Case No. IP-2020-000098

The law 26.Section 37 of the 1977 Act sets out the criteria which govern whether a party other than the registered proprietor of a patent is entitled to claim ownership: 37. (1) After a patent has been granted for an invention any person having or claiming a proprietary interest in or under the patent may refer to the comptroller the question— (a) who is or are the true proprietor or proprietors of the patent, (b whether the patent should have been granted to the person or persons to whom it was granted, or (c) whether any right in or under the patent should be transferred or granted to any other person or persons; and the comptroller shall determine the question and make such order as he thinks fit to give effect to the determination. … 27.Section 7 of the 1977 Act determines which person or persons are entitled to be granted 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. … 28.When an invention is made a property right comes into existence, distinct from any subsequent right there may be in a patent application or patent. In Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2007] UKHL 43, Lord Walker described this as an “inchoate property” in the invention (at [53]):“Before a patent has been granted for an invention there may be two (or even more) inventors, each of whom can claim to be the invention’s ‘actual deviser’ (the wording used in s.7(3) of the Act) because each has independently arrived at the same inventive concept. Until one of them has f‌iled an application (and so long as none of them has altruistically or inadvertently published his invention so as to make it part of the state of the art) each has a sort of inchoate property in the invention.”29.Thus, upon an invention being made, a person or persons who satisfy s.7(2)(b), or if there are none the inventor or inventors under s.7(2)(a), acquire the right to file an application for a patent. That right is exclusive to them or, where it arises, exclusive to their successor or successors in title. Succeeding in title is akin to acquiring an inchoate property in the invention, the property being the right to apply for a patent.30.Section 30(6) provides: (6) Any of the following transactions, that is to say— (a) any assignment or mortgage of a patent or any such application, or any right in a patent or any such application; (b) any assent relating to any patent or any such application or right; shall be void unless it is in writing and is signed by or on behalf of the assignor or mortgagor (or, in the case of an assent or other transaction by a personal representative, by or on behalf of the personal representative). 31.The meaning of a “right” in a patent or patent application is defined in s.130(1) of the 1977 Act:“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;32.It was argued by Mr Edenborough for IRL that a right in a patent or patent application does not include the right to file a patent application. Mr Keay for Mr Jones argued that it does.33.In Hartington Conway Ltd’s Patent Application [2004] RPC 6, Peter Hayward, Hearing Officer acting for the Comptroller said (his references to s.130(7) appear to have been intended to be to s.130(1)):“[64] There was certainly no formal assignment from Xtralite to XIRL. However, both sides accept that this is not conclusive, notwithstanding the provision in s.30(6) declaring that any assignment which is not in writing shall be void. That must be right, because what I have to determine under s.8 is whether the claimant:‘. . . is entitled to be granted . . . a patent for that invention or has or would have any right in or under any patent so granted . . .’and s.130(7) def‌ines ‘right’ as follows:“‘right’, in relation to any patent or application, includes an interest in the patent or application . . .’which clearly extends to equitable rights and not just legal ownership.[65] In this connection, though, Mr Davis argued that s.30(6) did not in any case apply before any patent application had been filed. It was, he submitted, an exception to the general rule that contracts or gifts did not have to be in writing to be legally valid and so should, like all exceptions, be interpreted narrowly. Bearing this in mind, he argued that there can be no right in relation to a patent application within the meaning of the definition of ‘right’ in s.130(7) before a patent application has even been filed, and accordingly an assignment pre-application could be legally valid even though it was not in writing. Mr Campbell disagreed with this interpretation, arguing that s.30(6) did not require any particular document – e.g. a patent application – to be in existence. Its clear purpose, he said was to regulate the way in which monopolies can be transferred from one person to another, just like the similar provisions in the legislation on the transfer of land. The broad definition of ‘right’ in s.130(7) covered every situation, and in particular did not require a patent application to be in being.[66] I agree with Mr Campbell. The definition in s.130(7) is broad, and its natural meaning seems to me to embrace the right to file an application for the grant of a patent, because that is a right in relation to an application. This interpretation is also consistent with the broad provisions of s.8(1) , which expressly give me the power to determine rights to patent applications at any time before grant and specifically ‘whether or not an application has been made’. The definition of s.130(7) reads straight into the language of s.30(6)(a), which refers to ‘any assignment of … any right in … [an] application [for a patent]’, and it therefore follows that s.30(6) must bite on assignments prior to the filing of a patent application.”34.On appeal, Hartington Conway Ltd’s Patent Applications [2004] RPC 7, Pumfrey J approached this in a different way, but there is no doubt that he endorsed what Mr Hayward had said:“[24] It follows from the words ‘and no other person’ in s.7(2) and from the fact that the entries on the register are not conclusive evidence of title that title to a patent must be traced from one or other of the persons specified in ss.7(2)(a) and 7(2)(b). …[25] … The nature of a patent is described in s.30 . The essential right associated with a patent is the right to bring infringement proceedings, from which the monopoly conferred by the patent springs. The right to bring proceedings is conferred by s.61 of the 1977 Act upon the ‘proprietor of the patent’. In my view, the word ‘proprietor’ does not mean ‘registered proprietor’ and it follows that the statutory right of action is conferred on the person who can trace his title in the manner that I have indicated. Section 30(6) requires the specified transactions to be written. A chain of transfers accordingly will demonstrate the devolution of the title to the patent to the person claiming to be entitled to it. … [34] Hitherto I have not in this judgment paid tribute to the care evidently expended by the hearing officer on his decision. It seems to me to be a decision sound in all material respects, and I endorse it.”35.Mr Edenborough argued that the Hearing Officer and Pumfrey J were wrong. He focussed on counsel’s proposition in Hartington Conway, recorded in the penultimate sentence of paragraph 65 and accepted by the Hearing Officer, that the clear purpose of s.30(6) was to regulate the way in which monopolies can be transferred from one person to another. Mr Edenborough said that the Hearing Officer had been right to accept this proposition. Yet the right to apply for a patent is not a monopoly right. Two persons may separately make the invention. They both acquire the right to file an application, showing that the right cannot be characterised as being necessarily a monopoly right.36.I agree that the right to apply for a patent is not perforce a monopoly right. To that extent the Hearing Officer was led astray. But the mistake formed no necessary part of his reasoning. He was of the view that ‘right’ is broadly defined in s.130(1), that it includes the right to apply for a patent, and that the definition read on to s.30(6). As I have said, Pumfrey J approached the matter in a different way, arriving at the conclusion that tracing a successor in title to the right to apply for a patent means following the devolution in title by a line of transactions and he ruled that s.30(6) requires these transactions to be in writing. I respectfully agree. The right to apply for a patent is a ‘right’ within the meaning of s.30(6)(a) and can only be assigned in writing. This case 37.Since there was no written assignment, the legal interest in his right to apply for the Patent was never assigned. However, at the meeting of 18 October 2011 Mr Jones agreed to assign the right for consideration. The consideration was subsequently given, at which point the equitable interest in the right passed to IL. An agreement to assign property – here the inchoate property in the right to apply for a patent – will cause the equitable interest in that property to pass even if the legal interest remains unassigned, see Baxter International Inc v Nederlands Produktielaboratorium voor Bloedtransfusiapparatuur BV [1998] RPC 250 at 253-254.38.The next issue is whether that equitable interest ever passed back to Mr Jones.