A Small Victory For Patent Common Sense: Earth Closet Orders Are No More

from the insert-joke-here dept

Wed, Nov 23rd 2011 2:31am — Glyn Moody

Sometimes you just have to shake your head over patent law. Here's a practice from the UK that has been going on since 1876, and involving the Reverend Henry Moule's patented earth closet:

If you tell a commercial litigator who is not steeped in the law of patents that a patentee can sue for infringement and then discontinue his claim against the alleged infringer and consent to the revocation of his patent, yet require the alleged infringer to pay a substantial proportion of his costs, his reaction would be one of bafflement. If you went on to explain that this situation came about because the alleged infringer had amended his defence and counterclaim to plead a new piece of prior art he would be none the wiser. This is the practice of the Patents Court in making a See v Scott-Paine order (See v Scott-Paine (1933) 50 RPC 56) previously more robustly known as an Earth Closet order (Baird v Moule's Patent Earth Closet Co Ltd 3 February 1876). Such an order enables the patentee to discontinue his claim and consent to the revocation of his patent on terms that he pays the costs of the action up to the date of service of the original defence; but that the alleged infringer pays the costs of the action from that date down to the date of discontinuance.

So even though the patent holder ultimately acknowledges that the patent is invalid, the person unjustly accused of infringement still has to pay for some of the not inconsiderable costs of a trial that should never have taken place. That hardly seems fair.

But now, in a sudden access of good sense, the English Court of Appeal has said that Earth Closet Orders are inappropriate, and should no longer be made. Among the reasons for the decision, the court noted the following:

Earth Closet orders are seen as a gift from heaven by patentees with a weak case which enables them to take the benefit of a costs order when the amendment was not really the cause of the discontinuance. In addition they will have had the commercial benefit of reliance on a monopoly which, with hindsight, can be seen to have been invalid;

And it only took 125 years for judges to realize this.

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Filed Under: earth closet orders, patents, uk

7 Comments

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Butcherer79 (profile), 23 Nov 2011 @ 4:51am

I'm trying to get my head around it, I'm sure it must've made some sort of sense in the 19th century...

Is this the 'infringer' admitting guilt (therefore paying) but the patent owner saying they know they won't win a future battle so relinquish any claim to said patent?
Why would the infringer pay up... my head hurts now, cheers Glynn!
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Glyn Moody, 23 Nov 2011 @ 6:00am

Re:
As I understand it, this is the patent holder conceding that the patent is invalid in the face of prior art (or similar) presented by the alleged infringer during the trial. The trial is therefore halted, and the question is: who pays?
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Greg G (profile), 23 Nov 2011 @ 6:13am

How about a reversal of who pays? Why can't we get the patent holder that sued to now pay for the court costs of the alleged infringer?

After all, the case never should have been brought to court, therefore the defendant incurred costs that he never should have had to part with, so I would go after the bunghole that sued.
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Anonymous Coward, 23 Nov 2011 @ 8:01am

Minor point, but your date arithmetic is a little off. It's 135 years.
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Anonymous Coward, 23 Nov 2011 @ 8:42am

Re:
"Why can't we get the patent holder that sued to now pay for the court costs of the alleged infringer?"

The plaintiff should also pay what the defendant would have paid had the defendant lost.
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Anonymous Coward, 23 Nov 2011 @ 9:38am

English time
Just chalk it up to "traditional" English time. Have you been the English countryside? Shakespeare would recognize most of what is still there.
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Anonymous Coward, 23 Nov 2011 @ 5:47pm

135 Years
Goodness, what is the world coming to? Are actual judges recognizing that monopolies are bad? And they are using the word "monopoly" in judgments. It only took them the trifling time of 135 years to do it. The speed is breathtaking. Well done, judiciary. Whatever next? Will there be a sudden outbreak of common sense about patent law?
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