O/563/20, Kwix UK Ltd v Matthew Murphy and Joint Trustees of the Bankruptcy Estate of Matthew Murphy, EP12725871.3, GB11…

BL number

O/563/20

Concerning rights in

GB1107673.4 PCT/GB2012/051012 EP12725871.3

Hearing Officer

Mr H Jones

Decision date

11 November 2020

Person(s) or Company(s) involved

Kwix UK Ltd v Matthew Murphy and Joint Trustees of the Bankruptcy Estate of Matthew Murphy

Provisions discussed

Section 8 and section 12

Keywords

Abuse of process, Entitlement, Striking out, Summary judgement

Related Decisions

None

Summary

The first defendant is the inventor and named applicant in a family of patent applications relating to a pipe straightening tool. The claimant asserts that Mr Murphy agreed that the claimant company would own the rights to the original patent application and any subsequent applications, with Mr Murphy, at least initially, holding those rights on behalf of the claimant. Mr Murphy asserts that the agreement only covered the manufacture and sale of the tool. The agreement was never reduced to writing. To complicate matters further, Mr Murphy was made bankrupt and whatever assets he owned would have vested to the joint trustees in the bankruptcy estate, the JTIB. The JTIB have taken a neutral position in these proceedings given their lack of knowledge of events leading up to the alleged agreement.

At a case management conference prior to a potential full hearing of the issue, the hearing officer was asked to decide upon two preliminary issues before directing the future course of proceedings. The first issue was a request by Mr Murphy to strike out the claimant’s case as an abuse of process, the alleged abuse being that Mr Allen, the sole shareholder in Kwix and a director of the company was not properly authorised by a resolution of the board of directors to initiate proceedings. Kwix had retrospectively authorised the commencement of proceedings and the hearing officer found that it would be at odds with the overriding objective for the comptroller to deal with cases justly and expeditiously to strike out the case on an alleged legal technicality, especially as that alleged legal technicality had now been retrospectively resolved. The Duomatic principle in Company Law was cited to support the claimant’s position that no such legal technicality had occurred. The hearing officer refused to strike out.

The second issue was the claimant’s request for summary judgment against the defendant on the grounds that the defendant could not successfully defend the claim. The bankruptcy meant that Mr Murphy did not have a beneficial interest in the patent applications and that it was for the JTIB to defend the claim. The fact that the JTIB had taken a neutral position meant that they could not now alter their position. Also, Mr Murphy’s claim that his mother owned the patent applications was inconsistent with his original statement, and the fact that his mother did not provide her own counter-statement when invited to do so meant that the hearing officer would have to treat her as supporting the claimant’s case. The hearing officer agreed that Mr Murphy could not be a party to proceedings. He decided that the overriding objective would be best served by allowing the JTIB to reassess their initial position now that Mr Murphy would not be defending their interest. The hearing officer gave a preliminary evaluation of the evidence in order to assist the JTIB make their decision, given that they were not a party to the initial discussion leading up to the alleged agreement.

Full decision O/563/20 234Kb