Best Earlier Appeal Rejects Claim-By-Claim Approach To Patent Entitlement

The Court of Appeal yesterday delivered a decision on entitlement to a patented innovation inward Markem Corporation v Zipher [2005] EWCA Civ 267. The persuasion of the courtroom was delivered yesteryear Lord Justice Jacob, who appears to hold upward something of a one-man Court of Appeal inward IP disputes these days since the judges he sits amongst ever seem to discovery his judgments highly agreeable.

The disputed patents inward this instance related to thermal printers for impress "best before" dates on packaging for foodstuffs. Zipher (who employed about fundamental staff that were formerly employed yesteryear Markem) obtained patents for a printer" together with ribbon drive that were said to hold upward invented yesteryear one-time employees of Markem, who claimed an involvement inward the patents on the solid soil that they were developed from its ain materials. Markem made no allegation of breach of confidence or breach of contract or duty against its one-time employees.

In the Patents County Court Judge Fysh held that those involved amongst the evolution at Zipher had used affair contained inward Markem's documents. Declining to believe their show equally to the making of their inventions, he ruled that diverse claims of the patents belonged either to Zipher or to Markem, or were jointly owned. On appeal Zipher submitted that the estimate was non entitled to brand adverse findings nearly the truthfulness of the inventors of the patents. Markem maintained that they were entitled to hold upward granted a patent for the invention, that the validity of the patent was irrelevant to the number of entitlement to it together with that, inward entitlement proceedings, each claim of the patent had to hold upward considered separately.

The Court of Appeal allowed Zipher's appeal, asset inward item that

* the estimate erred inward making adverse findings nearly the truthfulness of the inventors. If their show was to hold upward disbelieved they had to hold upward given a fair chance to defend themselves. In whatsoever event, since the judge's reasons for the adverse findings were inadequate, the inventors' show equally to the making of the inventions together with the subsequent patenting procedure had to hold upward accepted.

* The number of Markem's entitlement to apply for a patent was irrelevant to the number of whether Markem could claim an entitlement to an application yesteryear Zipher.

* Proceedings relating to an entitlement to a patent nether the Patents Act 1977, s.8 could non plough into a full-scale enquiry into validity. However, where an unanswerable instance of validity was raised, the comptroller could human activeness upon it. If the patent was clearly together with unarguably invalid inward whole or part, the comptroller could bring that into account.

"Best before" dates: a metaphor for priority inward patent law?

* Markem's claim-by-claim approach nether the Patents Act, s.8 was fallacious together with was non called for yesteryear the Act. The give-and-take "invention" inward s.8 had to receive got about to a greater extent than full general pregnant than what was inward the claims. This was because the query of entitlement could arise fifty-fifty earlier claims existed, since applications did non receive got to receive got claims.

* Markem's materials indicated what would hold upward desirable inward a printer rather than how truly to create such a machine. In the absence of whatsoever clear duty to the contrary, in that place was nix inward the materials which Markem's ex-employees could non role at Zipher. The

* In the circumstances, breach of confidence proceedings brought yesteryear Markem against the inventors afterward trial of the entitlement proceedings were an abuse of procedure together with should hold upward struck out.

is grateful for clarification of the utility of the claim-by-claim approach equally a way of determining entitlement to patent rights. Where a dispute equally to entitlement arises at an early on phase at which an intention to apply for a patent has been expressed yesteryear a s.15 filing only no claims receive got been made, it is obvious that a claim-by-claim approach is of no role at all; only where claims receive got been made together with a dispute arises equally to, for example, the query whether 1 or to a greater extent than alleged articulation inventors is indeed a articulation inventor, tracing each alleged inventor's contribution dorsum to a specific claim has its attractions. Merpel says, it's amusing to run into how Lord Justice Jacob refers to his one-time self equally "Jacob J (as he thence was)", eschewing the temptation to role the starting fourth dimension someone singular.

More on "best before" here and here