Patents: inventive concept in determining entitlement

Summary

The Intellectual Property Enterprise Court (IPEC) has held that the inventive concept of a European patent (EP) application had been devised by an employee of the applicant, so the applicant was therefore entitled to make the application.

Background

As the national court of the applicant, the UK court has jurisdiction to determine the ownership of an EP application (Article 2, EPC Protocol on Recognition; section 82, Patents Act 1977) (1977 Act).

A patent for an invention may be granted: primarily to the inventor or joint inventors; or to any person who, by any rule of law, or an enforceable term of any agreement entered into with the inventor before the making of the invention, was at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the UK (section 7(2), 1977 Act) (section 7(2)).

"Inventor" means the actual deviser of the invention (section 7(3), 1977 Act) (section 7(3)).

In Yeda v Rhone-Poulenc, the House of Lords held that sections 7(2) and (3) determine who is entitled to the grant of a patent ([2007] HL 43).

In Actavis v Lilly, in relation to the doctrine of equivalents, the Supreme Court considered the term "inventive concept" to be synonymous with the inventive core of the claim, to be ascertained by focusing on the problem underlying the invention.

In Pozzoli SPA v BDMO SA, in the context of the assessment of inventive step, the Court of Appeal characterised the inventive concept as identifying the essence of the claim (www.practicallaw.com/6-374-1001).

Facts

B developed technology to convert waste materials into useful products, including biodiesel, a fuel derived from vegetable or animal fat, including waste oil and grease. B designed and oversaw the construction of a plant for A for making biodiesel from fats, oils and greases recovered from sewers and grease traps.

A later filed two EP applications. Before these were granted, B filed a claim for declarations that it was entitled to the patents to be granted under the two EP applications, and to related relief.

The European Patent Office stayed the grant process pending…