IN THE MATTER OF COURTAULDS LD.'S APPLICATION FOR EXTENSION OF THE TERM OF LETTERS PATENT NO. 511,160

208 No. 10.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1956.] In the Matter of Courtaulds Ld.'s Application for Extension of the term of Letters Patent No. 511,160. 6th February, 1956. IN THE MATTER OF COURTAULDS LD.'S ApPLICATION FOR EXTENSION OF THE TERM OF LETTERS PATENT No. 511,160. Patent-Extension of term-War loss-Application by licensees-Opposition-Manufac- 5 turing process covered by a number of patents-Manufacture by the Applicants under an agreement made in July, 1937, with a third party who undertook in the agreement to obtain for th Applicants from the Patentee exclusive licences under certain patents, including the patent in suit-Licence under the patent in suit in fact executed on the 30th January, 1954, just prior to the expiry of the patent on the 6th February, 1954, and purporting to have effect 10 as from the 2nd November, 1939, the date on which the patent was granted-Held by the Superintending Examiner that the Applicants had failed to establish their title to proceed as licensees-Extension refused-Appeal to Patents Appeal Tribunal-Appeal dismissed-Patents Act, 1949, Sec. 25. Observed, That the language of Sec. 25 is consistent only with the execution of an actual 15 licence as a pre-requisite for consideration of any loss or damage. The matter came to a hearing on tlhe 15th Felbruary, 1955, before the Superintending Examiner (R. G. Atkinson) aoting for the Comptroller-General and he refused to order an extension. The Applicants appealed from this decision to the Patents Appeal Tribunal. Th0 facts appear sufficiently from the judgment of the Tribunal. 20 At the hearing on the 6th February, 1956, represented (as at the hearing before the Superintending Examiner) Graham, Q.c., and S. Gratwick appeared as Counsel for the Appellants (Applicants) and Tookey, Q.c., and S. I. Levy as Counsel for the Respondents (Opponents). Lloyd-Jacob, J.-This is an appeal by Courtaulds Ld., the applicants, for an e~tension of 25 the term of Letters Patent No. 511,160. By a decision dated the 9th May, 1955, Mr. R. G. Atkinson (Superintending Examiner acting for the Comptroller-General) refused the application, after hearing the applicants and the opponents-respondents, Messr:s. Imperial Chemical Industries, Ld. The Letters Patent in suit dated 2nd March, 1937, were granted to Antonio Ferretti, an 30 Italian citizen, on 2nd November, 1939, and the patent lapsed for non-payment of renewal fees on the 2nd March, 1943. Restoration was secured under Sec. 6 of the Patents (Emergency) Aot, 1939, in July, 1946, and on the 4th August, 1953, the Patentee applied for extension under Sec. 24 of the Patents Act, 1949. On the 30th January, 1954, the Patentee granted to the Applicants an exclusive licence which purported to have effeot as from 35 Before THE PATENTS ApPEAL TRIBUNAL. [1956.] REPORTS OF PATENT, DESIGN, AND TRADE, MARK CASIlS In the Matter of Courtaulds Ld.'s Application fq.r Extension of the te!1!l qf Letters Patent No. 5l1,160, 2nd ~ovember, 1939, and on the 5th February. 1954, the Patentee ,withdrew hisapplip,Mipn for extension. 'on the Sllillle,- day, the Applicants applied under Sec. 25 oftheA~t~ w.~~h apJ)lication was. "opposed by the present Respondents. , . c:!J 1 " .. 5 : , .',., > . ' . ' •• J . , . . 'f'G ., I 'ib IS '2'0 '25 30 35 40 45 50 The. history of the matter. has been conveniently summarised. in the deoisiot;l un4er r~yi~w and 1 quote it verbatim:_ "In 1936 as a re:sultof pulblicity in thetechni.cal press concerq;pg " a: process for the m~nufacture of regenerated· protein· fibres' which had peen develop~<,L Py " Antonio Fem;tti and brought to commercial production in Italy by Snia Viscosaof Mil~n', " Messrs. Courtaulds became interested in this process, and wishing to be able to manufl;lcture "regenerated protein fibres by the best available prdcess they entered' into negotiations -With " Snia' Viscosa. In consquence of these negotiations an agreement was reached in -July ,_ 1931.. "with that company wher~by Snia Viscosaundertook to obtain for Messrs. Courtqulds'4iil " exc1usiv ~ 'licence under certain .patents inclUding the patent· in. suit. This' agreement;whi61l "i's of fundamental importance in these proceedings, iscoritlained in exhibit CFK5 attached ,. to Mr. Kearton's declaration of 27th July, 1954. .This. agreement does not sp~ifi¢any ," refer tt) the patent in suit but' to an earlier patent. It also iIl!oludes within its scd~~ "however, any subsequent improvement patents and it is in this class that the patentjn '~it " faUs. The agreement provides that Messrs. Courtaulds should be furnished with all . the "necessary technical information to carry out the proceSs covered by the patents and alsg "provides that Messrs. Snia Viscosa would obtain for Messrs. Courtaulds free excluslve "licences UIKler any patents which might be granted either in Great Britain or. Canada: to "Messrs. Snia Viscosa or to Mr. Ferretti in connection with the process for the mariufactfu:~ "of regenerated protein fibres. The consideration for the a!oove matters was fixed at £15,000 "which was to be paid '!is soon as the above-mentioned teohnical information was furnished. " The agreement also contained provisions relating to the payment of royalties on the amount "I)f yarn manufactured, by Messrs. Courtaulds and to the institution of infringement proceed"ings by Messrs. Snia Viscosa should Messrs. Courtaulds be satisfied that infringement WilS "taking place. Following the above agreement, at the end 0[ July, 1937, a party of Messrs. "Courtaulds' representatiyes. includiIl!g a' chemist and a textile technologist, visited. the "factory of Snia Viscosa in Milan where the Ferretti process was shown to them in operatipn "and they received the technical information, including particulars of the step which forms "the subject"llllatter of the patent in suit, required by Messrs. Courtaulds in order tbit a "similar plant could be installed and operated by them at Coventry. The sum of £15,OQQ "was paid in 1937. With the aid of the information received from the visit of their repi'e,; sentatives to Milan, Messrs. Courtaulds proceeded to erect a pillot ,plant in Coventry which "was completed in 1938 and was in almost continuous use from 1938 to 1947. The operatibrt "of this plant involved the use- of the step which forms thesllibject-matter: of patent No. 511,160'. "It is'particularly to be noted, however, that'no attempt was made by Messrs. Courtaulds··to "require Messrs. Snia Viscosa to implement the clause in the agreement of 1937 relating to " the granting to Messrs. Courtaulds by Mr. Antonio Ferretti of an exclusive licence to, Qperate "'the patent in suit until 30th January, 1954. When this licence was granted it contained "a clause purporting to cause the licence to have taken effect from 2nd November, 1939. " This COUI'Se of events has had im:portant results. In the first place the obligation to pay "the renewal fees of this p (...truncated)