BPRG - The Future

75. In my judgment, it was Mr Nowak who came up with the idea of a process for making capsules by RF welding his water soluble films, and he can justifiably claim to be an actual deviser of that invention. The fact that the idea had not been reduced to practice does not mean that Mr Nowak cannot claim to be an actual deviser.

76. I reject Mr Miller's submission that what Mr Nowak had come up with was a mere "wish list". Mr Nowak had gone much further than that by selecting the films suitable for his capsules and by researching methods of joining.

77. It follows that Mr Draisey cannot be the sole inventor of the First Family. Mr Draisey did not come up with the idea of making capsules from water soluble films by RF dielectric welding independently. He worked out that this is what Mr Nowak had in mind from his discussions with Mr Nowak and the surrounding circumstances. "Factoring in" the capsules to the task he was being asked to perform does not in my view make Mr Draisey the actual deviser of the inventive concept. The evidence demonstrates that the necessary causal link is present.

Mr Nowak had had the overall idea of using his materials to make a capsule by RF welding. I am satisfied that there is no sense in which Mr Draisey can be said to have played a part in devising the inventive concept of claim 1 the First Family.

Estoppel:

111. In the light of the evidence, I do not think that Stanelco can say that they were encouraged to file the sort of application which they did file, or that it would be unconscionable now, once the facts are clear, to allow BioProgress to claim their interest in the patent applications.

Breach of Confidence

It should have been clear to Stanelco that this was not a routine request to join well known materials for a well known application using Stanelco's technology; It was a request to see whether specific types of water soluble film could be joined for the purposes of a novel application. Despite the excellent points made by Mr Miller, I have no doubt that the circumstances of the approach in fact gave rise to an obligation of confidence.

117. In my judgment that information plainly had the necessary quality of confidence. Although the individual elements of the idea were in the public domain, the concept as a whole was not.

Was there a misuse?

120. In my judgment there was a misuse of the core inventive concept to the detriment of BioProgress by using it as the basis for their patent applications. The use of the information for Stanelco's own purposes is common ground. In the light of my conclusions on the first two issues, a finding of breach of confidence necessarily follows.

Conclusions

121. My conclusions in summary are as follows:

(a) Mr Nowak is the sole inventor of the First Family, save that the subject matter of claims 6 and 7 was the joint invention of Mr Draisey and Mr Nowak

(b) No BioProgress employee can claim to be an inventor in respect of either the Rotary Die Family or the Three Film Family.

(c) The action for breach of confidence succeeds in respect of the core inventive concept.

122. As indicated above it will be necessary for me to hear further argument as to the consequent order if the parties prove unable to agree its terms.