"BEST BEFORE" APPEAL REJECTS CLAIM-BY-CLAIM APPROACH TO PATENT ENTITLEMENT

The Court of Appeal yesterday delivered a decision on entitlement to a patented invention in Markem Corporation v Zipher [2005] EWCA Civ 267. The opinion of the court was delivered by Lord Justice Jacob, who appears to be something of a one-man Court of Appeal in IP disputes these days since the judges he sits with always seem to find his judgments highly agreeable.

The disputed patents in this case related to thermal printers for print "best before" dates on packaging for foodstuffs. Zipher (who employed some key staff that were formerly employed by Markem) obtained patents for a printer" and ribbon drive that were said to be invented by former employees of Markem, who claimed an interest in the patents on the ground that they were developed from its own materials. Markem made no allegation of breach of confidence or breach of contract or duty against its former employees.

In the Patents County Court Judge Fysh held that those involved with the development at Zipher had used matter contained in Markem's documents. Declining to believe their evidence as to the making of their inventions, he ruled that various claims of the patents belonged either to Zipher or to Markem, or were jointly owned. On appeal Zipher submitted that the judge was not entitled to make adverse findings about the truthfulness of the inventors of the patents. Markem maintained that they were entitled to be granted a patent for the invention, that the validity of the patent was irrelevant to the issue of entitlement to it and that, in entitlement proceedings, each claim of the patent had to be considered separately.

The Court of Appeal allowed Zipher's appeal, holding in particular that

* the judge erred in making adverse findings about the truthfulness of the inventors. If their evidence was to be disbelieved they had to be given a fair opportunity to defend themselves. In any event, since the judge's reasons for the adverse findings were inadequate, the inventors' evidence as to the making of the inventions and the subsequent patenting process had to be accepted.

* The issue of Markem's entitlement to apply for a patent was irrelevant to the issue of whether Markem could claim an entitlement to an application by Zipher.

* Proceedings relating to an entitlement to a patent under the Patents Act 1977, s.8 could not turn into a full-scale inquiry into validity. However, where an unanswerable case of validity was raised, the comptroller could act upon it. If the patent was clearly and unarguably invalid in whole or part, the comptroller could take that into account.

"Best before" dates: a metaphor for priority in patent law?

* Markem's claim-by-claim approach under the Patents Act, s.8 was fallacious and was not called for by the Act. The word "invention" in s.8 had to have some more general meaning than what was in the claims. This was because the question of entitlement could arise even before claims existed, since applications did not have to have claims.

* Markem's materials indicated what would be desirable in a printer rather than how actually to produce such a machine. In the absence of any clear duty to the contrary, there was nothing in the materials which Markem's ex-employees could not use at Zipher. The

* In the circumstances, breach of confidence proceedings brought by Markem against the inventors after trial of the entitlement proceedings were an abuse of process and should be struck out.

The IPKat is grateful for clarification of the utility of the claim-by-claim approach as a means of determining entitlement to patent rights. Where a dispute as to entitlement arises at an early stage at which an intention to apply for a patent has been expressed by a s.15 filing but no claims have been made, it is obvious that a claim-by-claim approach is of no use at all; but where claims have been made and a dispute arises as to, for example, the question whether one or more alleged joint inventors is indeed a joint inventor, tracing each alleged inventor's contribution back to a specific claim has its attractions. Merpel says, it's amusing to see how Lord Justice Jacob refers to his former self as "Jacob J (as he then was)", eschewing the temptation to use the first person singular.

More on "best before" here and here