IP-2024-000024 - [2024] EWHC 951 (IPEC)

The named inventor and original registered proprietor of the Patent is Professor Shaw P. Wan. According to Ms Shi, Professor Wan assigned his rights in the Patent to the Claimant by virtue of a written assignment dated 29 May 2023. She exhibited a copy of the assignment to her evidence. However, as Mr Akers, pointed out in his evidence, the name of the assignee is Guangzhou Well Lead Medical Co., Ltd, which is different to the name of the Claimant.

This apparent discrepancy was addressed by Mr Cox in his evidence in reply. He stated that the assignee is the same entity as the Claimant, even though the names are slightly different. He explained that Well Lead Medical Co., Ltd is the official name of the Claimant, a Chinese corporation. This is the name that is used, for example, on the Shanghai stock exchange. However, the Claimant’s Chinese name translates to Guangzhou Well Lead Medical Co., Ltd. He also explained that Guangzhou is the city where the Claimant is located and that it is a general requirement under Chinese law that the city or municipal district where a company operates is used in front of a trading name.

During the hearing, I pointed out that as well as the difference in names, there was also a difference in the address of the assignee as recorded in the assignment and the address of the Claimant as recorded in the Claim Form (albeit that they are both based in Guangzhou). Counsel for the Claimant explained to me on instructions that the address on the assignment is the Claimant’s registered address but the address on the Claim Form is the Claimant’s trading address. To demonstrate this, he produced a copy of the Claimant’s German equivalent of the CE certificate for the ClearPetra Sheath which is in the name of the Claimant and uses its registered address (i.e. the same address as that used in the assignment). He also pointed me to the Claimant’s marketing materials for the ClearPetra Sheath at Annex 2 of the Particulars of Claim which uses the same address as the Claim Form.

Mr Akers also noted in his evidence that the registered proprietor of the Patent as shown on the register maintained by the UKIPO is Well Lead Medical LLC, which again is a different name from the Claimant. This was explained by Mr Cox in reply on the basis that there had been an error in the form filed at the UKIPO by the Claimant’s representative, Dorr IP, when registering the assignment in that it referred to “LLC” and not “Co., Ltd”. He said that the Claimant will apply to the UKIPO for the entry to be corrected.

Based on this evidence, I am satisfied that the Claimant is the proprietor of the Patent, even if the register is defective. In this regard I note that s.60 Patents Act 1977 does not require a proprietor to be registered, and indeed s.68 of the Act expressly contemplates that an unregistered proprietor can sue for infringement.