Case No. IP-2017-000169

1.This is a dispute about the ownership of an international patent application and national and regional applications derived from it. The invention claimed is a method of discriminating between requests to access a website. 2.Widespread use of the internet began in the 1990s. Since then a necessary tool for both users and website operators has been the ability to block websites. For instance users wish to protect children from inappropriate material and operators want to ensure that only paying subscribers have access to their website. 3.Alternative means have been developed to achieve the required selective blocking, initially by reference to a computer’s internet protocol address (‘IP address’). Users and/or website operators could prevent a computer at an identified IP address gaining access to selected websites. However, single IP addresses increasingly came to be used by more than one computer. By way of example, schools came to use one IP address so that all the school’s computers could be protected by a single firewall. Yet they still wanted students to have more limited access to websites than the staff and some of the staff may have had subscriptions to websites behind a paywall. There arose a need for a system whereby individuals could be identified and authorised to use a website independently of their IP address. 4.PCT Application No. WO 2013/177687 A1 (‘the PCT Application’) claims an invention which meets this need. It is owned by the second claimant, a Barbados company set up to hold IP rights controlled by the Netsweeper group of companies. The first defendant is the Canadian parent of the group. I will refer to them collectively as ‘Netsweeper’. The third defendant, Mr Erb, is an employee of Netsweeper and is identified as the inventor in the PCT Application. 5.The claimant (‘Prosyscor’) is a UK company set up by Bradley Kite as a vehicle for the development and commercialisation of software written by him called ‘Authent’. Authent provides a means to discriminate between computers that share a single IP address when blocking access to websites. 6.Mr Kite is a former employee of Netsweeper and was for a time following his employment a consultant to the group. There was disagreement in the evidence as to whether he was employed by the Canadian parent or by a UK subsidiary, now dissolved, but it was not important. 7.Mr Kite says that while he was employed by Netsweeper he developed the invention claimed in the PCT Application in circumstances such that he, not Netsweeper, is entitled to the rights in the invention. Through his company Prosyscor he claims ownership of the PCT Application and all applications derived from it. Mr Kite also alleges that during his period of consultancy he disclosed in confidence information relating to his invention to Mr Erb and a colleague of Mr Erb’s at Netsweeper. He says that in breach of confidence the information has been exploited by Netsweeper. 8.Netsweeper accepted that Mr Kite should be named as joint inventor along with Mr Erb on the PCT Application and any patent applications and granted patents derived from it. Mr Erb is said by Netsweeper to retain his status as an inventor because part of the invention consists of Mr Erb’s improvement on Mr Kite’s idea. Netsweeper also argue that naming Mr Kite an inventor leaves ownership unaffected because Mr Kite’s contribution was made while he was Netsweeper’s employee, or alternatively was made under a contact the terms of which award to Netsweeper the ownership of the rights derived from Mr Kite’s work. 9.Mr Erb was joined as the third defendant solely because of his status as named inventor on the PCT Application. Mr Erb gave evidence at trial and played a significant role in the events leading to the litigation, but not a major role as a party. I will treat Netsweeper as if they were the only defendants. 10.James St Ville appeared for Prosyscor, Hugo Cuddigan QC and Chris Aikens for Netsweeper.