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