Intransigent Inventors and Switching Sides

I wrote a while back about a case involving inventors refusing to sign forms for a US application. In that case, the application had been assigned to another company after the original applicant went bust. The inventors, who were directors of the original applicant company, unsurprisingly became uncooperative once the new applicant took over, and refused to sign declaration and assignment documents for a subsequent US application. The case was resolved by a UK IPO hearing officer deciding in favour of the new applicant because the original intention was to have the application to proceed in the name of the company and not the inventors. It undoubtedly helped the new applicant's case, however, that neither inventor filed anything in their defence, which resulted in the claimant's case being considered to be supported (according to Rule 77(9)).

As I mentioned at the time, cases relating to entitlement under section 12 (relating to foreign and international patents and applications) do not come up very often. I was therefore interested to see that another one was decided last month. This was the case of University of Warwick v Dr Geoffrey Diamond, published as BL O/518/15. The case concerned US application 12/306,505, which happens to have been recently allowed by the USPTO, although the UK proceedings were initiated over two years ago while the application was undergoing examination.

The issue related, as before, to an inventor refusing to sign declaration and assignment documents for the US application. The application identified three inventors, two of whom were cooperative. Dr Diamond, however, refused to sign. Unlike in the earlier case, he contested the claim, and argued that the University had no right to his contribution to the invention. Instead, he argued that his contribution belonged to a company, G-Tronix, which had been spun out from the University and at one point had all of the inventors listed as directors but by the time the proceedings were issued had only Dr Diamond as director (and has now been dissolved).

By the time the hearing took place in June this year, it appears that Dr Diamond had caused the University a great deal of difficulty (and, presumably, expense), having caused the hearing officer at the IPO to issue two preliminary decisions (BL O/208/14 and BL O/225/15), one of which Dr Diamond appealed to the High Court (and had struck out). The argument was largely about whether Dr Diamond was, at the time the invention was made, employed by the University in a capacity where section 39 would indicate that the invention belonged to the University. Dr Diamond argued that he was not, although his arguments were somewhat confused and contradictory. He initially argued that he was employed by G-Tronix but, when cross-examined, said that this was a "slip of the pen". He was also quite vague about how early prototypes of the invention were developed, even though he claimed that they were developed in his workshop at home, and did not appear to have any knowledge of how some of the figures in the patent application were prepared, even though they formed a key aspect of the invention. The hearing officer found Dr Diamond to be unconvincing and not a credible or reliable witness, although did not go so far as to find him dishonest.

You might think that this would fatally damage Dr Diamond's case, but you would be wrong. Since the proceedings were initiated by the University, it was down to them to establish that they were entitled to the invention, and not for Dr Diamond to prove that he was instead. Unfortunately for the University, they failed to do this to the hearing officer's satisfaction. Even though the hearing officer was fairly sure that the invention was made before the inventors became directors of G-Tronix, and Dr Diamond was working with the other inventors at the time, the evidence of whether the invention was made in the course of Dr Diamond's normal duties was not particularly strong on either side and the claimant had failed to show that the invention belonged to them. This left the US application having to proceed in joint names, and presumably with neither side being particularly happy about the outcome.

The moral of the tale in my previous story about section 12 proceedings was that it was sometimes necessary to use a sledgehammer to crack a nut. This time though, to extend the metaphor a bit further, I would say that if you need to use a sledgehammer you should make pretty sure that you have a good one as sometime the nut can be more difficult to crack than you first thought.

As a postscript, while looking through the prosecution files for the family of applications relating to the one in question, I noticed something odd. The US application forms part of a family that includes international application PCT/GB07/050368, which was published as WO 2008/001141. This entered the European regional phase in January 2009 as European application number 07733789.7. In the decision the hearing officer mentioned a few times the patent attorney who was responsible for the PCT application, who Dr Diamond had met and apparently liaised closely with for preparation of the application. This same patent attorney was also responsible for making a request for the application to enter the European regional phase, as evidenced by his electronic signature on the request form. The next year, however, in July 2010 the EP register shows a change of representation, with another representative from the same association of patent attorneys becoming responsible. This is all fairly standard, as representatives change fairly often and responsibilities for applications can change. What happened afterwards, however, was not normal. Only three months later, in October 2010, third party observations were filed, attacking the validity of the application. These were prepared and filed by the same attorney who was originally responsible for the application, but was apparently now representing someone else, having left his previous employ and set up by himself. This other party was identified only as "a well established manufacturer [who] is monitoring with interest the prosecution of this European patent application". Further observations were filed in March 2011 by the same attorney. None of this prevented the application from going on to be granted, which it did in 2012, although the examiner did use the prior art cited by the third party in raising an objection of lack of inventive step in a summons to oral proceedings.

Switching sides is something that would obviously raise alarm bells for any patent attorney. If you were involved with preparing, filing and prosecuting a patent application, it would be a clear conflict of interest to then work for another party in trying to knock down the same application. This is made quite clear in the IPReg Code of Conduct, Rule 7 of which states:

"A regulated person must not act where his interests conflict with those of a client or of a former client, or where he knows or has reasonable grounds for suspecting that the interests of any partner or regulated person or staff of his firm, conflict with those of a client or of a former client.

Provided in all the circumstances it is reasonable to do so, a regulated person may act for two or more clients, or for a client as against a former client, in relation to the same or a related matter in a situation of conflict, or possible conflict but only if all of the parties have given their informed consent in writing."

What I wonder is whether the University gave permission for the attorney to switch sides and start attacking the patent application that he originally prepared and filed. I would be very surprised if they did, since I cannot see how it could possibly be in their interests to do so, but this seems to me to be the only way that this would avoid a clear breach of the IPReg code.

Intransigent inventors & USPTO formal requirements

It is well known among UK patent attorneys that the US patent system operates under different rules, some of which seem designed to make life just that bit more difficult for applicants and their attorneys. No matter how carefully a patent application is prepared and filed, making sure all of the requirements are met according to UK and international requirements, the US still insists on adding its own further requirements to the typically very long-winded task of getting a patent. One of these is the need for the inventor to complete a declaration to the effect that they have seen and approve of the application being filed at the USPTO. The other, which is almost always required when the resulting patent is to be owned a company rather than the individual inventor, is an assignment from the inventor, regardless of the actual status of the applicant under the local law of where the invention was actually made (which in the UK results in most inventions belonging as a matter of course to the inventor's employer, according to section 39).

While it is possible, and in some cases advisable, to have something signed beforehand by the inventor to the effect that they have assigned any rights they might have, this is not typically enough to comply with all the requirements at the USPTO, and further inventor signatures are normally required. It is not usually therefore worth the extra bother of insisting every time on getting something signed by the inventors early on in the process. When the inventors are being compliant this is not a problem, since signatures can always be obtained later on. However, all sorts of things can happen from the time when, for example, a UK priority application is filed, to the time two and a half years later when it comes to filing a US national phase application. An inventor who was quite happy to sign anything put in front of him at the start of this process may no longer be willing or able to sign anything later on. My first exposure to this strange world was as an inventor when, years after I came up with an invention for which a patent was applied for in the UK, I was tracked down by the patent attorney who had prepared and filed the application. The patent attorney sent to me at my home address a couple of forms to sign, and mentioned in a very carefully worded cover letter that they were just formalities and it would be very nice and helpful if I could just sign them because if I didn't it would just cause him a lot of difficulty and expense. I considered this for a few minutes and then (even though I had left my previous employ on less than the best of terms) signed the forms and sent them back, thinking that it was surely not worth putting my previous employer to unnecessary trouble if there was nothing further I was going to get out of it anyway. This is, however, not the way things always go, and a recent decision from the UK IPO illustrates just how much difficulty can be involved in resolving the issue if an inventor refuses to sign some forms.

The decision, Zincometal S.p.A. (BL O/469/12) was issued on 27 November 2012 in relation to a US national phase application filed in February 2010, which in itself shows how long-winded the process can be.  The story begins with a UK application filed in 2007 in the name of Sigmala Limited. A PCT application (published later as WO 2009/022090) was then filed a year later. Unfortunately, during the time the application was progressing through the international phase, Sigmala went into administration. The company's assets, including its patent applications, were bought by another company, Zincometal S.p.A., which naturally wanted the patent application to then proceed in their name. This was not a problem for the international application, which was changed on the basis of the fact that the applicant had changed, and was subsequently also not a problem for the European Patent Office, who accepted the change of name and granted the application to Zincometal in January 2012. For the USPTO, however, it was a different matter altogether. Because the two named inventors, who had been directors of Sigmala at the time the invention was made, either refused to sign the required documents or could not be contacted, it was not possible to fulfil the formal requirements for the US application. In parallel with a petition to the USPTO (which is another story altogether), a reference was made to the UK IPO on behalf of Zincometal under section 12(1)(a) requesting an order that would allow their patent attorney to sign the forms on the inventors' behalf. In the normal course of events (according to the procedures under Rule 77), the inventors were notified of the reference by the IPO but no response was forthcoming from either of them. As a result the hearing officer accepted the facts of the case to be those in the supporting documents provided by Zincometal's attorney.

The hearing officer referred to two previous cases where references were made to the comptroller under section 12(1), being Cannings' US application [1992] RPC 459 and British Telecommunications BL O/402/01, which established that it was within the comptroller's power to order an inventor to execute any assignment necessary to effect the determination of entitlement to a foreign application and, if the inventor still refused to sign, to authorise an affected party to sign on the inventor's behalf. The evidence supplied, which was uncontested, provided support for the ownership of the invention having been transferred to Sigmala by virtue of the inventors' positions within the company, and that these rights had been transferred to Zincometal when Sigmala entered administration. Although the inventors had been asked to sign the documentation necessary to put the entitlement into effect in the US, they had either refused or failed to do so. The hearing officer therefore considered that the facts dictated an order in the terms requested was appropriate, and authorised Zincometal's attorneys to execute on behalf of the named inventors a combined declaration and power of attorney form and an assignment of rights in the US application.

Decisions of this type, where the UK comptroller effectively decides on ownership of a foreign application, are comparatively rare, this being apparently only the third one published while the Patents Act 1977 has been in force. This is to me a bit of a surprise, as an order under section 12 should be able to effectively shortcut the process of getting a petition allowed at the USPTO, which can also be long-winded and complicated. An advantage of getting an order under section 12 is that if an reference is uncontested by the inventors and at least a prima facie case is presented that an order would be justified, it is very likely to work. Inventors that simply refuse to cooperate for no reason other than bloody-mindedness can therefore be more easily cut out of the picture once they realise there is no point in contesting. The moral of the case seems to be that sometimes it is unfortunately necessary to use a sledgehammer to crack a nut.