Patent decision

BL number

O/055/03

Concerning rights in

UK patent application No GB0030017.8 & European patent application No 00310908.

Hearing Officer

Mr P Hayward

Decision date

21 February 2003

Person(s) or Company(s) involved

Xtralite Limited vs Hartington Conway Limited

Provisions discussed

PA 1977 sections 7, 8, 12, 30 & 39.

Keywords

Entitlement

Related Decisions

[2002] UKIntelP o43802

Summary

When Hartington Conway bought Xtralite Industrial Rooflights Limited (XIRL), the sale agreement included rights to the patent applications in suit which had been applied for by XIRL. These patents related to a glazing system known as the Xlok which was invented by Mr Robert Tweedy who was a Director of XIRL but also Managing Director of its sister company Xtralite Limited (Xtralite). Xtralite brought the action claiming that the patents should not have been included in the sale of XIRL to Hartington Conway because they belonged to Xtralite (not XIRL).

The Hearing Officer found that whilst Tweedy was a director of both companies, his role at XIRL was purely that of a non-executive director. He was thus not an XIRL employee and XIRL had not been entitled to apply for the patents. As Tweedy’s employer, under section 39 Xtralite were entitled to first ownership of the applications.

He found that the requirement in section 30(6) that an assignment be made in writing applies even before a patent application is filed and that in this case no formal assignment from Xtralite to XIRL had been made. Furthermore, particularly given the absence of any consideration , there was no evidence that a non-written assignment had been made at any stage either.

However, he also found that the Claimants were estopped from now claiming ownership of the patent applications. Estoppel requires the presence of three essential elements: a representation from A to B, reliance by B on that representation and B acting to their detriment as a result. Having been (wrongly) advised that it was too late to challenge XIRL’s claim to ownership of the patents, Xtralite had agreed a licence from XIRL to manufacture Xloks. The Hearing Officer found on the evidence that at a meeting shortly before the licence was signed and shortly before Hartington Conway bought XIRL, Xtralite had discussed the licence with Hartington Conway. The Hearing Officer decided that by this discussion Xtralite represented to Hartington Conway that XIRL owned the patent rights. Hartington Conway acted on that representation by continuing with the purchase of XIRL and at a higher price than they would have paid if they had known XIRL might not own the patents in dispute. Furthermore, even if Xtralite had not mentioned the licence with XIRL at that meeting, their failure to do so would still have constituted representation by silent acquiescence.