For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Tuesday, 5 October 2004

WELDING PATENTS DON'T MEAN WELDED OWNERSHIP


Subscription-only legal information service Lawtel features a fresh patent case, Stanelco Fibre Optics Ltd v Bioprogress Technology Ltd , heard by Patents Court deputy judge Christopher Floyd QC last Friday.

Stanelco sought a declaration that it was entitled to a patent while Bioprogress counterclaimed that it was entitled to the sole or joint ownership of three families of patents and patent applications, plus damages for breach of confidence. The patent applications, in the field of capsule manufacture, involved a technique known as radio frequency (RF) dielectric welding as the method of sealing ingestible capsules made from water-soluble polymers. In 1998 Bioprogress was investigating new methods of sealing capsules made of polymers and approached Stanelco, which was well known for its RF welding capability. After Stanelco welded some samples for Bioprogress, the two companies entered into a non-disclosure agreement relating to the confidentiality of information disclosed by each side. After the parties' relationship broke down, Stanelco filed the three families of patent applications in issue.

On the issue of ownership, the judge ruled as follows:

* Who is the "inventor" of an invention? "Inventor" was defined in s.7(3) of the Patents Act as the "actual deviser" of the invention. Where a person came up with and communicated an idea consisting of all the elements of a claim, even though it was just an idea at that stage, that person would normally at the very least be an inventor of the claim for the purposes of s.7, since "reduction to practice" was not a necessary component of a valid claim to any entitlement.

* Who is the "actual deviser"? Where joint invention and co-ownership was claimed, the Act called for determination of the actual devisers of the inventive concept. That inquiry did not involve any assessment of whether the invention represented a contribution to the art or an inventive contribution to what the other inventor had come up with. If the second worker merely did what was suggested to him by the first worker, he was not taking part in the devising of the invention.

* Who owned the disputed inventions? The core inventive concept was the use of RF welding to weld water soluble polymeric film materials into the shape of capsules, though the second and third families of claims involved additional inventive concepts. Bioprogress originated the idea of a process for making capsules by RF welding water soluble films and was an actual deviser of that invention, although it had not then been reduced to practice. All Stanelco did was what any skilled person would have done by exercising common general knowledge to demonstrate that the idea worked. Thus Bioprogress, not Stanelco, devised the inventive concept of the first family of claims. If what was added by a subsidiary claim did not create a different inventive concept, ownership of the patent based on those claims should not be divided up. Two of the claims in the first family disclosed an additional inventive concept devised by Stanelco, so that the two companies were joint inventors of the subject matter of those claims. The second and third families of claims involved a further inventive concept devised by Stanelco, which was not simply a refinement of the core concept, so that Stanelco but not Bioprogress was the inventor of those claims.

* Was there acquiescence? On the facts Bioprogress had not acquiesced in the making of the patent applications and was not prevented from asserting its claims by estoppel.

On the issue of breach of confidence, Bioprogress' approach to Stanelco had given rise to an obligation of confidence: Bioprogress disclosed the core inventive concept to Stanelco and there had been a misuse of that confidential information, to Bioprogress' detriment, when Stanelco used it as the basis for its own patent applications. The action for breach of confidence accordingly succeeded.

The IPKat likes the restrictive notion of an inventor being the "actual deviser" in an intellectual sense, thus excluding the person who first reduces the invention to practice -- but this must be the actual deviser of the invention as claimed, not the person who just comes up with the bare idea.

Since it's Tuesday, more on welds here and here

1 comment:

Anonymous said...

Hi,

I have some really good websites below that can help you with credit repair and legal law forms.
You can also check out the news section at "Latest Legal Articles"

Preparing legal documents has never been easier
with our library of forms, agreements, and checklists. It is valuable to small and growing businesses and entrepreneurs.

Have you ever needed a legal form but didn't know where to get one? Have you ever wanted to cover yourself in a legal agreement or make sure that those you love are protected? FastLawForms.com is an easy to use online legal forms provider that can and will save you thousands of dollars of lawyer's fees every year.
www.fastlawforms.com

Repair your own credit , Credit Repair is an ongoing matter for many consumers. Consumers have paid up to $500 or more to credit repair companies who follow this same process to remove their credit errors. Without credit you can't get a car, travel, loan money, or even get mortgage.

www.creditrepair.fastlawforms.com

Have you been victimized by credit repair companies? Many companies promise or guarantee to clean up your credit report so you can get a car loan, a home mortgage, insurance, etc. In reality, they can't deliver what they promise. You pay them hundreds dollars in fees and these companies do nothing to improve your credit. Many of them just disappear.

Everything a credit repair companies can do for you, you can do for yourself at no cost. No one can do a better job in repairing your own credit as you can. You are the only one responsible to make sure your credit report is accurate. Our guide will help you every step of the way.

www.creditrepair.fastlawforms.com

If your application for credit is denied due to information supplied by a credit bureau, the company you applied to must be liable to provide you with that credit bureau's contact information. Furthermore you are entitled to a free copy of your credit report if you've been denied credit within the last 60 days

Disputing credit mistakes or outdated items is free. Just ask the credit reporting agency for a dispute form or submit your dispute in writing, attach any supporting documentation. Always send them a copy instead of the original

www.creditrepair.fastlawforms.com Team


Also checkout our sponsors at: www.paidtodrive.co.uk - Get Paid to Drive in UK ---- Only website on the internet that offers paid to drive companies exclusively in United Kingdom

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':