Legal Updates

Intellectual Property: Ownership - Co-ownership of a Patent

In the recent case of Stanelco Fibre Optics Ltd v Biopress Technology Ltd [2004], the courts ruled on the issues of patent ownership, joint ownership and clarified the test in joint ownership for identifying the actual deviser of the inventive concept.

The claimant, Stanelco Fibre Optics Ltd, was in the business of manufacturing capsules from non-animal products for use in the pharmaceutical and healthcare industries, using a technique known as radio frequency dielectric welding. The claimant was the registered proprietor of three families of patents or patent applications concerned with this manufacturing technique ('the Patents'). The defendant, Biopress Technology Limited, claimed that it was entitled to ownership of the Patents or, alternatively, joint ownership of the Patents, under s 7(3) of the Patents Act 1977. The defendant claimed that it had disclosed to the claimant, prior to the filing of the Patent applications, confidential information relating to its research and development of a capsule, made from water soluble material (not gelatin).

The claimant issued proceedings against the defendant for 'declaratory relief' and the defendant counter-claimed for damages for breach of confidence. The court was asked to determine the identification of the actual deviser of the inventive concept set out in the Patents.

Section 7 of the Patents Act 1977 provides:

'(2) A patent for an invention may be granted (a) primarily to the inventor or joint inventors...(3) In this Act, 'inventor' in relation to an invention means the actual deviser of the invention and 'joint inventor' shall be construed accordingly.'

The court ruled that in considering the issue of inventor ship, the basic enquiry that had to be achieved under Section 7 (3) of the Patents Act 1977 was to determine the actual deviser of the inventive concept. That enquiry did not involve any assessment of whether the invention represented a contribution to the prior art (in the sense of obviousness) or an inventive contribution to what the other inventor had created. A test for co-ownership which involved an analysis of whether one party's contribution was truly inventive, or involved more than the exercise of common general knowledge, seemed wholly at odds with the nature of the overall enquiry: it involved applying a different standard to one co-owner from the other. What was relevant was what was claimed in the patent as inventive. However, if the second party merely followed suggestions made to him by the first party, the second party was not taking part in the devising of the invention.

If you require further information contact us.

Email: Dr Rosanna Cooper

© RT COOPERS, 2004. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.




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