Entitlement and Entitlement Disputes Flashcards
Who can validly apply for a patent?
Any person can apply, singly or jointly
Includes natural and legal persons
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)
What does Section 7(4) say?
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)
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 R50 (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
What does Section 13(1) say?
Inventor(s) have a right to be mentioned in a granted patent and, if possible, in the published application
Otherwise will be mentioned in a subsequent addendum
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Failure results in application being deemed withdrawn (can extend as of right - R108(2))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?
- 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
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 are available for a referall under Section 8(1)?
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?
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)