Patent decision

BL number

O/206/04

Concerning rights in

GB0005558.2, GB0105887.4 and EP01302193.6

Hearing Officer

Mr P Hayward

Decision date

8 July 2004

Person(s) or Company(s) involved

(1) Hydra-Ject Services UK Limited and (2) Robert Peter Enston v Eric James Enston

Provisions discussed

PA 1977 sections 7, 8, 12, 13, 39

Keywords

Employees / employment, Entitlement, Inventorship

Related Decisions

[2004] UKIntelP o04704

Summary

These three related patent applications are concerned with vibrating stuck valves in order to free them. The hearing officer concluded that the claim in the patents for applying vibration to a valve component (which could have included hitting it with hammer) was over-broad and could not be regarded as representing the invention. Rather, the invention lay in the idea of attaching a vibratory source to the valve.

The claimants asserted that the second claimant (Peter Enston) was the inventor, not his brother Eric. The hearing officer dismissed this claim, finding the assertion that Peter had thought of using ultrasonics before the date of the first patent application unproven, and also finding that even if Peter had, as he asserted, freed a valve in the Philippines by 'shocking' it, that was not the invention.

In the alternative, the claimants’ asserted that if Eric had invented it, he did so whilst still an employee of the first claimant. The hearing officer dismissed this too, finding that Eric had probably never been an employee, but even if he had, his employment had ceased by the relevant time because he was no longer receiving any money from the company.

The day before the hearing the claimants had tried to introduce a new pleading - that as a director Eric owed a fiduciary duty to the company irrespective of the provisions of section 39. Because it had come in so very late and would require further evidence, at the hearing the hearing officer had refused to allow this argument to be run.