In Ningbo Wentai Sports Equipment Co Ltd v Wang  EWPCC 51 the Patents County Court (PCC) held that it has jurisdiction over an action for breach of confidence, if it is associated with a previous patent infringement claim under the PCC’s special jurisdiction in proceedings ancillary to proceedings relating to patents or designs.
On 2 February 2012, Ningbo, a manufacturer of golfing equipment, issued proceedings in the PCC to revoke UK Patent GB 2473927 (the patent) for a folding golf cart. Mr Wang, who designs and trades in golf carts, was the proprietor of the patent.
Ningbo alleged, amongst other things, that the patent was invalid, based on disclosures to the public between June and August 2009, which took place prior to the application being filed on 17 September 2010. Mr Wang contended that he invented the folding golf cart and disclosed his ideas to Ningbo in confidence, pursuant to an agreement between the parties. Ningbo then made disclosures about the invention in 2009 in breach of confidence. Ningbo denies that Mr Wang invented the cart, asserting instead that the invention was made by Ningbo’s employees.
Mr Wang denied the invalidity of the patent and counterclaimed for damages for breach of contract and/or breach of confidence or, alternatively, for an account of profits by reason of the breaches of confidence.
Under Section 2(4) of the Patents Act 1977, there are provisions that result in certain public disclosures in breach of confidence not qualifying as prior art against a patent. Unfortunately for Mr Wang, Section 2(4) only excludes disclosures in breach of confidence that took place within six months of the filing date of the UK patent application. As the application for the patent was filed on 17 September 2010, but the alleged prior disclosures occurred more than six months earlier, the disclosures would still be relevant prior art despite any breach of confidence. On this basis, Mr Wang chose not to contest the issue and accepted that the patent was invalid. On 30 April 2012, Judge Birss QC made an order by consent to revoke the patent. This disposed of the invalidity action, but not the counterclaim, which Mr Wang requested remain in the PCC.
The question arose as to whether the PCC had jurisdiction to hear the counterclaim, as it was a claim pleaded in breach of contract and breach of equitable obligations of confidence, with no patent element remaining.
Judge Birss QC held that the PCC had jurisdiction over the contract claim, under normal County Court jurisdiction, but not the equitable claim for breach of confidence. The PCC could, however, determine the breach of confidence issue under its special jurisdiction in proceedings ancillary to, or arising out of, the same subject matter as proceedings relating to patents or designs, pursuant to the wide scope of Section 287 of the Copyright Designs and Patents Act 1988. The fact that the patent element of the case ended before the parallel confidence claim was irrelevant.
Judge Birss QC commented that the claim and counterclaim was rightly started in the PCC since it centred on a patent dispute as well as claims ancillary to that action. If the case had been solely a claim for breach of confidence pleaded in contract and in equity, then it was unlikely the action could have originated in the PCC; the High Court would be the correct forum for such a claim. If the parties wished to transfer the case to the PCC, however, they could apply to the Chancery Division to do so. No jurisdictional questions arise on such a transfer because, under Section 40(2) of the County Court Act 1984, there are no jurisdictional limits placed on case transfer. The result of such an order for transfer would be that the County Court has jurisdiction to decide the matter.