Patent - application by person claiming to be owner - true owner estopped from challenging applicant's status

Xtralite (Rooflights) Ltd v Hartington Conway Ltd: ChD (Mr Justice Pumfrey): 31 July 2003

The claimant sought to be substituted as the applicant for a patent in place of a company whose business had been sold to the respondent.

The divisional director, acting for the Comptroller-General of Patents, refused to make the substitution.

The claimant appealed, claiming that they were the legal owners of the patent and that there was no evidence to support the divisional director's findings that there was an estoppel by representation, which prevented them being substituted as applicants.

Douglas Campbell for the appellant (instructed by Hay & Kilner, Newcastle upon Tyne); Richard Davis (instructed by Serjeants, Leicester) for the respondent.

Held, dismissing the appeal, that the essential right associated with a patent was the right to bring infringement proceedings, which was conferred on the proprietor of the patent; that 'proprietor' did not mean 'registered proprietor', and a statutory right of action was conferred on anyone who could trace their title through those persons referred to in sections 7(2)(a) and 7(2)(b) of the Patents Act 1977, including any person who by an agreement entered into with the inventor was entitled to the whole property of it; that where a chain of transfers demonstrated the devolution of the title to the patent to the person claiming to be entitled to it, an estoppel could operate to bind the true owner where the true owner produced the false impression that the applicant for the patent was entitled to the whole property of it; that the respondents could therefore claim that the claimant was estopped from challenging their status as applicants, and that there were no grounds for overturning the findings of the director that grounds for an estoppel by representation had been established.