IDA Ltd and Others v University of Southampton and Others ; University of Southampton's Applications
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob,Lord Justice Wilson,Lord Justice Ward |
| Judgment Date | 02 March 2006 |
| Neutral Citation | [2006] EWCA Civ 145 |
| Docket Number | Case No: A3/2005/1249 |
| Court | Court of Appeal (Civil Division) |
| Date | 02 March 2006 |
[2006] EWCA Civ 145
Lord Justice Ward
Lord Justice Jacob and
Lord Justice Wilson
Case No: A3/2005/1249
CH/2004/APP/0255
Peter Prescott QC and James St Ville (instructed by Messrs Dewar Hogan) for the Appellants
Daniel Alexander QC (instructed by Centre for Enterprise & Innovation) for the Respondents
This appeal is about who should own a patent. In the Patent Office each side said it should be the sole owner. Mr Sean Dennehey, the hearing officer, held that it should belong solely to IDA, the appellants before us. On appeal Laddie J held it should be held jointly with Southampton University, our respondents.
On 2 nd April 1998 an article appeared in The Times headed "Unveiled: cockroach trap to beat the world". It was about a trap invented by Professor Howse of Southampton University. It said:
"The creatures are lured onto the bridge of the wooden box by a bait. When their feet alight on the electrostatic talcum powder with which it is dusted they slip onto a fly paper and meet their end."
Mr Metcalfe of IDA, the appellants, read that. IDA were specialists in magnetic powders. Mr Metcalfe realised from the reference to "electrostatic" that Professor Howse's invention depended in some way on the stickiness of the powder, stickiness being a property of electrostatically charged powders. He realised that electrostatically charged powders would be apt to lose their charge over time, particularly in humid conditions. He wondered whether magnetic powders would work instead. They would have the advantage of not losing their stickiness.
So he telephoned Professor Howse. It was clearly a conversation for the purpose of business. He told the professor about his idea. Professor Howse told him in more detail how his trap worked: that the electrostatically charged powder adhered to the legs of the insects, thus disabling them so that they slid down the slope to their doom. Prior to the Professor telling him this, Mr Metcalfe did not actually know how the electrostatically charged talcum powder worked – it might have just been to cause the powder to stick to the slope down which insects slid – as Mr Prescott QC for IDA put it "to make the snow stick to the mountain".
Professor Howse followed up Mr Metcalfe's suggestion to see if magnetic powder would work. The powders were supplied by IDA. They were trialled by a couple of his graduate students – they worked. Perhaps surprisingly insects are a bit magnetic and the powder sticks to their legs just as the electrostatic powder had done. The work done by the graduate students was no more than simple routine experimentation. It was not work necessary to enable Mr Metcalfe's idea to be put into practice but work in the nature of mere verification. Any skilled man could have readily done it, given Mr Metcalfe's idea. It is not suggested the graduate students should be named as inventors.
When Professor Howse learned that the magnetic particles worked just as the electrostatic particles had done, he caused the University to apply for a patent. A Mr Ashby was named as an inventor along with the Professor, though in the end nothing turns on this.
Before us Mr Prescott argued that the telephone conversation and, in particular, Mr Metcalfe's proposal to try magnetic powder instead of electrostatically charged powder, was confidential information – given for an obvious specific purpose and not to be used for another purpose, particularly to the detriment of IDA. He reinforced his submission by pointing out that if the disclosure had been non-confidential then it hardly lay in the University's mouth to claim that invention was novel or non-obvious. He submitted that the law of confidence was founded on conscience and that it was clearly unconscionable for the University to take out a patent which would preclude IDA from using its magnetic powders for the very idea which had been first suggested by its Mr Metcalfe.
At the time of the decisions below it was not thought to be necessary, in patent entitlement proceedings, to prove a breach of confidence. So at those stages there was no express finding one way or the other about breach of confidence. But after Laddie J's decision in this case, [2005] RPC 11, [2004] EWHC 2107 (Pat), came Markem v Zipher [2005] RPC 31 in this court. Markem is to the effect that he who claims entitlement of another's patent application or part of it, has to show that in law he is so entitled, typically by virtue of contract or breach of confidence.
It is fair to note however, that IDA through their Counsel, Mr James St Ville, consistently maintained that there was a breach of confidence. There are indeed currently stayed proceedings in the High Court for breach of confidence. In future there should not be separate proceedings for entitlement and breach of confidence. Whether the issue is apt for determination in proceedings before the Comptroller or in High Court proceedings will depend on the circumstances of the case and, in particular, for instance on what relief beyond entitlement is sought.
So far as the present appeal was concerned Mr Alexander QC for the University was willing to proceed on the assumption that Mr Metcalfe's communication was confidential. Given that concession it is not necessary for us to make any finding about the point. Mr Alexander's concession was solely for the purposes of these proceedings.
Turning back to the story here, Professor Howse had already patented his ideas for killing insects using his discovery of the adhesion of electrostatically charged powders to insects' legs. The basic application for this was W094/00980, published in 1994. Claim 1 of this was to:
"A method of controlling pests, such as insects by trapping and/or killing them, wherein at least part of the pest to be trapped and/or killed is exposed to particles carrying an electrostatic charge."
That patent also disclosed the idea of a pesticide with the electrostatically charged particles (see e.g. claim 9). Professor Howse had improved upon that idea with a later patent, first published as WO97/ 33472 in 1997. This was about a better way of associating pesticide with an electrically charged particle – essentially coating small particles of pesticide which in themselves would not carry an electrostatic charge with a wax which would.
Professor Howse accepted that those concerned in making insect traps would have known of his electrostatic trap – "they are probably widely known, yes". Moreover, in the Patent Office pleadings the University asserted that the idea of composite particles to be electrostatically charged so as to attach themselves to insects was "well known in the public domain." Particular reference was made to WO97/33472.
Although both sides suggested other people should be named on the patent (Southampton Mr Ashby, and IDA, Dr Lax), nothing turned on this. The key players in the argument before us were just Professor Howse and Mr Metcalfe.
The above are the essential findings of fact and the assumption as to a breach of confidence upon which the decision is to be made.
IDA applied under s.8 of the Patents Act 1977 for the patent to be put into its name, alternatively into joint names. It is common ground that the decision as to this patent and all patents derived from it follow from the s.8 determination. s. 8, so far as is relevant reads:
"Determination before grant of questions about entitlement to patents, etc.
8.-(1) At any time before a patent has been granted for an invention (whether or not an application has been made for it) –
(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) a patent for that invention or has or would have any right in or under any patent so granted or any application for such a patent; or
(b) …
and the Comptroller shall determine the question and may make such order as he thinks fit to give effect to the determination."
And s.7 so far as is relevant reads:
"Right to apply for and obtain a patent
(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...
To continue reading
Request your trial
-
Yeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc. and Another
...judgment (or delivered the judgment of the Court) in the Court of Appeal. In University of Southampton's applications ("Southampton") [2006] RPC 21, para 8, he said: "Markem is to the effect that he who claims entitlement of another's patent application or part of it, has to show that in l......
-
Markem Corporation v Zipher Ltd
... ... at Zipher or in making the patent applications the subject of the dispute. No case of breach of ... identified these three, saying that the others added nothing. He suggested that if Mr Watson ... with the view of Laddie J in University of Southampton's Appn ... [2005] RPC 11 ... ...
-
Nais v Minister for Immigration and Multicultural and Indigenous Affairs
... ... On 28 January 1997, applications were made for protection visas under the ... where it has similarities to many others and was heard much earlier ... 93 ... 804 _01_0808; Olwa v North Glasgow University Hospitals NHS Trust [2004] UKEAT 0067 _02_2203; ... 100 eg University of Southampton's Applications [2005] RPC 11 at 225–226 [7] ... ...
-
University of Western Australia v Gray (No 20)
...Condenser Corporation (1933) 289 US 178 University of Southampton’s Application [2005] RPC 11 University of Southampton’s Application [2006] RPC 21 University of Western Australia v Gray (No 17) [2007] FCA 924 Victoria University of Technology v Wilson (2004) 60 IPR 392 Windsurfing Internat......
-
Evolutionary Tales: Times of the Best and Worst
...46. Polwood [2008] FCAFC 9, ¶ 48 (quoting Shum v. Intel Corp., 499 F.3d 1272 (Fed. Cir. 2007)). 47. Univ of Southhampton’s Applications [2006] RPC 21, ¶ 39 (“In the context of entitlement to a patent a mere, non-enabling idea, is probably not enough to give the patent for it to solely the d......
-
Management and Enforcement
...Ibid . 554 MGA , above note 311 at 911 (constructive trust may be imposed); similarly, IDA Ltd v. University of Southampton , [2006] EWCA Civ 145 at [40]–[42]. 555 Markevich v. Canada , [2003] 1 S.C.R. 94 at [19]. 556 Valmet , above note 407, classifying IP infringement as a statutory tort,......
-
Righting Inventorship Wrongs?A Multijurisdictional Overview
...46. Polwood [2008] FCAFC 9, ¶ 48 (quoting Shum v. Intel Corp., 499 F.3d 1272 (Fed. Cir. 2007)). 47. Univ of Southhampton’s Applications [2006] RPC 21, ¶ 39 (“In the context of entitlement to a patent a mere, non-enabling idea, is probably not enough to give the patent for it to solely the d......