IDA Ltd & Ors v The University of Southampton & Ors

In a patent-entitlement dispute, the court must identify the information constituting the heart of the invention and determine who supplied it. The inquiry concerns the substance of the specification and the parties’ rights in their respective contributions. It is not controlled by the form or number of the claims.

A person does not become a joint inventor by conducting routine verification or adding only common general knowledge to another’s inventive idea. Necessary enabling information may, however, make its contributor an actual deviser where an otherwise non-enabling idea is thereby made practical and patentable.

The tracing rules governing intermingled property do not determine entitlement under section 8 of the Patents Act 1977. Its flexible remedies permit licences, cross-licences and amendment to reflect genuinely inventive contributions.

IDA sought sole or, alternatively, joint entitlement under section 8 of the Patents Act 1977 to patent applications concerning the use of magnetic particles to control pests. Its representative, Mr Metcalfe, had suggested substituting magnetic powder for the electrostatically charged powder used in Professor Howse’s existing insect trap. University researchers established by routine experiments that the magnetic powder worked.

The Patent Office hearing officer found Mr Metcalfe to be the sole deviser and ordered sole entitlement in IDA’s favour. On appeal, Laddie J held that the University should share entitlement because Professor Howse and Mr Ashby had contributed the adhesion and pesticide aspects of the concept: [2004] EWHC 2107 (Pat), [2005] RPC 11.

The central issue was whether those additions amounted to an inventive contribution making Professor Howse or Mr Ashby an actual deviser, or whether the substitution of magnetic particles was itself the sole heart of the invention.

1. The appeal was unanimously allowed. The hearing officer’s order awarding sole entitlement to IDA was restored. Mr Metcalfe alone supplied the key information in the patent: the substitution of magnetic particles for the electrostatically charged particles used in the existing technology.

2. For an entitlement inquiry, the court must identify who contributed the information at the heart of the invention and what rights exist in that information. The inquiry concerns the substance of the specification and is not confined by the form of the patent claims. An invention should not ordinarily be divided into a myriad of separately assessed sub-concepts.

3. Professor Howse’s explanation that the powder adhered to insects’ legs, and the possible use of pesticide, did not make him a joint inventor. Those matters added only the common general knowledge of the relevant art. The experiments merely verified, by simple and routine means, whether Mr Metcalfe’s idea worked. Neither contribution was inventive. The fact that Mr Metcalfe was unfamiliar with the art, and that common general knowledge broadened the main concept, did not alter that conclusion.

4. Devising an invention and supplying an enabling disclosure are distinct activities. In this case, the idea itself was sufficient because a skilled person could readily practise it. More generally, a merely non-enabling idea will probably not confer sole entitlement where others must contribute necessary enabling information to turn it into a practical and patentable invention. By contrast, unnecessary detail does not make its contributor an actual deviser.

5. The equitable tracing analogy derived from Foskett v McKeown did not govern an entitlement dispute. The section 8 jurisdiction under the Patents Act 1977 is free-standing and provides flexible remedies. If one person takes another’s idea but adds genuinely inventive material, the Comptroller may fashion a fair commercial solution through licences, cross-licences, sublicensing rights or amendment rather than impose an all-or-nothing result.

6. As procedural guidance, parallel entitlement and breach-of-confidence proceedings should ordinarily be avoided. The Comptroller should consider an early reference to the court under section 8(7) where parallel proceedings exist or the dispute is complex. His jurisdiction is better reserved for relatively straightforward cases.

1. Court of Appeal (Civil Division): The appeal was unanimously allowed and the Patent Office hearing officer’s order awarding sole entitlement to IDA was restored: [2006] EWCA Civ 145.
2. High Court, Chancery Division: Laddie J reversed the hearing officer and held that the patent should be owned jointly by IDA and the University: [2004] EWHC 2107 (Pat), [2005] RPC 11.
3. Patent Office: The hearing officer, Mr Sean Dennehey, found Mr Metcalfe to be the sole deviser and ordered that the patent belong solely to IDA.