Question Q194 National Group: United Kingdom Title: The ... - AIPPI

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patent holders choose not to work an invention to suppress its use, or are failing to meet market demand third parties can apply for compulsory licences to work the invention. Such applications may also be applied for where one co-owner is preventing the other from working the invention due to their need to licence a third party, in accordance with the case of Hughes v Paxman [2006] EWCA Civ 818. Compulsory licences cannot be granted until after three years from grant of the patent 6) The groups are invited to investigate once more the question of the applicable law that could be used to govern the co-ownership of various rights coexisting in different countries. This point was left for further study by the paragraph 9 of the resolution adopted in Singapore. And more specifically the Groups are requested to indicate if their national laws accept that the co-ownership of an IP Right, even if there is no contractual agreement between the co-owners, may be ruled by the national law of the country which presents the closest connections with the IP Right. If this is the case, what in the opinion of the Groups would then be the elements to take into the consideration to assess this connection? The Groups of the EU Countries are in this context asked to indicate if they consider that Council Regulation of June 17, 2008 (No 593/2008), so called “Rome I” may be applicable to the Co-Ownership agreements. The established UK law on determining jurisdiction generally applies to disputes regarding the ownership of IPRs. Where such rights are not settled contractually between the parties, jurisdiction will be decided upon established principles which the UK group feels are beyond the scope of this paper. If the UK Courts decide to exercise jurisdiction then it would determine the issue of ownership by reference to the relevant foreign law or laws based on the location of creation. With regard to the Rome Convention on the Law Applicable to Contractual Obligations 1980 (Rome Convention) the UK group consider that it is not applicable in all scenarios but can be informative, and is part of UK domestic law by virtue of the Contracts (Applicable Law) Act 1990. The Rome Convention sets out the rules for determining what substantive law should be applied by courts when resolving contractual disputes, but does not extend to non-contractual (such as tortious actions) obligations. Consequently, it would not assist in matters such as passing off in the absence of a contractual relationship between the parties. In the absence of an express choice of governing law, a court with jurisdiction will have to decide which law to apply to the contract according to the conflict of law principles that apply in that court's jurisdiction. The Rome Convention harmonised the rules for establishing the law applicable to contracts in the EU. Under the Rome Convention, parties are free to choose the law to govern their contract. The governing law clause applies to a wide range of contractual issues. It governs not only interpretation and performance, but also the consequences of breach, including the assessment of damages and limitation (article 10). In the absence of party choice, Article 4 of the Rome Convention provides that a contract will be governed by the law of the country with which it is most closely connected. It will be assumed that this will be the country where the party who is to
effect the performance which is characteristic of the contract has his habitual residence or, in the case of a corporate entity, the country where is has its central administration. It should be noted that, while an express choice of law cannot be overturned, challenges can be made to it under the Rome Convention, which can have the effect of modifying the applicable law, inter alia on the following bases: • Where all the relevant elements are connected with another country other than the applicable law. • Where the choice of forum is different from the applicable law. • Where the public policy of the forum is manifestly incompatible with the application of the applicable law. • Fraud, mistake, non-incorporation or other such grounds under general principles of contract law. The UK therefore uses established principles to determine applicable law and does not treat IP differently from other matters when determining applicable law. It considers the same principles should apply to Rome I (which does not at present apply to the UK). 7) Finally, the groups are also invited to present all other issues which appear to be relevant to the question and which were not discussed neither in these working guidelines, nor in the previous ones for the 2007 EXCO in Singapore. The UK group consider the following issues have not been discussed – Renewals; Surrender; Pre & Post Grant Amendment and Litigation. II) Proposal for the future harmonisation The groups are invited to present any recommendation that can be followed in the view of the further harmonisation of national laws in the context of coownership, specifically on the points raised by the working guidelines above in relation to the current state of their national laws. The UK Group would suggest that the removal of the right to co-own an IPR might raise interesting discussion and present unique opportunities. In general, the UK group believes that a co-owner should be subject to restrictions on his freedom to deal with or to exploit a co-owned intellectual property right; otherwise he has the power to destroy the value of that right. When no agreement can be reached between co-owners, then jurisdiction to resolve such a stalemate should be conferred on, for example, the Intellectual Property Office. The UK group also supports moves towards harmonising these issues on an international basis, because differences in national laws can defeat the expectations of rights owners who structure their relationship with co-owners based on their own national law and the false assumption that the same applies elsewhere. It is the opinion of the UK group that consideration of how to harmonise each IPR should be considered in turn rather than as a whole, and we would recommend that process be commenced with patents. However, the UK group considers harmonisation between Common and Civil law jurisdictions presents problems as they do not all recognise the same rights, and there are even differences as between common law jurisdictions, and
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Question Q194 National Group: United Kingdom Title: The ... - AIPPI

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