Entitlement and Entitlement Disputes Flashcards
Who can validly apply for a patent?
Any person can apply, singly or jointly
Includes natural and legal persons
There is a rebuttable assumption that the applicant is entitled to the granted patent.
i.e. onus of proof is on the second party to show lack of entitlement (except possibly under employee-employer cases)
Who is entitled to the grant of a patent under Section 7(2)?
Section 7(2)
- the inventor
- in preference, an employer (or a person otherwise entitled by some legal agreement)
- a successor in title to either of the above
How is an inventor defined by Section 7(3) and how is this interpreted?
A single or joint deviser of the invention.
Not inventor = mere advice or assistance
Inventor = someone who contributed materially to what was thought to be the invention at the time of its devising (even if that contribution was minimal or didn’t end up in the claims)
Scenario:
Clerical/translation error in applicant details
File a request in writing under R105 (correction of error in application) to fix PF1.
To correct names and addresses use R49 (request in writing).
Evidence not needed, but is good practice
Scenario:
Applicant details are incorrect, but not due to a clerical error
File a request in writing under (correction of error in register) and file evidence of reasons to fix PF1
Scenario:
PF7 (statement of inventorship) hasn’t been filed and the UKIPO is not expecting one
If after 16 months from priority - file a request under R31 (amendment of the application).
If before 16 months from priority - simply file a PF7.
Scenario:
A recent assignment or other transaction needs to be recorded
File a FORM (PF21) under R47 to register the transaction and provide evidence
When must the applicant provide inventorship details?
Within 16 months from priority (or two months from entering national phase for PCTs).
Must provide:
- Identities of inventors
- A derivation of rights
Failure results in application being deemed withdrawn (can extend as of right - R108(2))
Who can apply to have an inventor named in patent or application?
Anyone
How can an inventor waive their right to be mentioned?
Can waive under R11 and R26(2).
- Must give a reason why they don’t want to be mentioned.
- No need to give reason to hide address.
Under what scenarios must PF7 be filed?
inventership form
- When the applicant(s) don’t match the inventor(s)
- Divisionals - as inventors for a divisional may differ
- Replacement filing after entitlement disputes
Scenario:
What to do if an inventor is missing?
Add an inventor via R10(2)/S13(1) at any time - apply to the Comptroller
Scenario:
Need to remove an inventor
S13(3) allows for removal as a result of proceedings with the Comptroller i.e. bring entitlement proceedings
Scenario:
Outside of the 16 month window and need to correct a clerical error
Write a request under S117/R105 for the comptroller to correct an error, in writing, and identify proposed correction.
Who can refer a question of entitlement prior to grant?
Section 8(1)
Anyone (including non-applicants) may refer a question of entitlement to the Comptroller or one or more co-applicants may approach Comptroller regarding transfer of entitlement to any person.
NB includes trustees and representatives of deceased parties
What remedies (i.e actions by the comptroller) are available for a referall under Section 8(1)? (asking comptroller to deal with entitlement proceedings)
S8 = pre-grant entitlement proceedings
- Replace some (or all) of the applicants names (i.e. a transfer)
- Refuse grant of a patent
- Amend to remove contested elements
- Order a licence or transfer of a right in the application
When might entitlement proceedings under Section 8(1) give rise to a new patent application and what is the deadline to file?
Where Comptroller has directed refusal of grant or excision of some subject-matter the Comptroller may order the entitled party to file a new patent application for those elements within a period of three months from decision or end of appeal.
New application will have filing date of disputed application.
If a party ignores an order from the Comptroller under s8(2)(d) or 8(4), what happens?
Transferring or granting any licence
If an order is ignored for 14 days, the Comptroller can permit the other party to implement the order
What happens if an entitlement questions under Section 8 is not resolved before the patent application grants?
The referral will be treated as a Section 37 referral (at the Comptroller’s discretion but usually allowed)
When might an assignment be unenforceable?
An applicant cannot be entitled via an unenforceable assignment e.g. an assignment that diminishes an employee’s rights
Is lack of entitlement a ground for revocation?
Yes, but only by a person with a proprietary interest within 2 years of grant (unless the current proprietor knew they weren’t entitled at grant).
(see Section 72(2))
Scenario:
Client had a successful entitlement dispute allowing them to file a new application
(+ if within final six months of compliance period)
File a new application within 3 months.
After filing the client has later of two months from filing or 16 months from priority to file a declaration of inventorship (s13(2)) and file priority documents.
(If new application is filed in final 6 months of complicance period (later of 4.5 years from earliest priority or 12 months from examination start) then must declare inventorship and file priority documents on filing)
NB similar rules apply to requesting examination - if within six months of the end of the compliance period must request examination (+ fee) on filing - otherwise the relevant period is that of the disputed application or two months from initiation
What is the compliance period for a new application filed following entitlement proceedings?
R30(3) - compliance period is the later of:
- 4.5 years from filing/priority
- 12 months after the first examination report
- 18 months after initiation date
Scenario:
Client wants to bring entitlement proceedings against an opponent who has a GB application and an EP claiming priority from the GB
Pursue proceedings for both - s8 for UK and s12 for EP
Entitlement proceedings will not delay publication/prosecution of a GB patent application (if proceedings don’t complete prior to grant, it will become a s37 dispute)
Proceedings for the EP case will likely be suspended pending the outcome of the UK entitlement case
Will always have a minimum of 18 months
How is “invention” interpreted for the purpose of Section 8
‘invention’ =/= ‘patentable invention’
Entitlement proceedings can be brought prior to grant or filing an application. Prior art is not considered for the purposes of entitlement.
‘invention’ = inventive concept thought to have been made at the time of its devising
Who is able to refer a question under Section 12(1) to resolve entitlement to foreign patent applications?
Before grant:
- Any person (including non-applicants)
- One or more co-applicants may approach Comptroller regarding transfer of entitlement to any other person
The Comptroller can pass foreign patent entitlement disputes to the court
Under what circumstances does the Comptroller have jurisdiction under Section 12(1) to determine entitlement disputes for EP applications?
(consider emplyoee-employer scenarios too)
Not employee-employer disputes if:
- Applicant has residence or principal place of business in the UK; or
- Apllicant does not have a residence/place of business in any EPC state, but the other party has residence or principal place of business in Uk
For employee-employer disputes if:
- Employee is maniny employed in the UK
- Employer has a place of business in the UK to which the employee is attached
What powers does the Comptroller have under Section 12 for entitlement disputes with joint applicants?
Section 10 (joint applicant prosecution disputes) still applies for Section 12(1), but the Comptroller cannot regulate how prosecution should proceed.
When might the Comptroller direct a party he considers entitled to file a new application under section 12(6)?
If an EP or PCT application (or the GB designation) is withdrawn/refused as part of normal prosecution, or an EP application is refused as a result of a Section 12(1) dispute
Comptroller may direct entitled party to file a new patent application to the subject-matter within 3 months which claims the date of the original application
What happens if during s12 proceedings the foreign application grants?
As long as the dispute is brought prior to grant, the s12 proceedings can continue
What section is used for inventorship disputes for foreign patent applications?
Also section 12 - use for both entitlement and inventorship disputes
(unlike UK disputes which use s8 and s13 seperately)
Scenario:
Your client is looking to stop and EP patent from being granted to which they are entitled
- File entitlement proceedings under s12 with the UK Comptroller
- Request suspension of EP prosecution with evidence that entitlement proceedings are underway in the UK
- If successful, use the UK decision to transfer rights in the EP application (or file a new application)
Scenario:
Your client is looking to stop a PCT application from being granted for which they are entitled
- File entitlement proceedings under s12 with the UK Comptroller
- Cannot suspend PCT application progressing, but any successful decision can be applied to the whole international application if decided before n/r phase
- In the n/r phase chek which countries will follow the UK decision. The decision may need to be re-applied in any states which are not signatories to the protocol on recognition
Who can bring an entitlement action after grant and what can they ask?
Anyone having or claiming a proprietary interest may ask the Comptroller:
- Who is/are theh true proprietors
- Should the patent have been granted to the grantee
- Should any right be granted or transferred to another person
What remedies can the Comptroller order for a Section 37 entitlement action?
- Include the claimant as an additional/replacement proprietor
- Require registration of a transfer or event giving rise to a right for a claimant
- Grant a license
- Direct the current proprietor to comply
What can be done if a person does not comply with an order from the Comptroller under Section 37?
If a person does not comply within 14 days, the claimant may apply to the Comptroller to override and do it themselves
Where a granted patent is revoked due to incorrect grantee, what can the entitled owner do?
- Apply for a patent in the whole matter (if revocation was unconditional and claimant entitled)
- Apply for a patent in whatever matter was excluded from a patent in a conditional revocation
But must do so within 3 months from decision or end of appeal.
The new filing will have the filing date of the original
What is the deadline for bringing an entitlement proceeding under Section 37?
Two years after grant
UNLESS one of the grantees knew there were not entitled at the time of grant
(The court won’t look at an entitlement action unless it complies with this deadline)
Fill in the missing words:
Section 37(6): An order under this section shall not be so made as to affect the mutual rights or obligations of ___1___ or of the ____2____ ____3_____ of a deceased person, or their rights or obligations as such.
(1) Trustees
(2) Personal (3) Representatives
Who is entitled to be given notice of an order under Section 37? (determining right to patent after grant)
All of the current proprietors
How are entitlement determined under Section 37?
: Determining right to patent after grant
Following Markem v Zipher - entitlment is determined according to who made an inventive contribution to the ‘heart of the invention’ as found in the granted claims
Scenario:
X, Y and Z are the original applicants and Z provides a licence to A but Z was then removed by the Comptroller. What happens to the licence?
Extant rights granted to others usually continue as long as one or more of the original applicants remains (because granting a licence requires unanimous consent).
Therefore A will be able to keep their licence if one or both of X and Y are still owners.
NB Z may be entitled to a licence from X and Y if they were working the invention or making serious and effective preperations to do so (in good faith) prior to the s8 reference
Scenario:
X and Z are the original applicants and provide a licence to A but Z and X were then removed by the Comptroller and replaced with B. What happens to the licence?
If none of the original applicants remain, then A’s licence lapses upon registration of B.
BUT if X, Z or A were working or making serious and effective preperation to work the invention in good faith (in the UK) prior to the reference under section 8 then they are entitled to be granted a licence from B (also if B files a new application as a result of entitlement proceedings). Licences must be requested within 2 months of the order.
How are the terms for a licence granted under S11(3) decided?
transferring licenses
Licences granted to previous proprietors or licencees after a s8 referall must be for reasonable terms and periods.
The terms of any licence can be challenged by proceedings before the Comptroller
Who is able to challenge the transfer of a patent application under s11 or the terms of a licence granted under s11(4)?
Any affected party (e.g. licensees)
Scenario:
A granted patent is transferred from Z and X to Y under s37. A was a licensee of X. What rights do Z, X and A have?
s38 is nearly identical to s11
- A is not entitled to keep their original licence as none of the old proprietors remain - licence will lapse on registration to Y
- Z, X and A may be entitled to a licence from Y to continue working the invention (or to start if serious and effective preperations had been made) if they were acting in good faith (in the UK).
- Z, X and A must apply for a licence on reasonable terms within 2 months of the decision
- Z, X and A may contest the transfer or the terms of a licence before the Comptroller
What is the default position for co-ownership of patents or applications? What can each co-owner do without the consent of the others?
s36(1) - An equal undivided share (subject to agreements to the contrary).
s36(2) - Each party can independently (without consent) work the invention without infringing the other’s rights (again subject to agreements to the contrary).
s36(4) - Anyone may supply a co-owner with essential means to work the invention without being classed as a secondary infringer under s60(2)
What actions must all co-owners agree to?
entitlement
- Amend the patent (or application)
- Apply to revoke the patent (or application)
- Issue any transaction (i.e. licence, assign)
- Mortgage or secure against the patent (or applicaiton)
(all subject to agreement to the contrary)
What happens if joint applicants disagree on how to prosecute an application?
s10
Ask the Comptroller to arbitrate under and direct how to proceed
Alternatively Comptroller may alter the number of applicants
Scenario:
Joint applicants A and B are split on how to prosecute an application. What advice should you provide/what should you check?
- First resolve any conflict of interest - select which applicant you will continue to represent and advise the other to seek alternative counsel
- Check any agreements in place between A and B
- Consider an amicable agreement if sensible
- Attempt early settlement if oen party is clearly wrong - point out that they would bear the court costs if they reject such an offer
