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Intellectual decision made in the High Court

Patent attorney litigators free to “protect inventions”

The High Court has clarified the rights of patent attorneys to conduct intellectual property litigation.

In what is believed to be the first ruling on the scope of PALs’ (patent attorney litigators) rights, Lewison J held that they are entitled to act where the case involves the broad area of “protecting inventions” – including royalties payable under agreements relating to the inventions.  They are not limited to a narrow interpretation of “protecting inventions”, such as cases involving prosecution and enforcement of patents and related intellectual property.

The Claimant in Atrium v DSB [2011], which concerned whether royalties were due under an agreement, was represented by a PAL, DSB argued that the PAL was not authorised to appear under Art 3 of the Chartered Institute of Patent Attorneys’ (CIPA) Higher Courts Regulations.

If the PAL was not entitled to act there could have been adverse consequences relating to legal professional privilege and costs. 

According to Hogarth Chambers, which acted for both Atrium and DSB, Lewison J held that a royalty dispute would concern the “protection” of intellectual property rights for the purposes of Art 3, and therefore the PAL was entitled to appear.  The fact Atrium concerned deferred consideration did not matter as Parliament could not have intended that PALs conduct litigation for one but not the other.

CIPA president Alasdair Poore says:  “If you look at the strict wording, Art 3 is not limited to the protection of patents and confidential information but the broader term “protection of inventions”.  

Mr Justice Lewison has now confirmed that this covers not only patents but also “protection of technical information” – and that protection of technical information or inventions included handling how they were exploited such as royalty agreements.  This is good news for companies who can now be confident that legal experts who best understand how their technology is protected – patent attorneys – can handle court cases that involve the broad area of protecting inventions.

“They are clearly not restricted just to the narrower field of patents.”

“New Law Journal”: 11.2.11