Patent decision

BL number

O/086/04

Concerning rights in

GB 9814507.1, PCT/GB99/02090, EP 99929525.6 & AU 4631799

Hearing Officer

Mr S N Dennehey

Decision date

31 March 2004

Person(s) or Company(s) involved

I.D.A. Limited et al v University of Southampton et al

Provisions discussed

Sections 8, 12 and 13

Keywords

Contract, Entitlement, Inventorship

Related Decisions

[2002] UKIntelP o06702, [2002] UKIntelP o44402, [2002] UKIntelP o45602, [2002] UKIntelP o51602

Summary

It was common ground that one of the claimants (M) contacted one of the defendants (H) with the idea of using magnetic particles instead of electrostatic particles in Hs prior cockroach trapping technology. M also supplied samples of magnetic particles for H to test. These tests proved the concept. The hearing officer was not persuaded on the balance of probabilities that H had thought of trapping or killing pests, such as insects, using magnetic particles to adhere to the cuticles of the pests, prior to any contact between the defendants and the claimants on this matter. He therefore found that M was solely responsible for devising this concept. The Hearing Officer also found on the balance of probabilities that M had devised a second inventive concept comprising an insect trap or bait station wherein magnetic particles are anchored to a magnetic zone. He further found that IDA was entitled to the patent applications by virtue of a prior assignment made by M. The Hearing Officer considered an alleged Gentlemans agreement concerning ownership of intellectual property but found that it was not a binding agreement and so it did not disturb his finding on entitlement. The claimants also presented a case for entitlement as the result of an alleged misuse of confidential information but the Hearing Officer did not consider this aspect of the claimants case in view of his finding on other grounds that IDA was entitled to be granted the patents in question.