Bionome Technology Limited v John Russell Clearwater

A statutory presumption that the patent applicant is entitled to the grant does not create an additional evidential hurdle once a prima facie dispute has been raised. The tribunal must determine entitlement on the balance of probabilities using the evidence of all parties.

An agreement containing future, uncertain steps and preconditions for transferring intellectual property will not amount to an assignment or agreement to assign unless its language sufficiently commits the parties to the transfer. A commitment to establish a future trust or jointly owned entity does not itself create that trust. The appeal was dismissed.

This was an appeal from the IPO Hearing Officer’s decision dated 3 May 2024, reference BL O/0410/24. The dispute concerned ownership of patent applications relating to a method for controlling vegetation growth.

The parties had entered into a Collaboration Agreement concerning development, testing, patenting and future transfer of intellectual property to a jointly owned entity. The Hearing Officer held that the agreement did not transfer Dr Clearwater’s rights and ordered that he be added as a joint applicant. Bionome appealed, relying on the statutory presumption in section 7(4) of the Patents Act 1977, contractual construction and an alleged trust over Bionome. Dr Clearwater also sought to adduce further evidence in support of a Respondent’s Notice.

1. Appeal dismissed. The Hearing Officer was correct to add Dr Clearwater as a joint applicant.
2. Section 7(4) of the Patents Act 1977 creates a presumption in favour of the applicant. Once a claimant raises a prima facie case, the dispute is determined on the balance of probabilities on the evidence supplied by both parties. The provision creates no additional evidential burden. The Hearing Officer had not decided the case merely by allocating the burden of proof.
3. The Collaboration Agreement was to be construed by ordinary contractual principles. Its language contained multiple future steps and uncertainties: testing, assessment of commercial success, agreement to proceed with a patent application, legal advice and the establishment of a jointly owned entity. The references to an intention to transfer intellectual property did not amount to an assignment or an agreement to assign. They created a framework for a possible future assignment.
4. A commitment to make a future declaration of trust was insufficient to establish an actual trust when Bionome was incorporated and the applications were filed. The Collaboration Agreement did not itself establish legal or beneficial joint ownership, and the parties’ conduct before those dates did not do so. Any later Declaration of Trust came too late to affect the position at the relevant time.
5. The court accepted the additional evidence under the criteria in Ladd v Marshall, but the Respondent’s Notice did not require determination because the appeal failed on the principal ground.

• High Court (Patents Court): appeal from the IPO Hearing Officer’s decision dated 3 May 2024, reference BL O/0410/24. Appeal dismissed.