3) Ownership & Entitlement Flashcards
Who is excluded from making an application for a patent?
- A firm
- A partnership
- An unincorporated body
What is the default assumption according to the person entitled to the granted patent
Default assumption that the Applicant is entitled to the granted patent
Usually, the right to grant of a patent belongs to the inventor. In what cases is this different?
When overridden by any rule of law or any legally enforceable agreement.
- Invention made in the course of Employment
- Assignment
- Death
- Bankruptcy
What is the 2 step approach in UK for determining inventorship?
(i) Identify the inventive concept
(ii) Determine who devised that concept
For sole to joint inventorship disputes, who is the burden of proof and what must he show?
The person seeking to be added as a joint inventor.
He must show that contributed to the inventive concept underlying the claimed invention (aka. was an actual deviser)
For 1 sole to another sole inventorship disputes, who is the burden of proof and what must he show?
On the person who seeks to be substituted as sole inventor
He must show that
(i) he contributed to IC
And
(ii) the inventor named in the patent did not
If someone has filed an application but is not entitled, what are the options and when to use?
Which PF should be used?
4 diff Entitlement proceedings depending on the app/patent or the number of applicants
Use PF2
- s8 proceedings (for a pending app)
- s37 proceedings (for granted GB or EP(GB) patents)
- s12 proceedings (for a foreign app: eg EP(GB))
- s10 Joint applicant disputes
NB. 1&4 can be used in parallel
Does s12 apply to granted foreign case?
No, only applies if referral is made before the application grants (like s12)
When can a s8 / s12 entitlement question be brought?
At any time before a patent has been granted for an invention
Even before the making of an application
When can a s37 entitlement question be brought?
Within a 2Y period from the date of publication of the Mention of grant of the patent
Unless the current proprietor knew they were not entitled when the patent granted
If a foreign (EP(GB)) grants during s12 proceedings, can s8 proceeding for GB equivalent continue?
Yes
Who can make a s8 entitlement dispute?
- Any person claiming a right in any application
- Trustees/Representatives of deceased parties
Who can make a s37 entitlement dispute?
Any person having or claiming a proprietary interest in or under the patent
If someone claims to be named as an inventor but is not an actual deviser, what dispute option(s) exist?
s13 Inventorship disputes for GB apps/patents
s12 Inventorship disputes for foreign apps/patents
What happens if a question referred to the Comptroller under s8 is still not determined by the time the app comes to grant?
Entitlement question is treated as a s37 entitlement question
What is the date of grant for the purpose of s8 entitlement proceedings? Does it differ for the purpose of s37?
Date of Grant = issue of s18(4) comm (aka. grant letter), for the purpose of s8 proceeding.
Yes, different for s37.
Date of Grant = date on which the notice of grant appears in the Journal and the patent is published
What happens to entitlement question is referred to Comptroller between s18(4) date and Notice Grant in Journal?
Nothing.
Treated a s37 proceeding, but will only start after the Notice of Grant appears in the Journal
What remedies exist after the outcome of s8 proceedings?
- Change of Applicant to claimant(s) name, and application proceeds
- Refusal of whole of app
- Amendment of app to exclude SM which the original Applicant is not entitled to
- Order that the right will be transferred/licensed to the claimant
- Declaration that SM (X) is the property of claimant
What remedies exist after the outcome of s37 proceedings?
What condition must be met before any of these are carried out?
- Include the claimant as extra or replacement proprietor
- Require that a transfer to claimant is registered
- Grant a licence to claimant
Condition = Current proprietor need to be informed
What is the DL for the non-entitled person to provide remedy to entitled
14 days
What is the DL for the claimant of s8/s12 proceedings to make a fresh applications (from excised or refused SM)?
Is the DL extendable?
3M from
- the the day on which the order; or
- if an appeal, from the day which it is finally disposed of.
3M is extendable at the discretion of Comptroller
What is the EFD of a “fresh” application resulting from a s8, s12, s37 dispute?
FD of earlier application
Does s8 proceedings affect prosecution timings?
No.
So upon grant, s8 becomes a s37 question