Cinpres Gas Injection Ltd v Melea Ltd

Patent entitlement is determined by first identifying the actual deviser of the inventive concept. The court must then decide whether another person acquired entitlement under an enactment, rule of law, foreign law, treaty, convention or enforceable agreement.

A contract may make a party the inventor’s successor in title where, construed with business common sense, it transfers all rights in the information constituting the invention and prevents the inventor from asserting any rights in it.

A judgment procured by perjury may be reopened where the perjurer and another party made a common and inseparable case, or where the latter’s asserted title depends upon and continues to adopt the fraud. Registration as proprietor is only prima facie evidence of title. A third party sued for infringement may challenge the claimant’s true ownership.

Cinpres Gas Injection Ltd claimed entitlement to a patent for a plastics-moulding process registered in the name of Melea Ltd. The named inventor, James Hendry, had previously testified that he devised the process after leaving Cinpres. He later admitted that this evidence was perjured.

Earlier proceedings under section 12 of the Patents Act 1977 had nevertheless resolved entitlement against Cinpres. In the present proceedings under section 37, Mann J found that Hendry acquired and deployed knowledge of the process while engaged by Cinpres, but dismissed the claim because Melea’s predecessor, Michael Ladney, had not known of the perjury. Applying Odyssey v OIC Run-Off [2000] EWCA Civ 71, the judge held that res judicata barred the claim.

Cinpres appealed from [2006] EWHC 2451 (Ch). The central questions were whether Hendry was the actual deviser, whether Cinpres acquired his right to apply for the patent, and whether the earlier judgment could stand despite Hendry’s fraud.

1. Appeal allowed. The judge’s acceptance of Hendry’s account of the accidental paintbrush-mould incident amounted to a finding that Hendry devised the key inventive concept. He was therefore the sole inventor within section 7(3) of the Patents Act 1977. The possibility that another person devised the same concept independently did not affect that conclusion.

2. The 1986 settlement agreement made Cinpres Hendry’s successor in title under section 7(2)(c). The patented process fell within the defined “Cinpres Technology”. Construed with business common sense, the agreement gave Cinpres all rights in that information and prevented Hendry from asserting any rights in it. Cinpres could therefore apply for a patent. The contrary construction would leave neither party entitled to apply and would produce an unbusinesslike result.

3. The court declined to reverse the judge’s finding that Ladney did not know of the perjury at the relevant time. An appellate court gives particular weight to a trial judge’s evaluation of oral evidence and credibility. The extensive evidence of Ladney’s general dishonesty did not establish that the judge’s careful assessment of this particular allegation was wrong.

4. The earlier proceedings under section 12 and the present proceedings under section 37 concerned the same cause of action: entitlement to the grant of the patent as one indivisible question of ownership. The case therefore involved cause of action estoppel, rather than merely issue estoppel.

5. The former bill-of-review jurisdiction provided no separate, more liberal means of defeating res judicata. The modern rule governing the reopening of judgments applies alike to common-law and equitable claims. In any event, the present claim arose through contractual rights and was not an equitable cause of action.

6. Nevertheless, Hendry was not a mere witness in the first proceedings. He and Ladney were parties who advanced a common and inseparable case, and neither could succeed without the other. Hendry’s perjury was adopted by Ladney and was properly treated as Ladney’s fraud. Moreover, Ladney’s and Melea’s asserted title depended upon the same false account and continued to represent that account as true. The earlier judgment was therefore unravelled and could be set aside consistently with Odyssey.

7. Registration of proprietorship is only prima facie evidence under section 32(9). A third party sued for infringement may rebut that presumption by challenging the claimant’s true title, even though the third party claims no proprietary interest of its own.

• Court of Appeal (Civil Division): Allowed Cinpres’s appeal in [2008] EWCA Civ 9. It held that Cinpres had acquired the inventor’s right to apply for the patent and that the earlier adverse entitlement judgment could be set aside because the competing title adopted and depended upon the inventor’s fraud.
• High Court, Patents Court: Mann J, in [2006] EWHC 2451 (Ch), found that the invention had been made at Cinpres and that Hendry had perjured himself in the earlier proceedings. He nevertheless dismissed Cinpres’s claim because Ladney had not known of the perjury and res judicata therefore applied.
• Earlier entitlement proceedings: A Patent Office hearing officer rejected Cinpres’s reference under section 12 of the Patents Act 1977. Laddie J reversed that decision, but the Court of Appeal restored the hearing officer’s determination in Ladney and Hendry’s International Application [1998] RPC 319.