Patent decision

BL number

O/182/00

Concerning rights in

GB9700759.5

Hearing Officer

Mr G M Bridges

Decision date

28 March 2000

Person(s) or Company(s) involved

James Richard Jackson v Carbury Herne Ltd

Provisions discussed

PA 1977 sections 8 and 13

Keywords

Entitlement, Inventorship

Related Decisions

O/356/99, [2000] UKIntelP o26500, [2000] UKIntelP o26900

Summary

Interim Decision

Mr Jackson was a specialist in diagnostics technology (with a particular interest in dipsticks) whilst Carbury Herne(CHL) were specialists in paper treatment. In 1995-6 they collaborated to produce new dipstick technology involving coating paper with an impermeable polymer with untreated areas allowing liquid to reach diagnostic agents carried by the dipstick.

Plans to form a company to market the dipsticks broke down and in January 1997 application GB9700759.5 was filed in the sole name of CHL. The application was subsequently terminated without being published, but formed the priority basis for a later file PCT application subsequently published as WO98/32018. The PCT application foreshadowed a number of foreign applications plus an EP(UK) application. Despite being warned of the limited options for relief that the termination of the GB application allowed, Mr Jackson limited his claim to actions under sections 8 and 13 and failed to file a promised section 12 action in respect of the PCT action.

After hearing the evidence, joint inventorship was established, but because section 13 only has applicability to published applications or granted patents the only relief available to Mr Jackson was a statement to this effect. As regards the entitlement action under section 8, termination of the UK application (under the policy then existing) and subsequent publication of the PCT application restricted the relief available similarly to a finding of joint entitlement.

An interim decision was issued to allow Mr Jackson to allow Mr Jackson to consider whether he wanted to raise action under section 12 and the parties to consider settlement in the light of the findings.