Additional Hurdles in UK Entitlement Proceedings

Entitlement disputes under the UK Patents Act have recently undergone
something of a revival with several cases reaching the courts.
Interestingly though, Patent Office figures[1] reveal that the number
of entitlement disputes filed before the Patent Office has remained
steady over recent years as has the number of cases referred from the
Patent Office to the UK courts. Why then is everyone discussing
entitlement disputes under UK Law?

Three recent cases (Markem V Zipher [2005] RPC 31, IDA v Southampton
[2006] EWCA Civ 145, Stanelco Optic Fibres V Bioprogress [2005] RPC
15) all agree that in order to decide upon entitlement, the invention
under dispute must be identified, but simply looking at the claims
does not suffice. One must identify information in the specification
which relates to the “inventive concept” or “heart” of the disclosure
and it is this which is the invention under dispute. Next the rights
in this information must be investigated — who contributed to the
generation of the inventive concept and what employment obligations
were upon them? Their contract of employment may result in their
rights being transferred, typically to their employer. Finally, the
claimant asserting that they have rights in the invention must show
causation: a link or nexus between their inventive concept and the
defendant’s invention. In short, the claimant must show that they
contributed to the invention under dispute either alone (in which case
they should also show that the defendant did not contribute) or with
the defendant.

Different To The American Approach

So far so good. Although the above steps are very different to the
American approach to inventorship and entitlement, they are not wholly
different from the UK approach as set out in previous decisions.
However, in Markem v Zipher, Judge Jacob at the Court of Appeal added
an extra step which has generated much discussion: there must also be
a breach of another separate point of law, such as breach of
confidentiality or contract, by which information relating to the
invention was obtained by the defendant. Without this breach an
entitlement action must fail. Markem could not establish that the
disputed inventions had been created whilst the inventors were under
their employ and that there had been a breach of confidence and/or
contract in the inventors using information available to them whilst
employed at Markem. As such Markem’s entitlement action failed.
Oftentimes, claimants in entitlement disputes have filed separate
actions for e.g. breach of confidence, but from Markem it now appears
that allegations of breach of contract or confidentiality should be
included in the original pleadings. Markem therefore acts as a warning
for employers to ensure that employees sign confidentiality agreements
under UK law to ensure that any information they are exposed to is not
used after employees move on to other companies. This is in addition
to the established statutory provisions under Section 39 of the UK
Patents Act 1977 which automatically transfer rights in an invention
made by an employee to an employer when the invention was made during
the course of the employee’s normal duties or under duties specially
assigned to him.

Conclusion

In conclusion, with respect to entitlement disputes one thing is
certain: actions brought under UK law for the foreseeable future will
depend on the claimant proving a breach of law in addition to showing
they have rights in the inventive concept.

For further information please contact Jon Broughton jon.broughton@hlbbshaw.com at HLBBshaw www.hlbbshaw.com in Epping, Essex, UK

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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