IDA Ltd & Ors v University of Southampton & Ors

Inventorship under the Patents Act 1977 depends on who devised the inventive concept, not everyone who contributed to the patent specification or enabled its performance. The court must identify the inventive concept or concepts and then identify those responsible for formulating them.

Where an application seeks to add inventors, the claimant must prove a relevant contribution on the balance of probabilities. Removing named inventors requires proof that they contributed nothing of substance, overcoming the statutory presumption. Contributions to enabling disclosure are distinct from devising the invention, although several people may jointly devise one inseparable inventive concept.

The claimants referred questions of inventorship and entitlement in patent applications concerning magnetic powders and insect traps to the Comptroller under the Patents Act 1977. The Divisional Director found that Colin Metcalfe and David Lax were the sole inventors and directed transfer of the applications to the claimants.

The University of Southampton, Philip Howse and Roger Ashby appealed. They accepted that Metcalfe and Lax were inventors but argued that the evidence did not establish that Howse and Ashby were not also co-inventors. The central issues were the identification and scope of the inventive concepts, the distinction between devising an invention and supplying enabling disclosure, the burden of proof, and whether the appeal should be allowed on a shared-inventorship basis.

1. Appeal allowed in part. Howse and Ashby were reinstated as inventors, as co-inventors with Metcalfe and Lax.
2. Under s.7(3) of the Patents Act 1977, the inventor is the actual deviser. The inquiry has three stages: identify the inventive concept or concepts; identify who devised them; and ask whether each alleged inventor contributed to their formulation. A person is not an inventor merely because he contributed to a claim. The approach in Henry Brothers (Magherafelt) Ltd v The Ministry of Defence [1997] RPC 693, as accepted on appeal at [1999] RPC 442, was followed.
3. Devising an invention and providing enabling disclosure are distinct. Section 14 concerns the sufficiency and content of patent protection, whereas inventorship concerns the intellectual formulation of the inventive concept. Supplying data, examples or prototypes needed to make disclosure enabling does not alone establish inventorship. Several people may nevertheless be joint inventors where their intellectual contributions form an inseparable contribution to one inventive concept.
4. The burden differs according to the relief sought. To add an inventor, the claimant must prove on the balance of probabilities a relevant contribution to an inventive concept. To remove a named inventor, the claimant must overcome the presumption in s.7(4) and prove that the named person contributed nothing of substance to any relevant inventive concept.
5. The Divisional Director had identified two broad concepts: using magnetic particles to adhere to insect cuticles, and an insect trap or bait station in which magnetic particles were anchored to a magnetic zone. Metcalfe’s contribution concerned substitution of magnetic for electrostatic powder in the trap. The evidence did not prove that Howse and Ashby were not responsible for other aspects, including the cuticle-adherence and bait-station ideas. They therefore remained co-inventors.
6. The court was entitled to determine the actual scope of inventorship revealed by the evidence, notwithstanding the all-or-nothing case advanced below. The claimants had asserted part ownership, the issues had been explored in evidence, and the burden of proving removal of the named inventors remained on them.

The court also considered a one-year delay by the Patent Office decision-maker unacceptable, although it did not affect the appeal’s result or the weight given to the decision.

• Comptroller-General of Patents, Trade Marks and Designs: the Divisional Director found Metcalfe and Lax to be the sole inventors and directed transfer of the applications to the claimants.
• High Court (Patents Court): appeal allowed to the limited extent that Howse and Ashby were reinstated as co-inventors with Metcalfe and Lax.