The Importance of Establishing Early Ownership of an Invention

The England and Wales High Court (Patents Court) issued a decision in June 2009 in the case of Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 that serves as a reminder of the great importance of ensuring that you own all of the relevant rights in respect of a new invention prior to filing internationally, and in particular through the international patent application process provided under the Patent Cooperation Treaty (PCT).

Cook Biotech Inc ("Cook") was the proprietor of a European patent that had been filed via the PCT route, and subsequently granted and brought into force in the UK. Edwards Lifesciences AG ("Edwards") had applied to the court for revocation of Cook's patent, and Cook, in turn, had counterclaimed for infringement.

Among other grounds, Edwards contended that Cook was not entitled to claim the benefit of priority from a US provisional application filed twelve months prior to the PCT application upon which the European patent was based. In particular, Edwards established that while Cook had secured rights to the invention, and ownership of the US provisional application, from two non-employee inventors prior to grant of the European patent, it had only done so by virtue of assignments executed after filing of the PCT application. (There was also a third inventor, who was a Cook employee, and his share of the rights vested in Cook by virtue of employment.)

The court ruled that because Cook was not the sole owner of the provisional application at the time of filing the PCT application, it was not entitled under the relevant provisions of the Paris Convention and the PCT, to claim the right of priority from the provisional, in the circumstance that the PCT application was filed in Cook's name only. As a result, the priority claim was deemed invalid, which allowed a later publication to be raised as prior art. Cook's patent was found to be invalid (and additionally not to have been infringed by Edwards in any event).

This decision may be of particular concern to Australian universities, public research institutes, and others, in the wake of the appeal decision UWA v Gray, (previously discussed in our news report here). In light of the UWA decision, a significant question arises, especially for Universities and similar organisations, as to whether the employment arrangement alone is sufficient to establish employer ownership of an invention. The problem may be further exacerbated in the academic or research environment, where it is very common for details of an invention to be published during the 12 months following a provisional filing. In these circumstances, it is vital that a subsequent claim to priority from the provisional filing date be valid.

The take-home message from Edwards v Cook is that it is extremely important for all applicants to ensure that they have secured ownership of an invention, and any initial provisional application, prior to the filing of any further applications claiming priority from the original filing. If necessary, or if there is any doubt, formal written assignment documents (or confrimatory assignments) should be obtained from all inventors.

In the event that it is not possible to secure the relevant rights from all inventors prior to filing internationally, the problem that arose for Cook may be avoided by filing initially in the names of the inventors, and subsequently recording a change of ownership once the necessary assignments have been obtained.

Mark Summerfield