NGOPD Global Ltd v Aspirate N Go Ltd, Court of Appeal - Patents Court, December 02, 2016, [2016] EWHC 3124 (Pat)

Resolution Date:December 02, 2016
Issuing Organization:Patents Court
Actores:NGOPD Global Ltd v Aspirate N Go Ltd

Case No: CH-2016-000247

Neutral Citation Number: [2016] EWHC 3124 (Pat)



Royal Courts of Justice

Rolls Building, 7 Rolls Buildings

Fetter Lane, London EC4A 1NL

Date: 02/12/2016

Before :


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Between :

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Bruce Jones (instructed by Hill Dickinson LLP) for the Claimant/Respondent

James Abrahams QC (instructed by Bird & Bird LLP) for the Defendant/Appellant

Hearing date: Friday 11th November 2016

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JudgmentMr Justice Mann :


  1. This is an appeal from a hearing officer in the IPO (Mr Stephen Probert). The proceedings in which he gave his decision were proceedings in which the claimant (``NGPOD'') seeks to establish its entitlement to one UK patent and two pending international patent applications (numbered GB 2523591B, PCT/GB 2015/050538 and PCT/GB 2015/050539 respectively). It is unnecessary to distinguish between them for the purposes of this judgment - the claim to entitlement is the same in all cases. For the sake of clear exposition I, like the hearing officer, shall refer to all three as ``the patents'', even though two of them are applications. That distinction does not matter for present purposes. Nor is the detail of the patent important. It suffices to say that the patents are in the field of naso-gastric aspirators.

  2. The decision under appeal is a decision in which the hearing officer refused an application by the defendant (``Aspirate'') under section 37 of the Patents Act 1977 that the IPO should decline to deal with the claim on the footing that it would more properly be determined by the High Court. He gave a clear and concise judgment rejecting the application, in terms to which I shall come.

  3. The appellant was represented by Mr James Abrahams QC; the respondent was represented by Mr Bruce Jones. They both argued their respective cases well and concisely.

    The alleged sources of the competing entitlement claims

  4. Each entitlement starts with the inventive activities of Mr George Gallagher. At the time of the inventions (or two of them) Mr Gallagher was a director of, and employed by, Westco Medical Limited. That company went into administration in April 2014 and its IP portfolio was acquired from the administrators by NGPOD (then known by another name), though there is a dispute as to whether the assignment was capable of catching these patents. NGPOD's case is that Mr Gallagher was employed by Westco and the inventions were made as part of his duties, so Westco was entitled to the patents. There is an alternative case for joint ownership of one of the inventions.

  5. At the same time Mr Gallager had his own company, Gallagher Medical Devices Ltd (``GMD''). A specific provision in his service agreement with Westco allowed him to carry on his activities in GMD. He claims that he made his inventions under his engagement by that company, not by Westco, and in any event one of the inventions was made after he had left Westco. The patents were therefore applied for in the name of that company (and, in respect of the patent, granted to that company). In due course, and pursuant to an investment agreement which brought in substantial outside investors, the patents were assigned to a new company, namely the appellant (``Aspirate'').

  6. The issues between the parties are various. I shall deal with them when dealing with corresponding parts of the hearing officer's decision.

    The law - section 37

  7. So far as the granted patent is concerned, the application to the hearing officer was made under section 37(8) of the 1977 Act. That subsection provides:

    ``If it appears to the comptroller on a reference under this section that the question referred to him would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the court in Scotland, the court shall have jurisdiction to do so.''

    It is common ground that the main application before the hearing officer was a reference under the section, so that subsection applies.

  8. So far as the applications are concerned the application to the hearing officer was made under section 12(2) of the Act, which is (for practical purposes) in the same terms, and to the same effect, as section 37(8). It was not suggested that they fall to be treated differently, so I can apply the same test throughout.

  9. Guidance on the application of that provision is given in Luxim Corporation v Ceravision Ltd [2007] RPC 33 (Warren J). The nature of the central question for the court on an application under the subsection was identified by Warren J as follows:

    ``19. Quite apart from that, Mr Thorley submits that the hearing officer applied the wrong test to s37. The hearing officer did not need to be able to say with certainty that the question would more properly be heard by the court: it only needed to appear to him that that was so. Further, it is not necessary to show that the Comptroller is incapable of resolving the issues; the question is whether the question would more properly be determined by the court. I agree with those submissions. It seems to me that, to adopt the language of the standard of proof, certainty requires something like ``beyond all reasonable doubt'' whereas appearance requires only something more akin to ``a balance of probabilities''. Further, it is clear that the test is not that the Comptroller is unable to determine the issue; it is whether the court can more properly do so.''

  10. Warren J went on to consider how the test applied to the facts of his case and various factors which were capable of going to the assessment of whether the matter would be ``more properly'' determined by the court than by the hearing officer. They included:

    (a) The fact that a different costs regime applied before the hearing officer - in the court full adverse costs orders could be made against a losing party, but far lower adverse costs are payable in the IPO (paragraph 49).

    (b) Technical issues - ordinarily a hearing officer would be equipped to deal with those (paragraph 55(a), implicitly adopting the submissions of counsel).

    (c) Factual issues unrelated to technical issues. ``Factual issues unrelated to technical issues: these are bread-and-butter matters for a judge. Of themselves, they may not merit a referral to the court. But the issues may be seen to be sufficiently complex to merit a transfer, especially, I would observe, if findings of fraud or breach of fiduciary duty are to be found against a party or a witness, a factor which, whilst not by itself conclusive, one might normally expect to be more appropriate for a judge'' (paragraph 55(b)).

    (d) Patent law issues - normally the hearing officer would be expected to deal with those (paragraph 55(c)).

    (e) Non-patent law issues - these would normally be regarded as the province of the judge, but that did not mean that any case which involved such an issue would be more properly dealt with by a judge. This struck Warren J as an important factor. (Paragraph 55(d)).

    (f) The test was not whether a matter could be described as ``highly complex''; nor was the jurisdiction one which should be exercised cautiously, or with great caution or sparingly. (paragraph 65).

    (g) All relevant factors must be weighed in the balance (paragraph 66).

  11. The question of complexity attracted particular attention. Warren J said:

    ``68. So, provided that one recognises that what is complex is not an absolute standard, I do not think that the Comptroller can go far wrong if he were to consider exercising his discretion whenever a case is complex; he is to be the judge of what is and what is not complex in this context. What he should not do is start with a predisposition to exercise his discretion sparingly, cautiously or with great caution. Complexity can be manifested in various aspects of a question or the matters involved in a question...''

  12. Those principles and...

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