NGOPD Global Ltd v Aspirate N Go Ltd

On an application under the Patents Act 1977 to transfer an entitlement dispute from the Comptroller to the High Court, the question is whether the dispute would more properly be determined by the court. The test does not require the Comptroller to be unable to decide the issues. Relevant considerations include commercial significance, factual and legal complexity, the evidence required, disclosure, costs and the tribunal’s experience. The case must be assessed as presently constituted. It is inappropriate to reduce or reshape the case so that it becomes suitable for determination by the Comptroller. Where substantial factual disputes, non-patent legal issues, witness evidence and disclosure combine to make the dispute complex, the High Court is the more appropriate forum.

NGPOD Global Limited claimed entitlement to one United Kingdom 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 more properly be determined by the High Court.

The IPO hearing officer refused the application. The dispute involved the inventor’s employment duties, ownership and assignment issues, estoppel, alleged fraud and breach of fiduciary duty, together with company, insolvency and contract law. The central issue on appeal was whether the hearing officer had correctly assessed the relevant factors and the complexity of the case.

1. Appeal allowed. The Comptroller should have declined to deal with the dispute because it was more properly determined by the High Court.
2. The statutory question was whether the dispute would more properly be determined by the court. It was not necessary to show that the Comptroller was incapable of resolving it. Although the word “may” appeared in the statutory provision, it did not ordinarily create a substantial second-stage discretion after deciding that the High Court was the proper forum.
3. The appeal was by way of review. The court could intervene for an error of principle, failure to take relevant matters into account, taking irrelevant matters into account, or perversity. The hearing officer’s decision had to be read in a common-sense manner and viewed in the round.
4. The guidance in Luxim Corporation v Ceravision Ltd [2007] RPC 33 required all relevant factors to be weighed. They included the commercial significance of the patents, the factual and non-patent legal issues, procedural complexity, witness evidence, disclosure and the different costs regimes.
5. The hearing officer had materially understated the case. The pleaded employment, estoppel, fiduciary, contractual, company and insolvency issues were substantial and fact-sensitive. They were not merely brief excursions into well-trodden legal byways. The dispute had become a substantial witness action and significant disclosure was likely.
6. The case had to be assessed as constituted. It was an error to consider whether it could be cut down to a size suitable for trial before the Comptroller. The commercial investment in the patents and the imbalance between the parties’ potential costs exposure were also strong pointers towards the High Court.

• IPO hearing officer: Mr Stephen Probert refused Aspirate’s application under sections 37(8) and 12(2) of the Patents Act 1977 for the Comptroller to decline jurisdiction.
• High Court (Patents Court): The appeal was allowed. The court determined that the Comptroller should have declined to deal with the dispute because it was more properly determined by the High Court.