Patent decision

BL number

O/170/00

Concerning rights in

EP0683925

Hearing Officer

Mr P Hayward

Decision date

12 May 2000

Person(s) or Company(s) involved

British Telecommunications plc v A C Egerton Ltd

Provisions discussed

PA 1977 sections 37 and 72

Keywords

Burden of proof, Confidentiality, Entitlement, Revocation

Related Decisions

O/219/98

Summary

Egerton applied for a patent for a 'Pole Top Distribution Point' (PTDP) connector in February 1993. BT claimed they were entitled to the patent under section 37(1)(b) of the Act. They said BT had disclosed the invention to Egerton during a competitive tendering process which was initiated in 1991 to find suppliers of such connectors. Also, since they alleged the patent had been granted to a person not entitled to it, they asked for it to be revoked under section 72(1)(b).

In the tendering process, Egerton were supplied with a 'Statement of Requirements' (SOR) by BT setting out required design features, and BT alleged that they had also given Egerton further relevant design details. BT also argued that the Egerton design was so close to what BT were proposing that Egerton must somehow have acquired relevant information from BT even after they had dropped out of the tendering process. It was found that the SOR did not refer to any of the essential features of the invention, and that BT did not provide any relevant details to Egerton in any other way, except for the idea of a 5 pin plug-in module. While it was accepted that the 5 pin module contributed to the Egerton design, BT had not dealt with the idea of using a 5 pin module confidentially and consequently did not qualify for joint proprietorship on that score. Furthermore, BT were unable to show that BT and their collaborators had themselves arrived at a design incorporating all the features of the invention before the priority date. Egerton on the other hand demonstrated that they had pursued an coherent sequence of development leading to the connector described in the patent application, and in any case the design of that connector was so different from the connectors eventually produced by BTs collaborators that copying was not credible.

The invention comprised a combination of features each of which was in itself not necessarily inventive. The hearing officer held that for BT to be successful they would have to show that they had taught Egerton to incorporate all the features in a single connector - not simply provided Egerton with each feature in a disjointed, piecemeal fashion over time. In the event they did not succeed in showing that they had communicated either individual or combined features to Egerton. If they had communicated any such features, it would still have been necessary for them to demonstrate that they had done so confidentially, and this they also failed to do. On another point, the hearing officer expressed concern that BT were claiming entitlement without being able to say which individual(s) they alleged to be the inventor(s). However because Egerton did not make an issue of this, it was not taken to be fatal to the case. On a final point, BT were unable to show, as they had alleged, that the combination of features in the invention resulted inevitably from the design requirement proposed by BT when taken in combination with the 5 pin module.

On a point of law, BT suggested that the Egerton design was so close to what BT had been proposing, that the burden of proof should switch from BT to Egerton, so that Egerton would have to demonstrate that they had not copied the design from BT. Copyright precedents were cited in support, in which the burden of proof had been switched in this way when an allegedly infringing work was closely similar to the copyright work and the possibility of access to the copyright work was established. This argument was rejected on the grounds that the driving forces for creating the invention were known in the art and it was therefore quite possible that inventors might independently make similar inventions.

BT were unsuccessful in their reference and were not found to be entitled to any part of the patent. Their application for revocation also failed.

Full decision O/170/00 212Kb