The claimants sought sole ownership of a patent.
Held: The judge had erred when he reversed the decision of the hearing officer that the claimant was sole owner of the patent. The court expressed its regret that the matter had not been resolved without proceedings. Entitlement proceedings were inevitably complicated and expensive. They were more likely in the absence of writing. It was not satisfactory where proceedings continued in two tribunals. The comptroller’s jurisdiction should be limited to more straightforward cases, and a claimant might also start proceedings in the High Court and seek a transfer of the comptroller proceedings. Such disputes were particularly apt for mediation.
Jacobs LJ: ‘the s.8 jurisdiction, although based on an entitlement, is free-standing with its own remedies. The Comptroller is given a very wide discretion once a finding of entitlement is made: he can order licences, cross-licences, the power to sub-licence and amendment of the patent, all to fit the justice of the case – see s.8(2). There is no need for an all-or-nothing solution. So if B, having taken A’s idea, genuinely adds inventive material of his own, there is ample power to produce an equitable and fair commercial solution.’
Judges:
Jacobs LJ
Citations:
[2006] RPC 21, [2006] EWCA Civ 145, Times 31-Mar-2006
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Appeal from – IDA Ltd and others v University of Southampton and others; University of Southampton’s Applications Patc 28-Jul-2004
Disclosure and enablement are distinct concepts in patents law, each of which has to be satisfied and each of which has its own rules. As to sufficiency: ‘In my view, devising an invention and providing enabling disclosure are two quite different . .
Cited by:
Cited – Yeda 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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Litigation Practice
Updated: 20 August 2022; Ref: scu.238786