Patent Entitlement - BDI Holding GmbH v Argent Energy Ltd. and Another

Sample of biodiesel

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Source Wikipedia Biodiesel

Jane Lambert

Intellectual Property Enterprise Court (Judge Hacon) BDI Holding GmbH v Argent Energy Ltd. and another [2019] EWHC 765 (IPEC) (27 March 2019)

This was an action by BDI Holding GmbH ("BDI") for a declaration that it was entitled to a European patent for the following invention:

"There is described a biodiesel composition and process for producing biodiesel and related products. There is also described related fuels and fuel blends comprising biodiesel. The biodiesel composition is prepared from a mixture comprising fats, oils and greases from sewer waste. The composition comprises a mixture of esters of which 7-10.5 weight % is methyl octadecanoate (stearate). Specified percentages of other methyl esters are also claimed, including methyl tetradecanoate (myristate), methyl hexadecanoate (palmitate), methyl cis-9-octadecenoate (oleate) and others."

An application for a patent for that invention had been filed under application, number EP3011041 (A1) by Argent Energy Ltd. and Argent Energy (UK) Ltd. ("Argent") which companies produce biodiesel from fats, oils and greases recovered from sewers and grease traps at a plant in Motherwell.  Argent had also filed an application for a patent for another invention under application number EP 3 078 724 (A1) to which BDI also claimed to be entitled but that claim was settled on the first day of the trial of the action.

Jurisdiction
Art 60 (1) of the European Patent Convention ("EPC") provides that the right to a European patent shall belong to the inventor or his successor in title. 

The action was brought in England because art 1.1 of the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent – (Protocol on Recognition) confers on the courts of states that are party to the EPC ("contracting states") jurisdiction to decide claims, against the applicant, to the right to the grant of a European patent in respect of one or more of the states designated in a European patent application. if an applicant for a European patent has his residence or principal place of business within one of the contracting states, art 2 of the Protocol requires proceedings to be brought against him in the courts of that contracting state. 

S.82 (4) (a) of the Patents Act 1977 confers jurisdiction on the courts of the UK to determine who is entitled to a patent where the applicant for the patent has his residence or principal place of business in that country.  As s.82 (4) (a) applied, this case fell within one of the exceptions to s.82 (2).   It followed that this action was to be determined in accordance with s.12 (1) of the Patents Act 1977:

"(1) At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made) –
(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
…
and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination."

Finally, s.99 provides:

"The court may, for the purpose of determining any question in the exercise of its original or appellate jurisdiction under this Act or any treaty or international convention to which the United Kingdom is a party, make any order or exercise any other power which the comptroller could have made or exercised for the purpose of determining that question."

The court, therefore, has the same jurisdiction to determine entitlement questions as the comptroller (chief executive of the Intellectual Property Office).

Substantive Law
Referring to the House of Lords' decision in Yeda Research and Development Company Ltd v. Rhone-Poulenc Rorer International Holdings Inc and others [2008] 1 All ER 425, [2007] Bus LR 1796, [2007] UKHL 43, His Honour Judge Hacon, who tried the action, directed himself that the question should be determined in accordance with s.7 of the Patents Act 1977:

"(1) Any person may make an application for a patent either alone or jointly with another.
(2) A patent for an invention may be granted

(a) primarily to the inventor or joint inventors;
(b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned;

and to no other person.
(3) In this Act "inventor" in relation to an invention means the actual deviser of the invention and "joint inventor" shall be construed accordingly.
(4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled."

In Yeda, Lord Hoffmann had said that Lord Hoffmann stated that s.7(2) and (3) are an exhaustive code for determining who is entitled to the grant of a patent.

As to who was the inventor, Lord Hoffmann had said at paragraph [19] of his speech:

"[19] In my opinion, therefore, the first step in any dispute over entitlement must be to decide who was the inventor or inventors of the claimed invention. Only when that question has been decided can one consider whether someone else may be entitled under paragraphs (b) or (c). In many cases, including the present, there will be no issue about paragraphs (b) or (c). …
[20] The inventor is defined in s.7(3) as 'the actual deviser of the invention'. The word 'actual' denotes a contrast with a deemed or pretended deviser of the invention; it means, as Laddie J. said in University of Southampton's Applications [2005] R.P.C. 11, [39], the natural person who 'came up with the inventive concept.' It is not enough that someone contributed to the claims, because they may include non-patentable integers derived from prior art: see Henry Brothers (Magherafelt) Ltd v Ministry of Defence [1997] R.P.C. 693, 706; [1999] R.P.C. 442. As Laddie J. said in the University of Southampton case, the 'contribution must be to the formulation of the inventive concept'. Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the prior art. Inventors themselves will often not know exactly where it lies."

The learned judge concluded at paragraph [15] of his judgment that there are two questions to be answered in an entitlement dispute:
(1) What is the inventive concept?
(2) Who devised the inventive concept?
It was common ground that the party seeking to be added as an inventor bears the burden of proving that he contributed to the inventive concept. If he seeks to be substituted as the sole inventor, he bears the further burden of proving that the named inventor did not contribute to the inventive concept.

The Inventive Concept

BDI had designed and overseen the construction of the Motherwell plant between 2004 and 2005. It pleaded that the inventive concept was as follows:

"1. A method of processing high impurity feedstock (specifically feedstock comprising 20%+ FFA content and/or that colloquially known as 'sewer grease') so as to produce a useable biodiesel composition, including the steps of purification, optional high pressure esterification, pre-esterification and trans-esterification wherein:

a. the purification step uses the necessary means to render the resultant mixture usable for the high pressure esterification step;
b. the high pressure esterification step (if necessary) reduces the FFA content in the mixture so as to make it suitable for the subsequent steps; and
c. the pre-esterification step involves the catalysed esterification of the FFA with an alcohol to provide an ester (and reduces the FFA content in the mixture to 3% by weight or less); and
d. the trans-esterification step converts triglycerides to fatty acid methyl esters and includes such purification/separation/ distillation steps as are necessary to produce a useable biodiesel composition.

2. The claim relates to a biodiesel composition defined by generalising the product compositions resulting from performing the process on two particular feedstocks, both of which include sewer grease. Claim 1 includes the weight percentages of two of the various methyl esters present in the claimed biodiesel composition, but there is no technical rationale for such a choice and no technical rationale is taught by the application."

BDI said that at the above process had been invented by its employees while setting up the plant.

Argent pleaded:

"The inventive concept of EP '041 is a biodiesel composition having a specific ester profile. The principal feature of the said profile is that it includes a unique relative amount of methyl octadecenoate (from 7% by weight to 10.5% by weight) and methyl cis-9-octadecanoate (from 39% by weight to 41% by weight) … (The said composition thereby having a relatively low density and, unusually, both a relatively high cetane number and a relatively low cold filter plugging point.)"

At paragraph [61] the judge reformulated Argent's claim as follows:

"A biodiesel composition comprising 7-10.5% by weight methyl octadecenoate and 39-41% by weight methyl cis-9-octadecanoate has the following advantages over biodiesels of a different composition: (i) a higher cetane number, (ii) a lower cold filter plugging point, (iii) a lower density and (iv) it can be made from sewer grease."

His Honour read the specification including the claims and concluded at [82] that he was satisfied that a skilled addressee would identify the above reformulation as the inventive concept.

The Devisor of the Inventive Concept

It was common ground that Argent's employee, Michael Scott, had devised the inventive concept.

Conclusion

It followed that the claim failed and that Argent was entitled to the European patent.

Comment

I have argued several entitlement actions over the last few years but they have all been in front of a hearing officer appointed by the comptroller and none of them has concerned a European patent. This case has shown how the courts of the contracting states obtain jurisdiction in disputes.  It also shows how such disputes can be resolved:

• Read the specification including the claims through the eyes of the skilled addressee;
• Define the inventive concept; and
• Identify the person responsible for the inventive concept.

Should anyone want to discuss this case or patents generally, call me on 020 7404 5252 during office hours of send me a message through my contact page.