Henry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office: ChD 1997

Jacobs J said: ‘I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. Who was responsible for the inventive concept, namely the combination? That was solely Mr Z. It was his idea which turned a useless collection of elements into something which would work. The patent, as I have said already, is really about the joint. The remainder of the elements of the claim, although necessary, are peripheral.’
To base a claim under section 7, it is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art.


Jacobs J


[1997] RPC 693


Patents Act 1977 7(3)


England and Wales

Cited by:

Appeal fromHenry Brothers (Magherafelt) Ltd v Ministry of Defence Northern Ireland Office CA 6-Nov-1998
Robert Walker LJ said: ‘I cannot entirely agree with the judge’s approach in the passage of his judgment (at 706) which I have already set out. I am not inclined to think that the invention was a ‘combination’ of elements. Mr Z saw Mr X’s drawing . .
CitedYeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc and others CA 31-Jul-2006
The claimants sought to amend their claim which had previously been on the basis of a joint ownership, to one of sole ownership.
Held: The application for the amendment being made more han two years after the grant, the amendment could not be . .
CitedYeda Research and Development Company Ltd v Rhone-Poulenc Rorer International Holdings Inc and others HL 24-Oct-2007
The claimants said that the defendant had misused confidential information sent to him to found an application for a patent, claiming wrongly to have been its inventor. The claimant appealed a refusal by the court to allow amendments to the . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 01 May 2022; Ref: scu.244818