Patent decision

BL number

O/0410/24

Concerning rights in

PCT/GB2021/050727 EP21722972.3

Hearing Officer

Mr H Jones

Decision date

3 May 2024

Person(s) or Company(s) involved

Okipa Ltd & John Russell Clearwater v Bionome Technology Ltd

Provisions discussed

Sections 8 and 12

Keywords

Entitlement

Related Decisions

None

Summary

A collaboration project between two inventors led to the signing of a collaboration agreement which stated that a joint entity would be established and that the IP rights in their invention would be transferred into that joint entity. The inventors were to have equal shares in the joint entity. Patent applications were filed by the defendant, this being a company wholly owned by one of the inventors and not the other. The second inventor claimed joint entitlement to the patent applications. The hearing officer considered the terms of the collaboration agreement in detail and concluded that the second inventor’s entitlement to the patent applications had not been assigned to the joint entity. The defendant argued that a declaration of trust had been prepared which had the effect of securing the second inventor’s rights in the patent applications in their name. The claimant had no knowledge of this declaration. In any case, the original collaboration agreement did not have the effect of assigning the second inventor’s rights to the defendant. The hearing officer ordered that the second inventor be added as joint applicant.

Full decision O/0410/24 312Kb