The law
The general law on entitlement to a European Patent Application 10.This court has jurisdiction to determine the ownership of a European Application pursuant to art.2 of the EPC Protocol on Recognition and s.82 of the Patents Act 1977 (‘the 1977 Act’). 11.Ownership is settled under s.12 of the 1977 Act which provides, so far as is relevant: “(1) At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made) –
(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
… and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination.”12.Under s.99 of the 1977 Act the court has the same jurisdiction as the Comptroller to decide entitlement. 13.Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2007] UKHL 43; [2008] RPC 1 concerned the determination of entitlement to a granted European Patent. The reference was therefore made under s.37 of the 1977 Act but the principles regarding the resolution of a claim to entitlement are the same. Lord Hoffmann (with whom the rest of their Lordships agreed) set out s.7 of the 1977 Act which states who may apply for a patent: “7. (1) Any person may make an application for a patent either alone or jointly with another.
(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; (c)
in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;
and to no other person. (3)
In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly. (4)Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.” 14.Lord Hoffmann stated that s.7(2) and (3) are an exhaustive code for determining who is entitled to the grant of a patent. He continued: “[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.” 15. 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?
The burden 16.It was common ground that the party seeking to be added as an inventor bears the burden of proving that he contributed to the inventive concept. 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, see Yeda at [21].
The inventive concept 17.The term ‘inventive concept’ has been used in at least three contexts other than entitlement disputes. In two of those the courts have given the term a meaning similar, possibly identical to the meaning adopted by Lord Hoffmann in Yeda. 18.The Supreme Court considered the scope of a patent claim in Actavis UK Ltd v Eli Lilly and Company [2017] UKSC 48; [2017] RPC 21 and expressed the inventive concept of a claim to be synonymous with ‘the inventive core’ of the claim, to be ascertained by focussing on the problem underlying the invention (at [60], see also [65]). 19.In Pozzoli SpA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37 (at [23]), Jacob LJ restated in modified form the questions first set out by Oliver LJ in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, at 73, to be applied by the court when assessing obviousness. The assessment may be done by reference to the inventive concept of the claim. Jacob LJ characterised the inventive concept this way: “[17] What now becomes stage (2), identifying the inventive concept, also needs some elaboration. As I pointed out in Unilever Plc v Chefaro Proprietaries Ltd [1994] R.P.C. 567 at 580: ‘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. 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 and not what courts, applying Windsurfing stage one, have done. 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.” 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.” 20.Use of the inventive concept for assessing obviousness is optional, but Kitchin LJ pointed out in Medimmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234; [2013] RPC 27 at [86]: “… it has the advantage of limiting the obviousness analysis to the essence of the invention.” 21.If the meaning given to ‘inventive concept’ differs at all as between Yeda, Actavis and Pozzoli, it is not by much.
The relevance of art.82 EPC 22.There is a fourth context where the term has been used. Mr Davis referred to art. 82 EPC in support of his argument. Art. 82 refers to the general inventive concept of a group of inventions. I do not believe that this is the same thing as the inventive concept considered in Yeda, Actavis and Pozzoli. Nor do I believe that it offers any guide to the meaning in any of the latter contexts. 23.Art. 82 provides: “