Markem Corporation and Another v Zipher Ltd: CA 22 Mar 2005

A patent which was applied for as a result of a breach of confidence may be capable of giving the victim of the breach the benefit of an interest in the patent. In the UK at least the basis of an entitlement claim must be a breach of the claimant’s right to the invention and that that right must stem from the operation of a rule of law (e.g. breach of contract or confidence). The court emphasised the need to construe the 1977 Act to accord with the European Directive upon which it was based: ‘we begin by what must be the rational way to approach this, whatever section is under consideration. Parts of it are intended to implement the European Patent Convention of 1972. In a peculiarly cack-handed way the draftsman chose to re-number and re-write some of these and then say, in s.130(7) in effect that his re-writing does not count – that the relevant provision is ‘so framed as to have, as nearly as practicable, the same effect in the UK as it has in the EPC’. No one has ever identified any difference in meaning between a 1977 Act provision and the meaning of a corresponding provision of the EPC and we do not suppose anyone ever will.’
There is a clear a public interest (of which the Comptroller is the guardian) in not having apparent monopolies on the register which are invalid: ‘The sooner an obviously invalid monopoly is removed, the better from the public point of view.’
A person (A) who claims to be entitled to a patent which has been granted to someone else (B) could not succeed merely by proving that he had been the inventor and B had not. Jacob LJ said that: ‘[A] must be able to show that in some way B was not entitled to apply for the patent, either at all or alone. It follows that A must invoke some other rule of law to establish his entitlement – that which gives him title, wholly or in part, to B’s application.’


Jacobs LJ


[2005] RPC 76, [2005] EWCA Civ 267




Patents Act 1977


England and Wales

Cited by:

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 . .
CitedRhone-Poulenc Rorer International Holdings Inc and Another v Yeda Research and Development Co Ltd ChD 16-Feb-2006
The patent application had been presented to the European Patent Office and granted only after 13 years. The claimant now appealed refusal to allow amendment of its claim to allow a claim in its sole name. The defendant argued that it was out of . .
CitedCinpres Gas Injection Ltd v Melea Ltd ChD 9-Oct-2006
The claimant had sought a declaration as to the ownership of a patent, and now said that a witness had procured his earlier judgment by perjury. The witness now said that he had formed his statement against a feeling of oppression by the threat of a . .
Part CriticisedYeda 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 . .
See AlsoZipher Ltd v Markem Systems Ltd PatC 16-Jan-2007
. .
See AlsoZipher Ltd v Markem Systems Ltd and Another PatC 25-Jun-2008
. .
See AlsoZipher Ltd v Markem Systems Ltd and Another PatC 1-Sep-2008
This judgment deals with the issue of the scope of the injunction to which Markem should be entitled in support of the undertaking given to HHJ Fysh QC. . .
See AlsoZipher Ltd v Markem Systems Ltd and Another CA 10-Feb-2009
In earlier proceedings, Zipher had given an undertaking not to pursue their claim over and above a certain level. The defendant now sought to hold them to that undertaking. The claimants replied that the undertaking had lapsed when that action had . .
CitedMBR Acres Ltd and Others v McGivern QBD 2-Aug-2022
Contempt Procedures Not to be abused
Reasons for dismissal of contempt application.
Held: The contempt application against Ms McGivern was dismissed and certified as being totally without merit.
The court does not grant injunctions to parties to litigation to be used as a . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 04 August 2022; Ref: scu.223779