This is a relatively brief appellate judgment of the Patents Court (Arnold J) in a patent entitlement dispute on appeal from the UK IPO. The case largely turned on its facts, but the decision on appeal contains some interesting observations relating to the burden of proof, and in particular regarding the circumstances in which it is permissible for a hearing officer to resort to the burden of proof in order to determine a question of fact. The decision considers the Court of Appeal’s dicta in Stephens v Cannon  EWCA Civ 222 and distinguishes the learned judge’s own previous decision on this point (when sitting as the Appointed Person) in BRUTT Trade Marks  RPC (19) 462 (as to which, see the earlier discussion on IPKat).
The dispute was between Watermist Ltd and an ex-employee (Mr Cooke) of a closely related company (Fireworks Fire Protection Ltd) regarding, inter alia, claims as to the inventorship and ownership of a patent for a kind of fire-fighting apparatus (a hose reel unit with a self-contained pump and motor). The patent had been filed by Watermist in its own name and identified one of its directors, William Bridgman, as being the sole inventor. However, after Fireworks dismissed Mr Cooke, an engineer, for setting-up a rival business, Mr Cooke alleged that he was the true inventor, that he had made the invention outside the scope and course of his duties as Fireworks’ employee, and that he was therefore entitled to ownership of the patent and to be named as its inventor under section 13 and 37 of the Patents Act 1977.
UK IPO decision and grounds of appeal
After hearing cross-examination of both Mr Cooke and Mr Bridgman, the hearing officer dismissed Mr Cooke’s claim to inventorship. Mr Cooke subsequently appealed to the Patents Court on the grounds, inter alia, that in deciding between the witnesses’ respective accounts the hearing officer had impermissibly resorted to the burden of proof.
Decision on appeal
Arnold J dismissed the appeal, principally because, he held, on a proper reading of the decision the hearing officer had not, in fact, resorted to the burden of proof in order to decide between the two witnesses’ accounts. However, the judge accepted that the decision was not entirely clear in this respect, and therefore went on to indicate his view that even if the hearing officer had resorted to the burden of proof in order to determine the claim, in the particular circumstances of this case it would have been legitimate for him to do so. The judge made the following interesting observations (emphasis added in bold):
“28. In Stephens v Cannon  EWCA Civ 222 […], the Court of Appeal considered the question of when a tribunal is entitled to resort to the burden of proof as a means of resolving an issue of fact [… and …] summarised the applicable principles […] as follows:
“(a) The situation in which the court finds itself before it can despatch a disputed issue by resort to the burden of proof has to be exceptional.
(b) Nevertheless the issue does not have to be of any particular type. A legitimate state of agnosticism can logically arise following enquiry into any type of disputed issue. It may be more likely to arise following an enquiry into, for example, the identity of the aggressor in an unwitnessed fight; but it can arise even after an enquiry, aided by good experts, into, for example, the cause of the sinking of a ship.
(c) The exceptional situation which entitles the court to resort to the burden of proof is that, notwithstanding that it has striven to do so, it cannot reasonably make a finding in relation to a disputed issue.
(d) A court which resorts to the burden of proof must ensure that others can discern that it has striven to make a finding in relation to a disputed issue and can understand the reasons why it has concluded that it cannot do so. The parties must be able to discern the court's endeavour and to understand its reasons in order to be able to perceive why they have won and lost. An appellate court must also be able to do so because otherwise it will not be able to accept that the court below was in the exceptional situation of being entitled to resort to the burden of proof.
(e) In a few cases the fact of the endeavour and the reasons for the conclusion will readily be inferred from the circumstances and so there will be no need for the court to demonstrate the endeavour and to explain the reasons in any detail in its judgment. In most cases, however, a more detailed demonstration and explanation in judgment will be necessary.”
29. Counsel for Mr Cooke also relied on my decision when sitting as the Appointed Person in BRUTT Trade Marks  RPC 19. In that case I allowed an appeal from a decision of a hearing officer in a trade mark case. Having stated at  that “[t]he fundamental problem with the hearing officer’s decision is that it does not contain any clear findings of fact based on the hearing officer’s assessment of the evidence”, I went on at  as follows:
“The hearing officer rightly observed that the burden of proof lay on the applicants. He went on to decide that, not that the applicants were either right or wrong, but that they had failed to discharge the burden of proof. This is a case, however, in which each side has a clear case on the central issue: the applicants contend that the proprietor was their agent or distributor while the proprietor contends that the converse is true. In such circumstances the fact-finding tribunal should strive to decide what the correct version of events is (which is not to say that the tribunal is confined to the versions advanced by the parties). In civil proceedings a tribunal should only decide a disputed issue purely on the basis that the party bearing the burden of proof has not discharged that burden in exceptional circumstances, that is to say, where it cannot reasonably make a finding in relation to that issue despite having striven to do so: see Stephens v Cannon  EWCA 222 at .”
30. Counsel for Mr Cooke submitted that the hearing officer in the present case had fallen into the same error as the hearing officer in BRUTT. Counsel for Watermist submitted first that, on a proper reading of the decision, the hearing officer had not in fact resorted to the burden of proof; but secondly that, if he had, he was justified in doing so.
31. In considering these submissions, the first point to make is that the present case differs from BRUTT in a number of respects. In BRUTT there was no cross-examination of the witnesses, whereas in the present case there was; in BRUTT there was a considerable amount of relevant documentary evidence, whereas in the present case there is none; and in BRUTT the hearing officer not only explicitly decided the matter on the basis of the burden of proof without attempting to decide who was right, but also made other errors as well.
35. Counsel for Watermist argued that this was a proper case for resort to the burden of proof for the following reasons. First, it was largely one man’s word against another’s, there being no documentary evidence and Mr Killaspy not having been present when the invention was conceived. Secondly, the hearing officer had concluded that neither Mr Cooke nor Mr Bridgman was a more credible witness than the other, and thus was unable to determine the issue by reference to their credibility. Thirdly, the hearing officer had striven to decide the issue without resort to the burden of proof and had clearly explained why he had not been able to do so. In support of these submissions, counsel relied on Stephens v Cannon at [46(b)] and Verlander v Devon Waste Management Ltd  EWCA Civ 825, in which Auld LJ (with whom Rix and Moses LJJ agreed) said at :
“When this court in Stephens v Cannon used the word ‘exceptional’ as a seeming qualification for resort by a tribunal to the burden of proof, it meant no more than that such resort is only necessary where on the available evidence, conflicting and/or uncertain and/or falling short of proof, there is nothing left but to conclude that the claimant has not proved his case. The burden of proof remains part of our law and practice — and a respectable and useful part at that — where a tribunal cannot on the state of the evidence before it rationally decide one way or the other. In this case the Recorder has shown, in my view, in his general observations on the unsatisfactory nature of the important parts of the evidence on each side going to the central issue … that he had considered carefully whether there was evidence on which he could rationally decide one way or the other. It is more than plain from what he has said and why, that he concluded he could not. …”
37. In my judgment the hearing officer was entitled to resort to the burden of proof for the reasons given by counsel for Watermist.”
Tom Alkin instructed by Novagraaf for Mr Andrew Cooke (Claimant/Appellant).
Ian Silcock instructed by ip21 Ltd for Watermist Ltd (Defendant/Respondent).
For further information, please refer to the judgment in Cooke v Watermist  EWHC 125 (Pat).
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