Patent decision
- BL number
- O/204/05
- Concerning rights in
- GB2382875 and WO 03/048812
- Hearing Officer
- Mr P Hayward
- Decision date
- 21 July 2005
- Person(s) or Company(s) involved
- Statoil ASA v University of Southampton
- Provisions discussed
- PA Sections 12, 13, 37
- Keywords
- Entitlement, Inventorship
- Related Decisions
- None
Summary
Statoil claimed ownership of the GB patent and WO application on the grounds that the true inventors were two of their employees, Dr Ellingsrud and Dr Eidesmo, and not the named inventors, Professor Sinha and Dr MacGregor, from whom the University of Southampton said they derived title.
The invention related to a method of directly detecting sub-sea hydrocarbon reservoirs using an electromagnetic source and detectors. Although Sinha and MacGregor were leading exponents in the use of such a source to explore the sea bed, the hearing officer found that Ellingsrud and Eidesmo had come up with the idea of using it for direct detection of hydrocarbon reservoirs and had established the essential features of the main inventive concept, ie the need for inline and transverse measurements to demonstrate a different response or split indicative of a buried hydrocarbon layer. Having regard to the principles established in Markem Corporation v Zipher Ltd [2005] EWCA Civ 267 and other recent case law, he also found (a) that Ellingsgrud and Eidesmo had disclosed the invention in confidence to Sinha and, later, MacGregor, and that the filing of the patent had been in breach of that confidence, and (b) that whilst Sinha and MacGregor had used their undoubted expertise to help reduce the invention to practice and provide enabling information, devising the invention had not had and did not need their intellectual contribution. Thus he found that Ellingsrud and Eidesmo were the inventors of the main inventive concept, that Sinha and MacGregor were not, and that the owners were Statoil ASA.
The Hearing Officer did not rule out the possibility that even in a granted patent their could be more than one inventive concept which could be the subject of an inventorship/entitlement claim. However, he found on the facts that all the other subordinate features disclosed were not inventive.
Full decision O/204/05 
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