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Andrew Cooke v Watermist Limited, Patents Court (Chancery Division), High Court of Justice, London [2014] EWHC 125 (Pat)

Mr Justice Arnold of the Patents Court, has dismissed the appellant’s, Mr Cooke, appeal against a decision of Phil Thorpe acting for the Comptroller-General of Patents, that Mr Cooke was entitled to co-inventorship of, and co-entitlement to, UK Patent No. 2458698 concerning a hose reel unit, which was granted to Watermist Limited (“Watermist”).

Although Mr Cooke’s pleaded case was one of the co-inventorship, his evidence was that he had devised the core inventive concept (the idea of including a pump and motor for pressurising the hose reel inside the wall-mounted cabinet). Watermist’s case was that Mr Bridgman, the named inventor, had devised the inventive concept.

Mr Cooke’s appeal turned on two points – (i) that the hearing officer erred in law by making impermissible resort to the burden of proof, and (ii) that the hearing officer’s conclusions were contrary to the evidence. The court did not accept either ground of appeal.

In approaching his decision, Arnold J set out passages from the decision of the hearing officer including a section from the speech of Lord Hoffmann in Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2007] UKHL 43, [2008] RPC 1:

“a person who seeks to be added as a joint inventor bears the burden of proving that he contributed to the inventive concept underlying the claimed invention and a person who seeks to be substituted as a sole inventor bears the additional burden of proving that the inventor named in the patent did not contribute to the inventive concept”.

In relation to the first ground of Mr Cooke’s appeal, Arnold J cited from Stephens v Cannon [2005] EWCA Civ 222. [2005] CP Rep 31:

“The situation in which the court finds itself before it can despatch a disputed issue by resort to the burden of proof has to be exception…The exceptional situation which entitles the court to resort to the burden of proof is that, notwithstanding that it has striven to do so, it cannot reasonably make a finding in relation to a disputed issue”.

Counsel for Watermist submitted that the hearing officer had not in fact resorted to the burden of proof; but that if he had, he was justified in doing so.

With regard to the submission that the hearing officer had not resorted to the burden of proof, Arnold J stated “the hearing officer’s decision is not clear on this point. After some hesitation, I have concluded that I accept the submission of counsel for Watermist.” Given his doubt however, he went on to deal with the second submission and found the hearing officer was entitled to resort to the burden of proof, having striven to decide the issue without resorting to the burden of proof and clearly explained why he had not been able to do so. This was a case of one man’s word against another’s, and the hearing officer had concluded that neither Mr Cooke nor Mr Bridgman was any more credible than the other.

Turning to the second ground of appeal, Arnold J noted that the hearing officer had the advantage of seeing and hearing the witnesses give evidence, and the appellate court should only overturn a finding of primary fact involving the assessment of witnesses, if it is satisfied that the lower court or tribunal was plainly wrong. Finally, Arnold J stated: “On the face of the decision, the hearing officer did conscientiously weigh the evidence. Having done so, he concluded that he was not persuaded on the balance of probabilities that Mr Cooke’s account was the correct one, or at least that Mr Cooke has not discharged the burden of proof”, and as such the appeal was dismissed.

Read the entire decision (in English) here.

Head note: Scott Parker