Key Facts
- •Patent entitlement dispute between Dr. Hill (Claimant) and Touchlight (Defendants) concerning synthetic DNA vector technology.
- •Dispute centers on whether Dr. Hill disclosed the invention before her employment with Touchlight and the scope of assignment under her service agreement.
- •The case involves complex molecular biology and multiple patent applications (UK, China, US).
- •The main point of contention at the CMC was whether to appoint a scientific advisor or allow expert evidence.
Legal Principles
The Court has the power to appoint a Scientific Advisor (SA).
Section 70(3) of the Senior Courts Act 1981 and CPR r35.15
Expert evidence should be restricted to what is reasonably required.
CPR r35.1
Scientific advisors are not to decide issues or give opinions on contentious issues; their role is to provide non-controversial scientific background.
Actavis Group PTC EHF v Actavis UK Ltd [2016] EWHC 1476 (Pat) and Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA [2016] EWHC 27 (Pat)
Parties are entitled to call expert evidence in patent cases; a SA is a supplement, not a substitute.
Halliburton (Court of Appeal)
Fairness requires the opportunity for adversarial proceedings, including presenting and testing evidence.
Halliburton (Court of Appeal), citing ECHR
In patent entitlement disputes, expert evidence may not always be necessary, depending on the specific issues.
Discussion of UKIPO decision BL O/264/21
Outcomes
The Court refused to appoint a scientific advisor without expert evidence.
The complexity of the technical issues and the likelihood of technical disputes arising at trial necessitate expert evidence to ensure a fair and just resolution. Appointing a SA without experts would be unprecedented and create an imbalance.
Permission granted for each party to call one technical expert witness.
To address technical aspects of key issues, educate the court on the technology, and understand disclosures in technical documents.
Experts directed to meet and seek to reach agreement on technical issues, preparing a joint statement for the court.
To minimize the need for extensive cross-examination.