Patent decision

BL number

O/342/13

Concerning rights in

GB1018849.8, GB1107429.1 and PCT/US2011/059757

Hearing Officer

Mr A C Howard

Decision date

23 August 2013

Person(s) or Company(s) involved

Coupling Technology Limited and Coupling Solutions LLC

Provisions discussed

Patents Act 1977 Sections 8, 12

Keywords

Assignment, Entitlement, Evidence, Inventorship

Related Decisions

O/238/13, O/264/12

Summary

In this dispute over entitlement to three related pending applications, it was alleged that an assignment of rights from the inventor of the earliest application to the defendant was invalid because the inventor was bound by a consultancy agreement providing that rights to all inventions made by him vested in the claimant. The defendant argued that the inventor (who was a majority shareholder in the claimant company) had held himself out as a representative of the claimant and the assignment should stand. The claimant also argued that certain matter which had been contributed to the later two applications (which had been filed in the name of the defendant) by individuals associated with the defendant either contributed nothing of value or was covered by a non-disclosure agreement which had been signed by the claimant and a predecessor company to the defendant. Prior to the hearing, and following a case management conference at which a request by the defendant to postpone the hearing had been refused, the defendant had declared that none of its witnesses would be available for cross-examination and its representative would not attend the hearing, although a skeleton argument would be filed. In the light of this, the Hearing Officer decided to admit the defendant’s evidence but accord it low weight, while treating the claimant’s evidence as unchallenged. On the substantive issues, it was decided on the basis of the evidence that the defendant understood that the inventor had no authority to effect the assignment, but had nevertheless signed it in order to influence a potential buyer. This led to the conclusion that the assignment was invalid, and that the earliest application should accordingly proceed in the sole name of the claimant. Regarding matter contributed by other individuals to the later two applications, the argument that it contributed nothing of value was rejected, and it was held that it was not covered by the non-disclosure agreement. In consequence both parties were left with an interest in the later two applications. In these circumstances, submissions were invited on the appropriate orders to make.

Full decision O/342/13 149Kb