Application - Claimant and defendant discussing fully flushable ostomy bag

Welland Medical Ltd v Hadley: Chancery Division, Patents Court (Mr Justice Floyd): 28 July 2011

Since 1988 the claimant had been in the business of designing, arranging for the manufacture of and selling ostomy pouches. In 2008, it became interested in the design and development of a pouch which could easily be degraded into a flushable piece of waste in the water of a toilet bowl. The claimant had engaged RS to conduct research into a fully flushable pouch on terms which would result in any intellectual property generated in the course of such research being vested in the claimant.

In December 2008, RS was looking for a producer of soluble films for use in connection with that research. He was put in touch with the defendant's company. RS and the defendant had a meeting covered by a confidentiality agreement. At that meeting ideas were discussed for a new fully flushable ostomy bag. RS showed the defendant a drawing entitled 'Fully Flushable Pouch - Concept'. The defendant produced a sample of material (the integral material).

A patent application was filed by defendant in his own name alone shortly before a meeting with RS took place on 27 April 2009. A third meeting was arranged for 17 February 2010, but shortly before that the defendant contacted RS informing him that he had filed the patent application. The meeting was then cancelled.

The claimant referred to the comptroller of the UK Intellectual Property Office the question of whether it was entitled to ownership of the patent application filed by the defendant. The hearing officer held that the defendant was the actual deviser and sole inventor of the inventive concept disclosed in the application, and that in consequence he was the owner of the application. The claimant appealed. The appeal would be dismissed.

In the instant case, RS could not claim to be the sole inventor of the integral material, or of an ostomy bag constructed from that integral material. Even if he had had the idea, there was no finding that he communicated it, or anything else to the defendant. In the circumstances, the claimant had not established that which it sought to establish, namely that RS was the inventor of the inventive concept disclosed in the application and that the defendant was not (see [27]-[28] of the judgment).

Markem Corpn v Zipher Ltd; Markem Technologies Ltd v Buckby [2005] All ER (D) 377 (Mar) considered; Yeda Research and Development Co Ltd v Rhone-Poulenc Rorer International Holdings Inc [2008] RPC 1 considered.

Richard Hacon (instructed by Fry Heath Spence) for the appellant. Miles Copeland (instructed by Forresters) for the respondent.