CC patent victory clarifies case law

Clifford Chance has won a rare patent case after the London International Financial Futures Exchange (Liffe) won an important victory that clarifies case law regarding the owner of an invention.

Liffe prevailed in its High Court battle against ex-employee Dr Pavel Pinkava, who invented an electronic trading system while employed at Liffe.

Mr Justice Kitchin ruled that Liffe owned the IP rights to the system, despite the fact that Pinkava had patented his invention in the US and set up a company called De Novo to hold the patents.

Kitchin J found that Liffe owned the IP rights because the “inventions were made in the course of the duties which were assigned to Dr Pinkava”.

Kitchin J’s approach was to look at Pinkava’s job description to determine whether Liffe had paid him to come up with such inventions as part of his job.

The case will add to the small body of case law on patent ownership and means companies will have to provide more detailed job descriptions and titles to avoid similar litigation.

Clifford Chance partner Vanessa Marsland instructed Miles Copeland at 3 New Square. Wragge & Co partner Nick Cunningham advised Pinkava, instructing Guy Tritton at Hogarth Chambers. Unfortunately for Clifford Chance, client Liffe has not allowed the firm to comment on the case.