2) Inventorship and Ownership Flashcards
Section 7
Right to Apply
(1) Any person may make an application for a patent either alone or jointly with another;
(2) A patent may only be granted to
(a) the inventor or joint inventors; or
(b) in preference to the inventor or joint inventors, to anyone who was entitled at the time of the making of the invention to the whole of the property in it by virtue of any enactment or rule or law, any foreign law or treaty or international convention, or an enforceable agreement with the inventor which which was entered into before the making of the invention; or
(c) to the successor or successor in title to either of the above,
and to no other person.
(3) An “inventor” is the actual deviser of an invention.
(4) Unless proven otherwise, the applicant shall be taken to be entitled.
Section 13
Mention of Inventor
(1) The inventor or joint inventors have a right to be mentioned in a granted patent and, if possible, in any published application.
(2) Unless he has already given the UKIPO the information [within 16 months beginning immediately after priority (R10)] the applicant must file a statement [using the form (R10)]
(a) identifying the inventors; and
(b) if the applicant is not the inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent,
and failure to do so results in the application being withdrawn.
(3) Someone who thinks that a named inventor should not have been mentioned may apply to the Comptroller to a certificate to that effect and, if successful, the Comptroller will issue the certificate and rectify the granted patent or published application.
R10: An inventor who is not correctly named must be mentioned in an addendum or erratum to the patent or published application. Also, anyone who thinks that someone is not a named inventor should be mentioned may apply to the Comptroller to have them mentioned.
R11: Before technical preparations for publication are complete, an inventor may apply to waive his right to have his address mentioned (and the Comptroller must accept) or to have his name and address mentioned (and the Comptroller does not have to accept). He may apply to withdraw his waiver at any time, but the Comptroller does not have to accept.
Section 36
Co-ownership
(1) When a patent grants to more than one person, they are each entitled to an equal undivided share in the patent, subject to any agreement to the contrary.
(2) Co-owners are each entitled to independently work the invention without infringing the patent, subject to any agreement to the contrary.
*Version closer to the UKPA: Co-owners are each entitled, by themselves or by their agents, to do any act in respect of the invention in question which would otherwise infringe the patent for it, entirely independently of the other co-owners and without needing their consent or needing to account to them. *
(3) Subject to any agreement, all co-owners must agree in order to
(a) amend the specification or apply for amendment or revocation; or
(b) assign or mortgage a share in the patent, grant a licence under the patent or, in Scotland, cause or permit security to be granted over it.
(4) Anyone may supply a co-owner with essential means for putting the invention into effect without being a contributory infringer.
(5) Someone who obtains a patented product from a co-owner may deal with it as if it was disposed of by a sole registered proprietor.
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(7) All of the above also applies to patent applications.
Section 39
Rights to Employee’s Inventions
(1) An invention made by an employee belongs to his employer if
(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside of his normal duties, but specially assigned to him, and an invention may reasonably be expected to result from the carrying out of his duties; or
(b it was made in the course of the duties of the employee and, at the time of the making of the invention, because of the nature of his duties and the particular responsibilities arising therefrom, the employee had a special obligation to further the interests of the employer’s undertaking.
(2) Any other invention made by the employee belongs to him.
(3) Where an invention belongs to an employee, anything done for the purposes of
(a) pursuing a patent application; or
(b) working the invention,
shall be taken to infringe any copyright or design right to which his employer is entitled.
Section 40
Compensation
(1) Where it appears to the court or Comptroller on an application made by an employee that
(a) the employee has made in invention belonging to his employer for which a patent has been granted;
(b) having regard among other things to the size and nature of the employer’s undertaking, the invention or the patent (or both) is of outstanding value to the employer; and
(c) it is therefore just that the employee be awarded compensation to be paid by the employer,
the court or Comptroller may award him compensation under s41.
(2) Where it appears to the court or Comptroller on an application made by an employee that
(a) a patent has been granted for an invention made by and belonging to the employee;
(b) his rights in the invention, or in any patent or patent application for the invention, have been assigned to the employer or an exclusive licence under the patent or patent application has been granted to the employer.
(c) the benefit derived by the employee from the relevant contract is inadequate relative to the benefit to the employer of the invention or patent (or both); and
(d) and it is therefore just that the employee be awarded compensation to be paid by his employer in addition to the benefit derived from the relevant contract;
the court or Comptroller may award him compensation under s41.
(3) Subsections (1) and (2) do not apply where the employee is part of a trade union which has negotiated a settlement regarding such inventions.
(4) Subsection (2) shall have effect notwithstanding anything in the relevant contract or any other agreement (other than those under subsection (3)).
(5) If it appears to the Comptroller on an application under this section that the application involves matters which would be more properly determined by the court, he may decline to deal with it.
Section 43
Supplementary Provisions
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(2) s39-42 only apply if, at the time the invention was made, the employee
(a) was mainly employed in the UK; or he
(b) was not mainly employed anywhere or his place of employment cannot be determined, but his employer had a place of business in the UK to which the employee was attached.
(3) References to the making of an invention by an employee include references to his making the invention alone or jointly with another person, but do not include him merely giving advice or other assistance in the making of an invention by another.
(4) References to a patent and to a patent being granted are respectively references to a patent or other protection and its being granted whether under UK law or the law in force in any other country or under any treaty of international convention.
(5) The invention derived or expected to be derived by an employer, where he dies before any award is made, shall include the benefit derived or expected to be derived by his inheritors;
(5A) The benefit derived or expected to be derived from an invention shall not include the benefit derived or expected to be derived from the invention after the patent for it has expired or been surrendered or revoked.
(6) Where an employee dies before an award is made, his inheritors may exercise his right to pursue compensation.
(7) “Benefit” means benefit in money or money’s worth.
Section 41
Amount of Compensation
(1) Compensation awarded under section 40 shall be a fair share (having regard to all the circumstances) of the benefit the employer has derived, or may reasonably be expected to derive, from
(a) the invention in question;
(b) the patent the invention;
(c) the assignment of the property or any right in the invention or patent application to a person connected with the employer.
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(4) In determining the fair share in the case of an invention which has always belonged to the employer, the following shall be taken into account:
(a) the nature of the employee’s duties, his remuneration and any other advantages de derives or has derived from his employment or from the invention;
(b) the effort and skill the employee has devoted to making the invention;
(c) the effort and skill which any other person has devoted to making the invention jointly with the employee, and the advice and other assistance contributed by any other employee who is not a joint inventor; and
(d) the contribution of the employer to the making, developing and working of the invention.
(5) In determining the fair share in the case of an invention which originally belonged to the employee, the following shall be taken into account:
(a) any conditions in a licence or licences granted in respect of the invention/patent;
(b) the extent to which the invention was made jointly by the employee with any other person; and
(c) the contribution made by the employer as with subsection (4)(d) above.
(6) Payment can be lump sum or periodic.
Section 42
Enforceability of Contracts
(1) This section applies to contract relating to inventions made by an employee with
(a) the employer; or
(b) some other person at the request of the employer.
(2) Any term in a contract which diminishes the employee’s rights in inventions/patents shall be unenforceable to the extent that it diminishes his rights.
(3) Subsection (2) above does not detract from any duty of confidentiality owed to the employer by the employee.
(4) This section applies to Crown employees.
