French v Mason and Another
| Jurisdiction | England & Wales |
| Judgment Date | 23 October 1998 |
| Date | 23 October 1998 |
| Court | Chancery Division (Patents Court) |
Chancery Division
Before Mr Justice Pumfrey
Trusts - employers' title to patent derived from statute - patent could not be held on constructive trust for employee
For property to be the subject of a constructive trust, it had to come into the hands of the constructive trustee as a result of a breach of fiduciary duty or some other unconscionable dealing.
There was therefore no question of an employee retaining beneficial ownership as against his employer where the employer's title was derived from section 39 of the Patents Act 1977.
Mr Justice Pumfrey so held in the Chancery Division in a reserved judgment allowing an application by the defendants, Paul Julian Mason and Acme Jewellery Ltd, to strike out an allegation in the statement of claim of the plaintiff, Christopher Simon French, that patents 2225925 and 2256576, of which the second defendant was the registered proprietor, were held on constructive trust for him.
Miss Catherine Newman, QC and Mr Jonathan Shaw for the plaintiff; Mr Richard Arnold for the defendants.
MR JUSTICE PUMFREY said that the claim was one aspect of dispute between Mr French and Mr Mason which had its origins in their commercial relationship as manufacturing jewellers.
That relationship had already been the subject of a petition under section 459 of the Companies Act 1985, in which Mr Justice Jacob had held that Mr French, who held 10 per cent of the share capital in Acme Jewellery Ltd, had shown that the affairs of the company had been conducted in a manner unfairly prejudicial to him and made an order for the purchase of his shares by Mr Mason on a valuation as at July 31, 1992.
Acme, which engaged in the manufacture of jewellery, was incorporated in 1978. Mr French joined the company in 1981 as a sales representative and was successful.
In 1985 Mr French was made a director of Acme and in 1986 Mr Mason, who had provided Acme's initial capital, transferred 2 per cent of his shares in Acme to Mr French as a gift.
From some date after Mr French joined the company until the deterioration in the parties' relationship in the spring of 1991 there had been a relationship of quasi-partnership: see: In re Westbourne Galleries LtdELR((1973) AC 360).
In late 1988 Mr French invented an earring sleeper which was marketed under the name "Invincible", the subject of the disputed patents.
It was not in dispute that at the time the invention was made: (i) Mr French was employed by...
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University of Western Australia v Gray (No 20)
...Florida State Board of Education v Bourne (1942) 150 Fla 323 Fine Industrial Commodities Ltd v Powling (1954) 71 RPC 253 French v Mason [1999] FSR 597 Fubilan Catering Services Ltd v Compass Group (Australia) Pty Ltd [2007] FCA 1205 Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984......
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Decision Nº O/275/13 from Intellectual Property Office - (Patent decisions), 23 July 2013
...to be Mr Cooke’s formal title at the time; namely that of senior supervisor. 3 Christopher Simon French v Paul Julian Mason and Another [1999] F.S.R. 597 Mr Cooke’s normal duties as a senior supervisor 77. Mr Cooke has helpfully provided a copy of his contract of employment that was drawn u......
- University of Western Australia v Gray