Re Irish Patent Number 52364

JurisdictionIreland
JudgeMr. Justice Kelly
Judgment Date20 January 2005
Neutral Citation[2005] IEHC 114
Docket NumberRECORD No. 2 PAP/2004
CourtHigh Court
Date20 January 2005

[2005] IEHC 114

THE HIGH COURT

COMMERCIAL

RECORD No. 2 PAP/2004
Patent No 52364: Merial Ltd v Sankyo Ltd, In re
IN THE MATTER OF IRISH PATENT NUMBER 52364 FILED ON 25 th FEBRUARY, 1982, REGISTERED IN THE NAME OF SANKYO COMPANY LIMITED IN RESPECT OF AN INVENTION ENTITLED "ANTHELMINTIC COMPOSITION AND THE USE THEREOF" WHICH EXPIRED ON 21 st FEBRUARY, 2002

AND

IN THE MATTER OF SUPPLEMENTARY PROTECTION CERTIFICATE NUMBER 2002/003 FOR THE SAID PATENT FILED ON 15 th FEBRUARY, 2002, DUE TO EXPIRE ON 21 st FEBRUARY, 2007, FOR A PRODUCT IDENTIFIED AS "A COMPOSITION COMPRISING IVERMECTIN AND PARAZIQUANTEL"

AND

IN THE MATTER OF THE PATENTS ACT, 1992

AND

IN THE MATTER OF COUNCIL REGULATION (E.E.C.) NUMBER 1768/92 OF 18 th JUNE, 1992

RSC O.99

MERIAL LTD v SANKYO CO LTD UNREP 16.12.2004 2004 EWHC 3077 (PAT)

TERRELL & YOUNG TERRELL ON THE LAW OF PATENTS 14ED 1994 342

INTELLECTUAL PROPERTY

Costs

Patent - Petition for revocation - Order made on consent - Warning letter - Whether failure to send warning letter fatal to award of costs - Costs awarded to petitioner (2004/2 PAP - Kelly J - 20/01/2005) [2005] IEHC 114

In re Patent No 52364: Merial Ltd v Sankyo Ltd

The respondent consented to the making of an order revoking the supplementary protection certificate granted to the petitioner. However, the respondent objected to the award of costs in favour of the petitioner and applied for the costs to be awarded in its favour on the grounds that the petitioner failed to send a warning letter to the respondent prior to the presentation of the petition.

Held by Kelly J. in awarding costs to the petitioner: That there was no obligation to send a warning letter prior to the revocation action and the failure to send such a letter was not fatal in relation to the issue of costs. The issuing of a warning letter would not have produced different results in this case. There was no reason to depart from the normal practice on the question of costs and accordingly the petitioner was entitled to the costs of the proceedings.

Reporter: L.O’S.

NOTE of ex tempore ruling of
Mr. Justice Kelly
1

delivered on the 20th day of January, 2005.

2

On 1st November, 2004, a petition was presented to the court by Merial Limited. It sought the following reliefs:-

3

1. That supplementary protection certificate number 2002/003 (designating Irish patent number 52364 as the basic patent) filed on 15th February, 2002, granted to Sankyo Company Limited be revoked.

4

2. Such further and other relief as the court deemed appropriate.

5

3. Costs.

6

An application to transfer the matter to the commercial list was made on 17th December, 2004. That application was granted.

7

This morning, I was informed that I could make an order on consent that the supplementary protection certificate be revoked. The making of such an order brings the proceedings to an end since that is the primary relief sought in the petition. At first blush it would seem that costs should be awarded against the respondent. The normal rule is that costs follow the event pursuant to the provisions of order 99 of the Rules of the Superior Courts.

8

In this case, however, the respondent has objected to the award of costs in favour of the petitioner. It in fact has applied for costs to be awarded in its favour. That is a rather unusual application on the part of a respondent consenting to judgment against it.

9

The principal contention made by the respondent in support of its own application for costs and in resisting the costs order sought by the petitioner is founded on the fact that no letter was sent to the respondent prior to the presentation of the petition. It argues that the course of dealings which occurred between the parties would have led to an expectation that the order sought would have been agreed to by the respondent had an appropriate letter been written.

10

In the course of the hearing this morning reference was made to proceedings between the parties in other European jurisdictions. It is not necessary for me to set forth the history of those proceedings in any detail. It is sufficient to note that in the course of last year...

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