the status quo. However, to avoid injustice, the injunction is conditional on the claimant paying the defendant quarterly royalties at the rate set in the licence agreement, subject to adjustment. Both parties are granted liberty to apply to vary the terms after a specified date.

Court Disposition

Interim injunction granted, conditional on quarterly royalty payments and cross-undertaking in damages.

Orders

  • Defendant restrained from transferring or licensing the patents and patent applications pending trial or further order.
  • Claimant to pay defendant £2,500 per quarter as running royalty while injunction is in effect, subject to adjustment.