An intention to assign IP is not enough
When developing technology that may lead to patentable inventions, it is always a good idea to work out what to do with the resulting intellectual property. The question of who owns the IP is crucial to how and whether the technology can be developed further and commercialised. If the invention results from a joint venture, it is particularly important to figure this out beforehand by specifying in an agreement what each party is bringing to the venture, what they own themselves, and how any resulting IP from the joint venture will be dealt with. Even if such an agreement is reached, however, problems can still arise when the parties fall out before everything is set up commercially. The case of Bionome v Clearwater, which was decided last week at the High Court, is an example of this from which some lessons might be learned.
The case did not start at the High Court but at the UK IPO, where the claimant Dr Clearwater filed in 2022 a request under sections 8 and 12 of the UK Patents Act for him, or alternatively his company, to be added as joint applicant on Bionome’s patent applications. The patent applications at that stage included an international application, published as WO 2021/191614 A1 and a UK application published as GB2598881A. Since then, further applications have been filed from the international application in several other countries. The issue from Dr Clearwater’s perspective was that, while the applications had named him as joint inventor, the applicant was identified only as Bionome Holdings Limited, a company that was started by his ex-business partner Dennis McCarthy after they had worked together to develop the invention.
At issue before the IPO was an agreement between Mr McCarthy (via his son) and Dr Clearwater that stated they agreed to assign their IP to an as-yet unspecified jointly-owned entity after certain steps were concluded. Their working relationship, however, broke down in January 2020 before the entity was created and before any patent applications were filed. It was only after this that Mr McCarthy arranged to file a UK patent application in March 2020, followed by an international application a year later. Before the IPO, Dr Clearwater argued that the agreement was only an intention to assign and not an actual assignment. The hearing officer agreed that it only indicated a direction of travel, did not define future actions and did not constitute a binding agreement regarding ownership of any IP. The hearing officer found in decision BL O/0410/24 in May 2024 that Dr Clearwater should therefore have been named as joint applicant, not just joint inventor, and ordered his name to be added as joint applicant on the GB and PCT applications.
Bionome appealed the decision to the High Court, arguing that the hearing officer had got it wrong by misinterpreting section 7 and misconstruing the agreement. They argued that section 7(4), by stating “Except so far as the contrary is established…”, created a presumption that Bionome had a right to the inventions that could only be overcome by evidence from the claimant. Tom Mitcheson KC, acting as Deputy Judge of the High Court, rejected this argument, finding that the section did not create any sort of additional evidential hurdle or burden beyond the prima facie case that Dr Clearwater had already established, i.e. that he had jointly developed the invention with Mr McCarthy. On the construction of the agreement, Mr Mitcheson found that the hearing officer was correct in interpreting it as amounting only to an intent to transfer any IP and not to an actual assignment of IP. Bionome’s appeal was therefore dismissed on both points.
One lesson to be learned from this case is that agreements expressing only an intention do not amount to an actual assignment. If an actual assignment is intended, this needs to be explicitly expressed and preferably what is being assigned needs to be specified.
If you would like to discuss this article in more detail, please contact the author or your usual Barker Brettell attorney.
