When is an exclusive patent licence not so exclusive?
The first applicant, Damorgold, successfully established that JAI Products had infringed the patent in suit. A residual issue left for later determination was whether the second applicant, Vertilux, was an exclusive licensee of the patent and therefore also entitled to have initiated proceedings pursuant to section 120 of the Patents Act 1990. A written licence was in place between Damorgold and Vertilux that imparted on Vertilux an exclusive licence to exploit the patent, and also purported to record the terms of an oral licence between the parties said to have been in place at least since the start of 2006. Under the licence, Vertilux was entitled to grant sublicences, with Damorgold’s written consent (although Damorgold could waive that requirement).