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Jones v. Irmac Roads Ltd [2022] EWHC 495 (IPEC)

In these proceedings Jones sought a declaration (under s.37 of the Patents Act 1977; the “Patents Act”) that he, not Irmac Roads Ltd, was the proprietor of UK Patent No. 2 506 097 (“the Patent”) granted on 13 September 2017. The Patent claims an invention entitled “Improvements relating to road repair systems” and it was not in dispute that Jones was the sole inventor.

Jones succeeded and, in so holding, His Honour Judge Hacon considered the scope of s. 30(6) of the Patents Act which concerns transactions dealing with patents, applications for patents or any right in a patent. Under s. 30(6) any transaction to which it applies must be in writing and signed by or on behalf of the assignor. The court held that “any right in a patent” includes the right to apply for a patent under s. 7 of the Patents Act (following Hartington Conway Ltd’s Patent Applications [2004] RPC 7).

The s. 7 right arises as follows: Upon an invention being made, a person or persons who satisfy s.7(2)(b) (which provides, inter alia, that rules of law or prior agreements may entitle others in preference to the inventor(s)), or if there are none the inventor(s) under s.7(2)(a), acquire the right to file an application for a patent (an inchoate property right). That right is exclusive to them or exclusive to their successor or successors in title. No other person can lawfully apply.

The parties agreed that the right to apply for a patent had only ever been transferred by oral agreements (from Jones to Irmac Ltd and then, on the defendant’s case, to Irmac Roads). Since there was no written assignment, HHJ Hacon held that the legal interest in Jones’ right to apply for the Patent was never assigned. However, Jones had orally agreed to assign the right for consideration. The consideration was subsequently given, at which point the equitable interest in the right passed to Irmac Limited. Therefore, the equitable interest passed to Irmac Ltd even if the legal interest remained unassigned.

Jones and Irmac Ltd had also entered into a Patent Option Agreement, which allowed Jones to request that all patent rights be reassigned to him if Irmac failed to properly exploit the invention. The option arose if Irmac failed to commence “trading activities” within 6 months and could be exercised by Jones serving a notice on Irmac Ltd.

Jones served a notice purporting to exercise the option. However, Irmac Roads disputed that the option notice was validly served on two grounds: (1) the activities undertaken by Irmac Ltd were “trading activities” and so the option could not be exercised; and (2) that the option notice was defective and could be ignored because it included a date in the past for the time by which reassignment should occur. HHJ Hacon found against Irmac Roads on both and so the option was validly exercised.

This meant the equitable interest in the right to apply for a patent for the invention had, upon service of the notice (which created a contractual obligation), transferred back to Jones. Therefore, a later purported oral transfer from Irmac Ltd to Irmac Roads could not have occurred (their being no rights at that time to transfer). In that case, Irmac Roads, which had made the relevant patent application which resulted in the Patent, was not entitled under s.7 to have made such an application. The legal and equitable interest vested in Jones at the time of the patent application and, that being the case, HHJ Hacon held that Jones was entitled to the Patent.

A copy of the decision can be read here.

Headnote: Ian Turner, Marks & Clerk Law