PO Patents – Inter Partes Decisions
The disputed patent relates to a pile driving device to be fixed to a conventional excavator rather than requiring a dedicated pile driving machine. A previous device of this sort, which relied on a single gripper that could be rotated so as to grip a pile either from the side or from the end, was prone to failure. The device disclosed in the patent improved reliability by having separate side and end grippers, and the proceedings had been conducted initially as though this was the only inventive concept. However, the device also had an improved mechanism for operating the gripper jaws, and by the time of the hearing the parties had recognised that this had to be considered too.
The Hearing Officer rejected the evidence of several witnesses on the grounds that cross examination had shown them to be unreliable. On the basis of the remaining evidence, whilst both companies had collaborated in the development of the device, the Hearing Officer found that the idea of separate side and end grippers had come from one, though not both, of the inventors named in the patent. As he was an employee of Expotech’s predecessor in title, this inventive concept belonged to Expotech. However, the Hearing Officer found that it was Mr Elliott, an employee of BSP, who had come up with the improved jaw-operating mechanism, and so this inventive concept belonged to BSP.
The Hearing Officer therefore found the parties to be entitled in principle to joint ownership of the patent. Recognising the unsatisfactory nature of joint ownership, particularly where the parties are in dispute, he allowed the parties two months to try and negotiate an alternative arrangement.
Judges:
Mr Hayward
Citations:
[2004] UKIntelP o09504
Links:
Jurisdiction:
England and Wales
Intellectual Property
Updated: 26 July 2022; Ref: scu.455907