BDI Holding GmbH v Argent Energy Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 27 March 2019 |
| Neutral Citation | [2019] EWHC 765 (IPEC) |
| Docket Number | Case No: IP-2017-000156 |
| Court | Intellectual Property Enterprise Court |
| Date | 27 March 2019 |
[2019] EWHC 765 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
HIS HONOUR JUDGE Hacon
Case No: IP-2017-000156
Richard Davis (instructed by Beresford Crump LLP) for the Claimant
Alan Johnson and Luke Maunder (Solicitor Advocates) (of Bristows LLP) for the Defendants
Hearing dates: 13–14 February 2019
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
HIS HONOUR JUDGE Hacon
Introduction
‘From waste to value’ is the mission statement of the Claimant (‘BDI’). BDI is an Austrian company which has developed technology to convert waste materials into useful products. One such is biodiesel, a fuel derived from various forms of vegetable or animal fat, including waste oil and grease, which can be used to drive diesel engines.
The Defendants are both members of the Hong Kong Swire Group of companies. The First Defendant is registered in England, the Second Defendant in Scotland. I need not distinguish them and will refer to them collectively as ‘Argent’.
Beginning in 2004 BDI designed and oversaw the construction of a plant for Argent in Motherwell, North Lanarkshire. Argent assumed control of the plant in July 2005. It makes biodiesel from fats, oils and greases recovered from sewers and grease traps.
On 19 June 2014 Argent filed two European Patent Applications, which became EPA 3 011 041 and EPA 3 078 724. They progressed in the joint names of the two Defendants, almost to grant to the extent that B specifications were published and a date for notice of grant was given: 16 August 2017.
On 10 August 2017, BDI filed the present claim for declarations that it is entitled to the patents to be granted pursuant to the two EP Applications and to related relief. The European Patent Office (‘the EPO’) stayed the grant process pursuant to rule 14 EPC.
On the first day of the trial I was told that these proceedings had settled in relation to EPA 3 078 724. I granted a Tomlin Order. The trial concerned only EPA 3 011 041 (‘the Application’).
Richard Davis appeared for BDI, Alan Johnson and Luke Maunder (solicitor advocates) for Argent.
The witnesses
BDI's principal witness was Manfred Baumgartner who is Director of Technology Biodiesel. Mr Baumgartner was an excellent witness who gave clear answers to all questions put to him. The same was true of Martin Reichel, Head of Process Engineering for BDI.
Evidence for Argent came from Michael Scott, Group Technical and Compliance Director of the Second Defendant and the named inventor of the Application. Mr Scott was also a good witness. He was sometimes argumentative, but I think only when at cross-purposes with counsel.
The law
The general law on entitlement to a European Patent Application
This court has jurisdiction to determine the ownership of a European Application pursuant to art.2 of the EPC Protocol on Recognition and s.82 of the Patents Act 1977 (‘the 1977 Act’).
Ownership is settled under s. 12 of the 1977 Act which provides, so far as is relevant:
“(1) At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made) —
(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
…
and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination.”
Under s.99 of the 1977 Act the court has the same jurisdiction as the Comptroller to decide entitlement.
Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2007] UKHL 43; [2008] RPC 1 concerned the determination of entitlement to a granted European Patent. The reference was therefore made under s.37 of the 1977 Act but the principles regarding the resolution of a claim to entitlement are the same. Lord Hoffmann (with whom the rest of their Lordships agreed) set out s.7 of the 1977 Act which states who may apply for a patent:
“ 7. (1) Any person may make an application for a patent either alone or jointly with another.
(2) A patent for an invention may be granted—
(a) primarily to the inventor or joint inventors;
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;
and to no other person.
(3) In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly.
(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.”
Lord Hoffmann stated that s.7(2) and (3) are an exhaustive code for determining who is entitled to the grant of a patent. He continued:
“[19] In my opinion, therefore, the first step in any dispute over entitlement must be to decide who was the inventor or inventors of the claimed invention. Only when that question has been decided can one consider whether someone else may be entitled under paragraphs (b) or (c). In many cases, including the present, there will be no issue about paragraphs (b) or (c). …
[20] The inventor is defined in s.7(3) as ‘the actual deviser of the invention’. The word ‘actual’ denotes a contrast with a deemed or pretended deviser of the invention; it means, as Laddie J. said in University of Southampton's Applications [2005] R.P.C. 11, [39], the natural person who ‘came up with the inventive concept.’ It is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art: see Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1997] R.P.C. 693, 706; [1999] R.P.C. 442. As Laddie J. said in the University of Southampton case, the ‘contribution must be to the formulation of the inventive concept’. Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the prior art. Inventors themselves will often not know exactly where it lies.”
At root, there are two questions to be answered in an entitlement dispute:
(1) What is the inventive concept?
(2) Who devised the inventive concept? The burden
It was common ground that the party seeking to be added as an inventor bears the burden of proving that he contributed to the inventive concept. If he seeks to be substituted as the sole inventor, he bears the further burden of proving that the named inventor did not contribute to the inventive concept, see Yeda at [21].
The inventive concept
The term ‘inventive concept’ has been used in at least three contexts other than entitlement disputes. In two of those the courts have given the term a meaning similar, possibly identical to the meaning adopted by Lord Hoffmann in Yeda.
The Supreme Court considered the scope of a patent claim in Actavis UK Ltd v Eli Lilly and Company [2017] UKSC 48; [2017] RPC 21 and expressed the inventive concept of a claim to be synonymous with ‘the inventive core’ of the claim, to be ascertained by focussing on the problem underlying the invention (at [60], see also [65]).
In Pozzoli SpA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37 (at [23]), Jacob LJ restated in modified form the questions first set out by Oliver LJ in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, at 73, to be applied by the court when assessing obviousness. The assessment may be done by reference to the inventive concept of the claim. Jacob LJ characterised the inventive concept this way:
“[17] What now becomes stage (2), identifying the inventive concept, also needs some elaboration. As I pointed out in Unilever Plc v Chefaro Proprietaries Ltd [1994] R.P.C. 567 at 580:
‘It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage – the concept is what the claim covers and that is that. But that is too wooden and not what courts, applying Windsurfing stage one, have done. It is too wooden because if one merely...
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