BDI Holding GmbH v Argent Energy Ltd & Anor
Decision date: 27 March 2019
Neutral citation: [2019] EWHC 765 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
This dispute concerned entitlement to European patent application EP 3 011 041, filed by Argent but arising from work BDI carried out designing a biodiesel plant. The key issue was what the inventive concept was (Argent pleaded a product composition; BDI pleaded a preparatory process) and who devised it. The judge held the inventive concept, as the skilled person would perceive it, was the claimed composition (the specific C18 methyl ester profile) and that Mr Scott (for Argent) devised that concept, so Argent is entitled.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: high
When deciding entitlement the court must first identify the inventive concept as it would be understood by the skilled person, using common general knowledge and the specification; only then can inventorship be assessed. A product claim can be supported by a process-derived inventive concept, but the court must determine what the skilled reader would regard as the inventive concept rather than relying on asserted process steps alone. National courts determine entitlement under domestic law but cannot themselves effect changes to EPO prosecution consequences governed by the EPC.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judgment observed that the EPC concept of a "general inventive concept" (unity of invention) is not the same as the inventive concept used in entitlement or obviousness analyses. The judge also cautioned against relying on lay factual witnesses' opinions on technical issues where expert evidence is required, and suggested the tribunal may consider a claim it regards as clearly and self-evidently invalid in entitlement proceedings, but only in such clear cases.