Who gets the credit for killing the cockroach?

Yesterday the Court of Appeal for England and Wales (Ward, Jacob and Wilson LJJ) allowed an appeal in IDA Ltd and others v University of Southampton and others [2006] EWCA Civ 145.

Howse, a professor at Southampton University, patented an invention for killing insects which resulted from his discovery of the adhesion of electrostatically charged powders to insects’ legs. IDA, a specialist in magnetic powders, IDA's employee Metcalfe realized from the reference to ‘electrostatic’ in the patent that the invention depended in some way on the stickiness of the powder. Wondering whether magnetic powders might work instead, having the advantage of not losing their stickiness, Metcalfe approached Howse and told him of his idea. Howse followed this suggestion, to see if magnetic powder would work, with IDA supplying the magnetic powders for the trials. When Howse found that powders worked just as well as the electrostatic particles, he got his university to apply for a patent. IDA then applied under the Patents Act 1977, s.8, for the patent to be transferred either into its own name or at least into the joint names of itself and the university. It was accepted that, after the university applied for the patent, the burden of proof was upon IDA to show that it, not the university, was entitled to the grant.

The Patent Office ruled that Metcalfe was solely responsible for devising the notion of trapping and/or killing pests by using adherent magnetic particles; what Howse had done was only to prove that concept. The patent thus belonged to IDA. On appeal Mr Justice Laddie ruled that the ‘sticky poison concept’ came from Howse and that had not therefore shifted the burden of showing that Howse and his university were not at least partly responsible for the invention. He therefore saw the parties as being jointly entitled to the ownership.

The Court of Appeal allowed IDA's and Metcalfe's appeal. It held that
* in determining who owned a patent, section 8 of the Patents Act 1977 required the court to consider (i) who contributed what and (ii) what rights, if any, lay in the heart of the inquiry, rather than looking at ownership of the monopolies that were actually claimed.

* what one would normally look for was ‘the heart’ of the invention. There might be more than one ‘heart’, but each claim was not to be considered as a separate ‘heart’ on its own.

* in this case the information at the heart of the invention was the substitution of magnetic particles for electrostatic particles. That key hinformation was provided solely by Metcalfe. The ‘heart’ was his idea alone.
The IPKat thinks the Court of Appeal has got it right on the facts, but still rather likes the approach of working backwards from the patent claims, to see who came up with their substance, rather than ploughing through the who-does-what side of the historical development of the invention. After all, without the claims, the invention is nothing other than a fresh chunk of the state of the art. Merpel wonders whether a further appeal might be in order. Lord Hoffmann has shown some interest in rights in patents, as is apparent from his speech in Buchanan v Alba back in 2004.

Best cockroach recipes here and here
Amazing cockroach facts here

If you were wondering ...

... what the IPKat's friend Patricia McGovern is up to, he can tell you. Patricia has taken the bold step of leaving Dublin law firm L. K. Shields to set up her own intellectual property boutique, P. McGovern & Co., solicitors. You can email Patricia here to say hello and wish her good luck.

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Late, later, .. latest IP&T

The February issue of LexisNexis Butterworths' Intellectual Property and Technology Cases has now been published, just a teeny bit into March. But that doesn't matter, since this is just the hard copy version of law reports which IP&T subscribers have been able to consult online for some time. Cases in this issue are
* Markem v Zipher, a somewhat controversial Court of Appeal reversal of a Patents County Court decision in which that Court and the trial judge had radically different approaches to the question of a witness's credibility;

* Medion v Thomson Multimedia Sales Germany - the ruling of the ECJ that you can't steal someone else's trade mark by sticking your own name in front of it;

* Peek & Cloppenburg v OHIM, where the CFI felt that the place name Cloppenburg was registrable as a trade mark for services that consumers wouldn't assume to have emanated from that mini-metropolis;

* Class International v Colgate-Palmolive, in which the ECJ came perilously close to saying that the interests of trade mark owners were worth sacrificing on the altar of free movement of goods.
The IP&Ts are edited by Michael Silverleaf QC, who knows a thing or two about the subject ...


Guy said...

The best cockroach story was in the New Scientist many years ago. A scientist returned home late and on turning on the kitchen light saw the floor covered with cockroaches. He took out the vacuum cleaner, turned off the light for a few minutes and then turned on the light and the cleaner sucking up the cockroaches. Worried about their recovery he attacked the cleaner tube to the gas stove and allowed gas to flow into the cleaner cylinder. He then retired to bed. His wife came down in the morning and started her cleaning chores by turning on the vacuum cleaner which exploded. She complained to the manufacturer who replaced the cleaner with apologies.

Jeremy said...

Guy, I just knew you'd respond with a good story. This post was my Guy-trap ...

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