NGPOD Global Ltd v Aspirate N Go Ltd

On a reference under the Patents Act 1977, the question is whether the dispute would be more properly determined by the High Court, not merely whether the Comptroller is capable of deciding it. The assessment requires all relevant factors to be weighed, including legal and factual complexity, the nature and volume of evidence, disclosure, commercial significance and the differing costs regimes. The case must be assessed as currently constituted, excluding only immaterial embellishments; it must not be artificially reduced to a form suitable for determination by the Comptroller. Where substantial non-patent legal issues, significant factual disputes, disclosure and commercial stakes collectively point to court determination, declining jurisdiction is appropriate.

NGPOD claimed entitlement to a granted UK patent and two pending international patent applications concerning naso-gastric aspirators. Aspirate applied under sections 37(8) and 12(2) of the Patents Act 1977 for the Comptroller to decline to deal with the entitlement dispute because it would be more properly determined by the High Court.

The IPO hearing officer refused the application. He considered the importance of the patents, the factual and non-patent legal issues, procedural complexity and the different costs regimes, but concluded that the dispute should remain before the Comptroller. Aspirate appealed on the basis that the hearing officer had applied the wrong approach and had failed properly to evaluate the developing complexity of the case.

1. The appeal was allowed. The Comptroller should have declined to deal with the entitlement dispute because it was more properly determined by the High Court.
2. The governing question under sections 37(8) and 12(2) of the Patents Act 1977 was whether the court could more properly determine the dispute. It was not whether the Comptroller was capable of doing so. The guidance in Luxim Corporation v Ceravision Ltd [2007] RPC 33 required the relevant factors to be weighed without a predisposition to exercise the jurisdiction sparingly.
3. The case, as then constituted, involved complex employment, fiduciary, estoppel, contract, company and insolvency issues, together with substantial factual disputes and a large body of witness evidence. These were significantly beyond the likely experience of a hearing officer and more standard fare for a judge. The later pleading properly showed the scope and complexity of the dispute and could be taken into account on appeal.
4. The hearing officer had erred by treating the case as one which could be cut down to a manageable size for the IPO. The question was whether the case as constituted would more properly be tried in the High Court, not whether it could be reduced to a form suitable for the IPO. The likely need for significant disclosure also pointed strongly towards the High Court.
5. The hearing officer further failed properly to weigh the commercial significance of the patents and the imbalance created by the IPO and High Court costs regimes. Taken together with the complexity of the dispute and the evidential requirements, the contrary conclusion was one which no reasonable tribunal could reach.

• High Court (Chancery Division): the appeal from the IPO hearing officer was allowed. The Comptroller was directed to decline to deal with the entitlement dispute because it was more properly determined by the High Court.