Kimberly-Clark Worldwide Inc. v Procter and Gamble Ltd and Another
| Jurisdiction | England & Wales |
| Judgment Date | 24 November 1999 |
| Date | 24 November 1999 |
| Court | Court of Appeal (Civil Division) |
COURT OF APPEAL
Before Lord Justice Kennedy, Lord Justice Aldous and Lord Justice Mantell.
Patents - court's discretion to refuse amendment of patent
Section 75 of the Patents Act 1977 gave the court a general discretion to refuse the amendment of a patent, including refusal in the public interest where the party opposing the amendment alleged abuse of monopoly by the patent holder. The court was not limited to matters which could be taken into account by the European Patent Office in Munich under its amendment jurisdiction.
The Court of Appeal so held, allowing the appeal of the defendants, Procter and Gamble Ltd and the Procter and Gamble Co, against the decision of Mr Justice Laddie on July 6, 1999 to strike out part of their statement of opposition to the amendment sought by the plaintiffs, Kimberly-Clarke Worldwide Inc of their European Patent (UK) 037110, in infringement proceedings against Procter and Gamble.
Section 75 of the 1977 Act provides:
"(1) In any proceedings before the court … in which the validity of a patent is put in issue the court … may, subject to section 76 … allow the proprietor of the patent to amend the specification of the patent in such a manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the court … thinks fit."
Mr Simon Thorley, QC and Mr Colin Birss for Procter and Gamble; Mr Antony Watson, QC and Mr Thomas Mitcheson for Kimberly-Clark.
LORD JUSTICE ALDOUS said that the Patents Act 1977 was enacted to give effect, inter alia, to the Convention on the Grant of European Patents (Munich 1973).
Part I of the 1977 Act was entitled "New Domestic Law". Sections 1 to 25 contained the requirements of patentability, the provisions governing who might apply for a national patent and the procedures to be adopted by the United Kingdom Patent Office upon receiving an application for a patent.
Part II of the Act was entitled "Provisions about International Conventions". By section 77, European Patents (UK) were treated as national patents and therefore attracted the same rights and were subject to the same limitations on enforcement and amendment as national patents.
The European Patent Office was set up in Munich pursuant to the Convention. Its job, in general terms, was to receive patent applications, examine them and when they were in order, publish and grant them.
Part 5 of the Convention contained provisions enabling third parties to file opposition to the patent within nine months of publication of the grant. Amendment was allowed during the opposition procedure provided that the amendment did not add new matter and did not extend the monopoly.
A British inventor could apply for a national...
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