BDI Holding GmbH v Argent Energy Ltd & Anor

In a patent-entitlement dispute, the court must first identify the inventive concept and then determine who devised it. The inquiry is directed to the invention disclosed by the application, read through the eyes of the skilled person, rather than to a free-standing validity challenge. A tribunal deciding entitlement may take account of an obvious and unarguable invalidity point only within its jurisdiction and discretion. The “general inventive concept” in Article 82 EPC is distinct from the inventive concept of a single invention. A process may support a product claim where the product is new and the process was not obvious, but the inventive concept must still be identified from the application and claims as properly understood.

BDI claimed entitlement to European patent application EPA 3 011 041, filed in the joint names of Argent Energy Limited and Argent Energy (UK) Limited. A related application had settled. BDI contended that the inventive concept was a process for converting impure sewer grease into biodiesel. Argent contended that it was a biodiesel composition defined by particular ester ranges and associated technical advantages. The central issues were the proper identification of the inventive concept, the relevance of alleged obviousness or lack of novelty in an entitlement reference, and which party had devised the concept.

Judgment for the defendants; Argent was entitled to maintain ownership of the application.

1. The court had jurisdiction to determine entitlement under section 12 of the Patents Act 1977, with the same jurisdiction as the Comptroller under section 99. The statutory scheme required identification of the inventor before considering derivative entitlement.
2. The governing inquiry had two stages: identify the inventive concept, then identify who devised it. The party seeking to be added as inventor bore the burden of proving contribution; a party seeking substitution as sole inventor also had to prove that the named inventor made no contribution.
3. The inventive concept was assessed by reading the application through the eyes of the skilled person, with common general knowledge. The court had no jurisdiction to conduct a general validity inquiry. The principle in Markem Corp v Zipher Ltd [2005] EWCA Civ 267 was especially limited in a section 12 case because the court could not itself refuse the application.
4. The “general inventive concept” in Article 82 EPC was distinct from the inventive concept of a single invention used in entitlement and other patent-law contexts.
5. Reading the application as a whole, the skilled person would identify the concept as a biodiesel composition containing 7–10.5% methyl octadecenoate and 39–41% methyl cis-9-octadecanoate, with stated advantages including higher cetane number, lower cold filter plugging point, lower density and use of sewer grease as feedstock. The process proposed by BDI was not the inventive concept supported by the claims.
6. That composition had been devised by Mr Scott. Argent was therefore entitled to maintain ownership of EPA 3 011 041. The court had no jurisdiction to determine the EPO consequences of the ownership decision.