Auckland V Enderby

Paul Auckland v Enderby Construction Ltd.
BL O/343/06
11 December 2006

This decision related to a dispute over entitlement of a patent originally brought under section 8 and, by virtue of section 9, becoming a reference under section 37. The proceedings were brought by the inventor (PA), being the original and current applicant, who had requested that a declaration be made on entitlement of the patent. The respondent was the inventor's employer (E) at the time the invention and priority application were made. The patent related to an improved temporary manhole cover, the invention of which arose after an accident at a construction site where PA was working as plant coordinator and contracts manager, in which a worker fell down an open manhole. PA and E both relied on the provisions of section 39, the arguments relating to the duties of PA in relation to his employment. The Hearing Officer (HO) took into account statements and heard evidence, including cross-examination, from several witnesses. The HO commented on the witnesses' varying degrees of credibility, a factor that appeared to lead in large part to the decision eventually arrived at. The HO referred to and applied the four step test relating to section 39(1)(a) proposed by Kitchen J in LIFFE v Pinkava [2006] EWHC 595 (Pat). After considering that PA's normal duties did involve investigating solutions to prevent accidents reoccurring, the HO considered that the circumstances of the case were sufficiently different from those in Harris' Patent [1985] RPC 19, Staeng Limited's Patent [1996] RPC 183 and Greater Glasgow Health Board's Application [1996] RPC 207, that these previous cases did not provide assistance in answering the question of whether the invention was made in the course of normal duties. However, as PA did have a duty to investigate accidents and come up with recommendations to avoid similar accidents in future, the question was answered in the affirmative. In attempting to answer the question of whether the circumstances were such that an invention might reasonably be expected to result, the HO, referring to Falconer J's judgment in Harris' Patent, considered that PA was not employed to invent, and noted that his employer did not invent things. The purpose of the investigation into the accident was apparently more to be seen to be doing something in response to the accident, but an invention arising from this was beside the point. The HO also considered, on the basis of witness statements and cross-examination, that there were no duties specifically assigned to PA that would reasonably be expected to result in an invention being made, not being convinced by statements from representatives of E that PA had been at the relevant time assigned the task of finding a solution. Since PA was not in a senior position with his employer, there was no question of whether there was a special obligation to further E's interests. Thus, the HO decided that, by virtue of section 39(2), the invention and therefore the patent belonged to the inventor and not to his employer.

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