What seems many years ago I used to manage a nice enterprising company called Scanchem UK Ltd. It was based in Macclesfield, not the most glamorous town in the UK, but was (?) home to Astra Zeneca.
Scanchem was noted for its innovation in developing new ingredients from China and Korea notably sweeteners and Amino Acids. Scanchem was a pioneer in Aspartame from Korea, Mexico and China. It also added Acesulfame K in around 1995 and enjoyed good sales on sweeteners. Hoechst had a patent on AceK and warned Scanchem and others about infringing. However a licence was granted and sales continued with 10% royalties to Hoechst.
Nutrinova was formed out of Hoechst and all assets including patents were transferred or assigned to Nutrinova. The new regime did not seem to be happy with the licence and took steps to change this by suing Scanchem and others. They whittled everyone away except Scanchem and Arnold Suhr, who they decided to make an example of. A legal case ensued in the Courts of Justice, London which took 13 days and a lot of money. The judge did note that Nutrinova had spent a disproportionate amount on the case.
Then Nutrinova decided to sue Scanchem for all the years of the licence which a patent holder is entitled. You can do this if you had the patent assigned correctly and registered it in the time allotted at the UK Patent Office. It transpires that new independent evidence brought to light alleges that not all was right in this matter. If you get a patent assigned you have 6 months to register to have full rights to sue for all the past years. It is alleged, in 1998 Nutrinova found out that they had not registered the assignment of the patent in time and so could not sue Scanchem for all past deeds.
How could they remedy this? Well, it now seems the course of action was that they sell the patents back to Hoechst [(BUT, AS THE NEW EVIDENCE SHOWS, NOT THE CORRESPONDING US PATENTS, which were subject to the same global sale agreement dated 28th August 1997)] then buy them [(the UK patents)] back and make it look like there had been a recent assignment (followed by a recent sole and exclusive licence to Nutrinova UK Ltd). The UK Patent Office it seems have a history of inducing illegal reactions to their challenges of defective registration applications and, to avoid challenging patent agents and individuals wherever possible, would substitute the application form as though it was “sufficient to establish the transaction” and as though it was “proof” of the payment of stamp duty, telling any aggrieved inquirer wanting to see the documents that the register software and registration confirmation letters used standard text referring to documents, even when no documents were received . This was probably well known to those in the legal know. However just to make sure the plan did not backfire it is alleged, they took the new assignments along by hand to both the stamp office and the Patent Office. If any thing was queried too much they could always take them away with apologies (this happened in a similar case which came before the same judge in 1996 who Nutrinova and Arnold Suhr came before in 2001). Although the two forms indicating an assignment dated 20th August 1998 and indicating a sole and exclusive licence dated 25th August 1998 were stamped “delivered by hand” to the Patent Office on 17 September 1998, these were transported to the main Office in Newport for processing by the Assignments Section, who would need to see copies of the assignment and licence to ensure that they complied with the relevant legislation. However, inspection of the files, in so far as the Patent Office was willing to disclose them on 15 April 2013 and 9 May 2013, revealed no copy of the assignment and no copy of the sole and exclusive licence. As no signature on any form was “proof that you have paid stamp duty” (though, to evade the necessary document checks, such misrepresentation was attempted on a grand scale by the Patent Office in 1998/1999 and immediately slammed down by the Stamp Office, whose solicitors insisted on the actual documents being inspected) the question remains as to where and when the documents disappeared – there having been no point whatsoever in taking a parent company-to-subsidiary company assignment and exclusive licence to the Stamp Office in September 1998 to get a 50 pence stamp added, unless they were to be presented to someone as unquestionable evidence of the transactions and “proof that you have paid stamp duty”. The judge in the Arnold Suhr case in 2001 required Nutrinova to make full disclosure of “the reality of the totality of the transactions” to the stamp office, as he said that “you cannot explain this document (the 50p-stamped assignment) without looking at the reality of the totality of the transactions”.
The new evidence arose from sophisticated and time-consuming international patent landscape mapping, something which I gather might become a quicker process in the light of new software for patent assignee guessing.
Unfortunately this is called fraud and the matter has been submitted to the UK police to investigate. http://www.proceduralirregularity.org/EMAIL-TO-GWENT-POLICE-(1a&2)-10-09-2013.pdf
Nutrinova succeeded in their case against Scanchem then again with Arnold Suhr in 1991 and sent a stern warning across the world. Their final solution to the problem possibly earned them profits of a few hundred million dollars for the sake of spending a few million in legal ( Illegal, surely ?) fees with lawyers Taylor Wessing who advised them on these two cases. Taylor Wessing give advice on patent registration http://www.taylorwessing.com/synapse/ip_registrationofassignments.html
I wonder what they would say to Nutrinova if the case arose today if these allegations prove true.
We await to see the results of Police Action