High Court considers requirements for an exclusive patent licence (Neurim v Mylan)

Article summary

IP analysis: Neurim (the patentee) and Flynn (Neurim’s licensee) brought patent infringement proceedings against Mylan, and Mylan counterclaimed for revocation of the patent. As part of its defence, Mylan argued that Flynn was not Neurim’s exclusive licensee under the patent and therefore that Flynn had no standing in the proceedings. The High Court (Mr Justice Marcus Smith) held the patent to be valid and infringed, but accepted Mylan’s arguments relating to the nature of the licence granted by Neurim to Flynn and in particular whether it was an exclusive licence. This decision could have significant implications on the drafting of patent licences in future. In particular, it is notable that the judge found it was not an exclusive licence despite the terms of the licence grant expressly stating ‘Neurim grants Flynn…an exclusive licence’. The judge held that this wording was not determinative. Rather, in view of the relevant provisions of the Patents Act 1977 (PA 1977), Flynn’s inability under the...