Background

In 2004, Argent commissioned BDI to design and oversee the construction of a plant to make biodiesel from fats, oils and greases recovered from sewers and grease traps.

In 2014, Argent filed two European patent applications, published as EP 3 011 041A and EP 3 078 724A. Shortly before grant BDI filed a claim before the IPEC for a declaration that it was entitled to the patents. As a result, the European Patent Office (EPO) stayed the grant process pursuant to rule 14 of the European Patent Convention (EPC). Proceedings were settled in relation to EP ‘724, but progressed to trial in relation to EP ‘041.

What is the applicable law?

The national court of the applicant has jurisdiction to determine the ownership of a European patent application pursuant to art. 2 of the EPC Protocol on Recognition and security. 12 and 82 of the Patents Act 1977 (the 1977 Act).

s. 7 of the 1977 Act states who may apply for a patent:

"7. ... (2) A patent for an invention may be granted— (a) primarily to the inventor or joint inventors; (b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; ... (3) In this Act "inventor" in relation to an invention means the actual deviser of the invention and "joint inventor" shall be construed accordingly.”

In Yeda v Rhone-Poulenc, Lord Hoffmann explained that ss. 7(2) and (3) are an exhaustive code for determining who is entitled to the grant of a patent:

"[19] In my opinion, therefore, the first step in any dispute over entitlement must be to decide who was the inventor or inventors of the claimed invention. Only when that question has been decided can one consider whether someone else may be entitled under paragraphs (b) or (c). In many cases, including the present, there will be no issue about paragraphs (b) or (c). …

[20] The inventor is defined in s.7(3) as 'the actual deviser of the invention'. The word 'actual' denotes a contrast with a deemed or pretended deviser of the invention; it means, as Laddie J. said in University of Southampton's Applications [2005] R.P.C. 11, [39], the natural person who 'came up with the inventive concept.' It is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art: see Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1997] R.P.C. 693, 706; [1999] R.P.C. 442. As Laddie J. said in the University of Southampton case, the 'contribution must be to the formulation of the inventive concept'. Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the prior art. Inventors themselves will often not know exactly where it lies."

HHJ Hacon summarised this as follows:

“At root, there are two questions to be answered in an entitlement dispute: (1) What is the inventive concept? (2) Who devised the inventive concept?”

He noted that it was common ground between the parties that the party seeking to be added as an inventor bears the burden of proving that he contributed to the inventive concept. Further, if he seeks to be substituted as the sole inventor, he bears the further burden of proving that the named inventor did not contribute to the inventive concept.

What is the ‘inventive concept’?

‘Inventive concept’, while a term little used in statute, is one which pervades the case law. So what does it mean?

In statute, the term is directed towards the unity of invention (see s.14(5) and (6), 17(6) and 26(b) of the 1977 Act and Art. 82 of the EPC). HHJ Hacon noted that, in addition to the question of entitlement, the courts had used the term in two other contexts. In Actavis v Lilly, in relation to the doctrine of equivalents, the Supreme Court had considered the term to be synonymous with 'the inventive core' of the claim, to be ascertained by focussing on the problem underlying the invention. In Pozzoli v BDMO, in the context of the assessment of inventive step, the Court of Appeal characterised the inventive concept this way:

"[17] ... 'It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts ...

18. So what one is seeking to do is to strip out unnecessary verbiage, to do what Mummery L.J. described as make a précis."

Drawing these together, HHJ Hacon drew a distinction between the use of the term inventive concept in statute and in common law. He explained that the former addresses an overarching relationship between two or more inventions in a single European patent application, involving one or more special technical features in common. By comparison, the inventive concept discussed in Yeda, Actavis and Pozzoli is part of a single invention. HHJ Hacon went on to cite some of the metaphors attributed to this latter inventive concept including the core, the essence and the heart of the invention and the new technical insight conveyed by the invention.

How do you identify the inventive concept?

Returning to Pozzoli, here the Court of Appeal said:

“17 ... The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage – the concept is what the claim covers and that is that. But that is too wooden ... It is too wooden because if one merely construes the claim one does not distinguish between portions which matter and portions which, although limitations on the ambit of the claim, do not. One is trying to identify the essence of the claim in this exercise.”

In Markem v Zipher, Jacob LJ elaborated on this explaining that the inquiry is not limited to looking at the claims:

"[101] Accordingly, we think one is driven to the conclusion that [the equivalent section on entitlement of domestic patents] is referring essentially to information in the specification rather than the form of claims. It would be handy if one could go by the claims, but one cannot. [The equivalent section] calls for identification of information and the rights in it. Who contributed what and what rights if any they had in it lies at the heart of the inquiry, not what monopolies were actually claimed."

HHJ Hacon also considered whether he should consider validity when identifying the inventive concept. While he noted that there was no place for him to find whether the patent application was valid or not, there was significant discussion (albeit incomplete evidence) on whether the inventive concepts were obvious or not (the rationale being that something uninventive could not be the inventive concept of the patent). This may pave the way for similar lines of argument in the future.

What did the court decide?

The court considered the two inventive concepts advanced by the parties, agreeing with Argent that the compositions in claims 1 to 7 of the application best represented the inventive concept. As there was no dispute that an Argent employee had developed this invention, it followed that Argent (the original applicant) was entitled to the patent.