Liffe Administration and Management v Pinkava & Anor [2007] EWCA Civ 217 (15 March 2007)

Liffe Administration and Management v Pinkava & Anor [2007] EWCA Civ 217 (15 March 2007)

The inventions were not made in the course of Dr Pinkava's normal duties, which were limited to futures and options in the interest rate product derivative range. However, the inventions were made in the course of duties specifically assigned to him relating to the development of exchange-tradable credit derivatives, and the circumstances were such that an invention might reasonably be expected to result from carrying out those duties. Therefore, under s.39(1)(a) Patents Act 1977, the inventions belonged to LIFFE.

Citation
[2007] EWCA Civ 217
Parties
Respondent/claimant: LIFFE Administration and Management; Appellant/defendant: Pavel Pinkava; Appellant/defendant: De Novo Markets Limited
Jurisdiction
England and Wales
Judgment Date
15 March 2007
Procedural Posture
Appeal From Chancery Division (patents Court) / Court of Appeal Judgment
Outcome
Appeal dismissed; order of Kitchin J affirmed
Legal Topics
Employee Inventions, Ownership of Inventions, Patents Act 1977 S.39, Employer Employee Rights, Patent Entitlement, Confidential Information
Intellectual Property Law Employment Law Employee Inventions Ownership of Inventions Patents Act 1977 S.39 Employer Employee Rights Patent Entitlement Confidential Information

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Parties

LIFFE Administration and Management

Respondent/claimant

Pavel Pinkava

Appellant/defendant

De Novo Markets Limited

Appellant/defendant

Procedural Posture

Appeal From Chancery Division (patents Court) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether Dr Pinkava's inventions were made in the course of his normal duties as an employee under s.39(1)(a) Patents Act 1977
  2. 2 Whether the inventions were made in the course of duties specifically assigned to Dr Pinkava
  3. 3 Whether the circumstances were such that an invention might reasonably be expected to result from the carrying out of those duties

Ratio Decidendi

The inventions were not made in the course of Dr Pinkava's normal duties, which were limited to futures and options in the interest rate product derivative range. However, the inventions were made in the course of duties specifically assigned to him relating to the development of exchange-tradable credit derivatives, and the circumstances were such that an invention might reasonably be expected to result from carrying out those duties. Therefore, under s.39(1)(a) Patents Act 1977, the inventions belonged to LIFFE.

Court Disposition

Appeal dismissed; order of Kitchin J affirmed

Orders

  • Declaration that LIFFE is the owner of the inventions disclosed and claimed in the four US Patent Applications
  • Dr Pinkava's application under s.12 Patents Act 1977 dismissed