Background
6.In about 2009 Mr Jones devised an infra-red heater for road surfaces (the “IRH”). He incorporated a company called Clean Fast UK Limited through which he developed and manufactured the IRH. It was marketed by a company called Asphalt Re-Lay Limited. By 2010 the two companies had contracts for road repairs with local authorities in North West England and were trading successfully. They operated from premises in Crewe leased from a company owned by Ben Gedroge and his father Terry. Mr Jones continued to work on improvements to the IRH.7.In June 2010 there was a fire at the Crewe premises. It forced Asphalt Re-Lay Limited to cease trading and to be wound up in December 2010. Mr Jones was in financial difficulty and unable to pay rent. He was approached by Ben and Terry Gedroge with a proposal to start a new venture for marketing the IRH. Mr Jones was also introduced to Robin Higham, a partner at O’Neill Patient Solictors LLP, who could handle legal matters and to Peter Black, a business consultant, who could handle financial matters.8.The proposal led to the incorporation of a company named Irmac Limited (“IL”) on 7 October 2011. The directors and shareholders were Ben and Terry Gedroge, Mr Higham and Mr Black. Mr Jones was given a 45% share option which he could take up in the future if he wished.9.Later the same month discussion turned to the intellectual property rights in the improvement to the IRH on which Mr Jones had been working. Broadly it concerned a means for varying the level of heat in a programmed heat wave cycle with a set heating range. On 18 October 2011 there was a meeting between Mr Jones and three of the directors of IL. The attendees discussed whether Mr Jones would assign his rights to IL and that IL would file a patent application. Ben Gedroge kept the minutes which refer to the IRH as the “gas burner”. They included the following paragraphs:“6. Once all the all the necessary information is supplied in full for both Peter Black and the David Murphy (Patent Lawyer) and after receipt of the patent application number, within 6 months, the board will use all reasonable endeavours to find a suitable investor to commit the necessary funds to the company.
7.
In consideration of the grant of the 45% shareholding in the Company, Mark Jones agreed to assign all intellectual property rights relating to the gas burner, both tarmac repair and for methane burning and power generation, to Irmac Ltd. No objections. Motion passed. 8. In return for agreement under above item 7, it was agreed that if Irmac Ltd had not commenced active trading within six months from the patent application registration confirmation, then all the IPR referred to in item 5 would be reassigned to Mark Jones.”10.On or shortly before 25 November 2011 IL filed a patent application (“the IL Application”), which identified Mr Jones (only) as the inventor and IL as the proprietor. On 25 November 2011 IL’s patent attorney informed Mr Jones and Ben Gedroge that the UK Intellectual Property Office had allocated to it application no. 11203803.3.11.On 22 December 2011 IL and Mr Jones entered into two written agreements, a Patent Option Agreement and a Share Option Agreement. Under the Share Option Agreement, in consideration of the payment to IL of £1 by Mr Jones, he was granted the option to subscribe for and be allotted 45% of IL’s shares. I will return to the Patent Option Agreement.12.On 12 June 2012, pursuant to his understanding of the Patent Option Agreement Mr Jones served IL with an Option Notice and £1 in cash. Mr Jones believed that this having been done, “Completion” within the terms of the Patent Option Agreement would follow, i.e. that within 7 to 21 days IL would deliver a written assignment of the IL Application to him. The 21 days were to expire on 3 July 2012.13.On 20 June 2012, without informing Mr Jones, Ben Gedroge contacted the UK IPO and withdrew the IL Application. On 22 June 2012 Ben Gedroge filed a new patent application, identical in all respects to the IL Application save that he added his own name as a joint inventor with Mr Jones. It was this application (“the IRL Application”) which resulted in the Patent.