In April, the UK Intellectual Property Office issued its decision on the inventorship and entitlement of patent no. GB25714651, building on earlier case law.
In January 2016, Close Brewery Rentals Limited (“CBRL”) entered into discussions with suppliers, partners, and consultants with the goal of developing a system for using ultra-high-pressure (UHP) water to clean the insides of kegs and casks. The idea was sparked by two of their employees, Mr Phillips and Mr Cashman (“Mr P” and “Mr C”), to improve their keg and cask rental service to the brewery industry.
One of the partners undertook initial cleaning tests, verifying that UHP water was indeed suitable for cleaning the insides of kegs and casks. Prompting CBRL to further pursue the concept, they contacted MD Engineering Solutions Limited (“MDES”) in spring 2016 to progress the project. MDES were commissioned to design and build a working system, and subsequently filed their own patent application, granted as GB2571465.
GB2571465 was subsequently assigned to Geco Holdings Limited (“Geco”), and became the subject of entitlement proceedings before the UK IPO, initiated by CBRL. CBRL asserted that Mr P and Mr C should be named as the true inventors, not Mr Hallas and Mr Horsey (“Mr H1” and “Mr H2”) of MDES, as named on the patent.
The patent’s single independent claim claims an automated keg/cask cleaning device which has an inlet and an outlet for inserting and removing the keg/cask, a securing device to hold it in place during cleaning, and an UHP water lance which dispenses water at a pressure of 150,000-275,000 kPa.
The device as illustrated in Figure 2 of the patent.2
The actual deviser of the invention
The UK Patents Act defines that the inventor(s), is “the actual deviser of the invention”. “Devise”, according to Markem3, has “a slightly broader signification than ‘make’ or ‘implement’; viz. that of planning a particular course of action before even that course of action is actually implemented”. In Yeda4, Lord Hoffman notes that the inventor is “the natural person who ‘came up with the inventive concept’”.
Thus, in Hearing Officer Huw Jones’ view, resolving any entitlement dispute starts with asking: “who was the inventor (the actual deviser) of the invention?” – but that there’s a preliminary question to answer first: “what is the inventive concept”?
The inventive concept
In IDA Ltd v University of Southampton5 and Henry Brothers6, it was considered dangerous to split a claim up into integers and decide which ones are novel and inventive to identify the inventive concept, because the inventive concept might be a combination of those integers. Jones considered both parties had stumbled into this trap, having divided the independent claim up and focussed on the particular pieces that suited their own arguments and purposes.
Also, both sides’ submissions were considered to be more related to issues of validity – i.e. novelty and inventive step, than entitlement. In line with Floyd QC’s comments in Stanelco7, Jones reiterated that the patent’s validity was not in question and when deciding on entitlement, there is a danger in muddling up the parts of the Act which are about validity, with those which are about inventorship and entitlement.
Bearing this in mind, Jones referred to Pozzoli8, which reinstates the well-known Windsurfing9 four-step test for assessing obviousness. Although Pozzoli is not concerned with entitlement, it clarifies that the “inventive concept” is not the same as the ”inventive step” (since Windsurfing’s step of identifying the inventive concept comes before the step of identifying the differences over the prior art).
How high is “ultra-high”?
Jones’ generally agreed with Geco on what the inventive concept was, and didn’t include the specific water pressure range (150,000-275,000 kPa) in it.
Interestingly, no documentary evidence was found of this range in reports from cleaning trials with one of CBRL’s partners, leading to the question of where the claimed pressure range came from.
Jones concluded the only possibility was that the range resulted from the patent attorney’s drafting of the application. Though as established in Stanelco, this does not make the patent attorney a joint inventor.
The range was considered to be no more than an attempt to clarify what is meant by “ultra-high-pressure”, a phrase with no clearly defined meaning, in line with the Examiner’s clarity objection during examination. It was “exactly the sort of generalising statement one would expect a patent attorney to include in an application”.
What about joint inventors?
Jones followed Lord Hoffman’s comments in Yeda: if Mr P and Mr C wanted to be substituted as sole inventors, they must prove (a) that they contributed to the inventive concept, and (b) that Mr H1 and Mr H2 of MDES did not contribute to it.
Turning ideas into reality
As evidenced, CBRL had told MDES what they were trying to achieve, having paid MDES to build a system and get it working. Jones considered that Mr P and Mr C of CBRL unquestionably contributed to the heart of the invention, evidenced by cleaning trials reported before MDES’ involvement – although some features of the system were not present at that time.
So, was the inventive concept devised before MDES’ involvement, or was it only the technical input of MDES to turn CBRL’s idea into reality that brought the inventive concept into being?
“Wouldn’t it be nice?”
Jones again referred to Floyd QC’s comments in Stanelco: “At one extreme, there are vague ideas and pipedreams – the sort of thing where someone says ‘Wouldn’t it be nice if we could do such and such’ – but without any idea as to whether ‘such and such’ can in fact be done or how it might be done. That person will not be an actual devisor of an invention that is subsequently made by another – even though without the initial prompt the invention might never have been made. At the other end of the scale there is the person who produces a fully worked-up proposal and an actual working embodiment of it. That person is clearly an actual devisor of the invention.”
Jones concluded that Mr P and Mr C were inventors, because their initial communications with MDES involved more than just an initial vague prompt, and included the broad idea of all the independent claim’s features.
“Turning the ‘airy-fairy’ into that which is practical”
In deciding whether Mr H1 and Mr H2 of MDES should remain named as inventors, Jones cited Jacob LJ in IDA v University of Southampton: “a mere, non-enabling idea, is probably not enough to give the patent for it to solely the devisor. Those who contribute enough information by way of necessary enablement to make the idea patentable would count as ‘actual devisors’, having turned what was ‘airy-fairy’ into that which is practical”.
Jones held that CBRL had approached MDES with enough information such that MDES’ contribution was as expected from the “skilled person”, and didn’t contribute anything to the inventive concept. Their contributions, such as building a clamp, were achieved using basic engineering skills. No enablement objections were raised in examination, and MDES’ “how” was deemed unimportant to the invention.
Jones held that the inventive concept was devised solely by CBRL’s Mr P and Mr C, not by Mr H1 and Mr H2 of MDES. It was ordered that CBRL shall be named as the sole proprietor of the patent and of any applications claiming priority therefrom. CBRL was entitled to an award of costs in its favour.
Ensure that only the people who actually devised the invention are named on a patent application. Avoid naming colleagues purely for reasons of reputation/prestige.
Good record keeping of who did what when can provide good documentary evidence of who devised an invention. Those collaborating with external suppliers, technical partners etc. may need to be debriefed to identify who developed what.
Entering into agreements with third parties to develop an idea doesn’t necessarily mean that they have contributed to the inventive concept and should be named as inventors.
When entering into R&D work with suppliers, technical partners etc., make sure it’s clear from the outset who owns the rights to the resulting IP.
If you have any questions, please get in touch with Katy, or your usual Kilburn & Strode advisor.