Markem Corporation & Anor v Zipher Ltd

Markem Corporation & Anor v Zipher Ltd

Markem’s claim for entitlement to Zipher’s patents fails because entitlement under Patents Act 1977 sections 8, 12, 37 requires breach of some rule of law, such as breach of confidence, which was not pleaded or proven. Section 7 alone does not confer entitlement. The subsequent breach of confidence action is struck out as an abuse of process because all relevant facts were available during entitlement proceedings and should have been litigated together.

Parties
Claimant: Markem Corporation; Claimant: Markem Technologies Limited; Claimant: Markem Holdings Unlimited; Defendant: Zipher Limited; Defendant: Steven Buckby; Defendant: Martin McNestry; Defendant: Philip Hart; Defendant: Keith Buxton
Jurisdiction
England and Wales
Judgment Date
22 March 2005
Procedural Posture
Civil Appeal / Judgment
Outcome
Appeal allowed; cross-appeals dismissed; breach of confidence action struck out as abuse of process.
Legal Topics
Patent Entitlement, Inventorship, Breach of Confidence, Abuse of Process
Intellectual Property Civil Procedure Patent Entitlement Inventorship Breach of Confidence Abuse of Process

Case Brief

Summary, issues, holding and outcome

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Parties

Markem Corporation

Claimant

Markem Technologies Limited

Claimant

Markem Holdings Unlimited

Claimant

Zipher Limited

Defendant

Steven Buckby

Defendant

Martin McNestry

Defendant

Philip Hart

Defendant

Keith Buxton

Defendant

Procedural Posture

Civil Appeal / Judgment

Legal Issues

  1. 1 Whether Markem is entitled to patents or parts of patents applied for by Zipher under UK Patents Act 1977 sections 7, 8, 12, 37
  2. 2 Whether entitlement proceedings can be based solely on section 7 without breach of confidence or other legal wrong
  3. 3 Whether validity of patent claims is relevant in entitlement proceedings

Ratio Decidendi

Markem’s claim for entitlement to Zipher’s patents fails because entitlement under Patents Act 1977 sections 8, 12, 37 requires breach of some rule of law, such as breach of confidence, which was not pleaded or proven. Section 7 alone does not confer entitlement. The subsequent breach of confidence action is struck out as an abuse of process because all relevant facts were available during entitlement proceedings and should have been litigated together.

Court Disposition

Appeal allowed; cross-appeals dismissed; breach of confidence action struck out as abuse of process.

Orders

  • Zipher’s appeal allowed; Markem’s cross-appeals dismissed.
  • Markem’s claims for breach of confidence struck out as abuse of process.