The Intellectual Property Enterprise Court (IPEC) has held that the inventive concept of a European patent (EP) application had been devised by an employee of the applicant, so the applicant was therefore entitled to make the application.
As the national court of the applicant, the UK court has jurisdiction to determine the ownership of an EP application (Article 2, EPC Protocol on Recognition; section 82, Patents Act 1977) (1977 Act).
A patent for an invention may be granted: primarily to the inventor or joint inventors; or to any person who, by any rule of law, or an enforceable term of any agreement entered into with the inventor before the making of the invention, was at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the UK (section 7(2), 1977 Act) (section 7(2)).
"Inventor" means the actual deviser of the invention (section 7(3), 1977 Act) (section 7(3)).
In Yeda v Rhone-Poulenc, the House of Lords held that sections 7(2) and (3) determine who is entitled to the grant of a patent ( HL 43).
In Actavis v Lilly, in relation to the doctrine of equivalents, the Supreme Court considered the term "inventive concept" to be synonymous with the inventive core of the claim, to be ascertained by focusing on the problem underlying the invention.
In Pozzoli SPA v BDMO SA, in the context of the assessment of inventive step, the Court of Appeal characterised the inventive concept as identifying the essence of the claim (www.practicallaw.com/6-374-1001).
B developed technology to convert waste materials into useful products, including biodiesel, a fuel derived from vegetable or animal fat, including waste oil and grease. B designed and oversaw the construction of a plant for A for making biodiesel from fats, oils and greases recovered from sewers and grease traps.
A later filed two EP applications. Before these were granted, B filed a claim for declarations that it was entitled to the patents to be granted under the two EP applications, and to related relief.
The European Patent Office stayed the grant process pending determination by IPEC of entitlement to the application. Before the hearing, B and A settled in respect of the second of the two applications.
In respect of the first EP application, A argued that the composition of the biodiesel, as stated in the claims, was the inventive concept. B argued that the inventive concept was the process used to produce the biodiesel.
The court held that B was not entitled to the first EP application.
The first step in any entitlement dispute was to decide who was the inventor of the claimed invention. The two questions to be answered in an entitlement dispute were:
• What was the inventive concept? • Who devised the inventive concept?
A party seeking to be added as an inventor bore the burden of proving that they contributed to the inventive concept. If they sought to be substituted as the sole inventor, they also had the burden of proving that the named inventor did not contribute to the inventive concept.
In addition to the question of entitlement, the courts had used the term in two other contexts (Actavis v Lilly; Pozzoli). Here, the court drew a distinction between the use of the term inventive concept in statute and in common law. In statute the term relates to an overarching relationship between two or more inventions in a single EP application, involving one or more special technical features in common. By comparison, the inventive concept discussed in Yeda, Actavis and Pozzoli is part of a single invention and may be described by guiding metaphors such as the core, the essence and the heart of the invention and the new technical insight conveyed by the invention.
A and B had each put forward different inventive concepts and argued that the inventive concept of the other would have been obvious at the priority date. On the basis of the wording of the application and the evidence, the skilled person would have identified the inventive concept to be the composition of the biodiesel. As it was agreed that this concept was devised by an employee of A, A was entitled to maintain ownership of the application.
This decision provides a useful summary of the law relating to entitlement.
Case: BDI Holding GmbH v Argent Energy Ltd and another  EWHC 765 (IPEC).