Oxonica Energy Ltd v Neuftec Ltd [2008] EWHC 2127 (Pat) (05 September 2008)

Oxonica Energy Ltd v Neuftec Ltd [2008] EWHC 2127 (Pat) (05 September 2008)

The court held that the definition of 'Licensed Products' in the Licence Deed, referring to products falling within the scope of claims in the Licensed Application or Licensed Patent, must be interpreted in light of the commercial context and the parties' intentions. The agreement was a mixed patent and knowhow licence, and the royalty obligation was not intended to be limited only to products covered by granted patent claims in each country. Therefore, royalties are payable on products falling within the scope of the PCT application claims, even if not covered by granted patent claims in a particular country.

Citation
[2008] EWHC 2127 (Pat)
Parties
Claimant: Oxonica Energy Limited; Defendant: Neuftec Limited
Jurisdiction
England and Wales
Judgment Date
05 September 2008
Procedural Posture
Commercial/intellectual Property (patents) Dispute / First Instance Judgment
Outcome
Claim dismissed; counterclaim allowed in part.
Legal Topics
Patent Licensing, Interpretation of Commercial Agreements, Knowhow Licensing, Royalty Obligations
Intellectual Property Law Contract Law Patent Licensing Interpretation of Commercial Agreements Knowhow Licensing Royalty Obligations

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Parties

Oxonica Energy Limited

Claimant

Neuftec Limited

Defendant

Procedural Posture

Commercial/intellectual Property (patents) Dispute / First Instance Judgment

Legal Issues

  1. 1 What is the correct interpretation of 'Licensed Products' under the Licence Deed?
  2. 2 Does Oxonica owe royalties to Neuftec for sales of Envirox 2 in countries where the product is not covered by granted patent claims but is covered by the PCT application?

Ratio Decidendi

The court held that the definition of 'Licensed Products' in the Licence Deed, referring to products falling within the scope of claims in the Licensed Application or Licensed Patent, must be interpreted in light of the commercial context and the parties' intentions. The agreement was a mixed patent and knowhow licence, and the royalty obligation was not intended to be limited only to products covered by granted patent claims in each country. Therefore, royalties are payable on products falling within the scope of the PCT application claims, even if not covered by granted patent claims in a particular country.

Court Disposition

Claim dismissed; counterclaim allowed in part.

Orders

  • Declaration refused that Envirox 2 is not a Licensed Product for royalty purposes.
  • Oxonica is liable to pay royalties to Neuftec on sales of Envirox 2 falling within the scope of the PCT application claims, even if not covered by granted patent claims in a country.