Entitlement, Ownership, Inventorship

Question 1

How can entitlement of a UK patent ‘application’ be challenged?

Answer 1

Before grant, section 8 can be used by any party to refer a Q of entitlement to the Comptroller;
or
one or more co-applicants can ask Comptroller to transfer entitlement to any other person.

Question 2

What can the Comptroller do in response to a Q under s8 regarding the entitlement to a pending UK application? (3)

Answer 2

1. replace some or all applicant names with new parties
2. refuse to frant a patent, or amend to excise contested elements of it
3. order a licence or transfer of a right in the application to the new parties. (if the order is ignored by the ordered party for 14 days, the Comptroller can permit the other party to implement the order.

Question 3

If following s8(2) the new party’s elements of the application are excised, or the application is refused or withdrawn, then the Comptroller may order that the new party can file a new application for those elements within how long?

Answer 3

3 months from decision or end of the appeal period - this is treated as having been filed on the date of the older application.

Question 4

The procedure under s8 does not delay publication of prosecution of the case in the UK, what occurs if the proceedings do not conclude prior to grant?

Answer 4

s9 allows (at the Comptrollers discretion) them to continue under s37 (post grant entitlement proceedings). However, the proceedings for a corresponding EP case can be suspened pending the outcome.

The same is true for s12 w.r.t. foreign applications.

Question 5

What can be done if joint applicants disagree with how to prosecute a case?

Answer 5

s10, the Comptroller can be asked by any of the parties to arbitrate and direct how to proceed, and/or alter the number of applicants.

Question 6

What happens to licences if the ownership of a patent application changes?

Answer 6

If one or more of the original applicants remain, the licence etc. will be allowed to continue (normally).

If none of the original applicants remain, the licence etc. lapses upon change in ownership.

However, if the licensee etc. was working or making the invention in good faith, then they are entitled to be granted a licence from the new owner. (Licences should be requested within two months of the order to transfer ownership).

Reasonable and fair terms.

Question 7

How can Q regarding the entitlement of foreign and convention patent applications be handled?

Answer 7

s12
Before grant of an overseas patent, any person may Q the entitlement before the Comptroller (who can pass the issue to the court).

Question 8

What happens if the GB designation of an EP or PCT application is withdrawn prior to entitlement proceedings under s12 concluded?

Answer 8

The Comptroller may allow the filing (within 3 mths) of a new GB application to that subject matter.

Question 9

Is a decision under s12 binding on all PCT states?

Answer 9

No, the application can be transferred to a new owner but may need to re-apply in some states to prove ownership.

(Note: proceedings not suspended, different to EP where they are).

Question 10

How can Q regarding the entitlement of a granted UK patent be handled?

Answer 10

s37
Only people having or claiming a proprietory interest can Q entitlement before the Comptroller.
Different to s8 for uk pending applications and s12 for overseas pending applications when anyone interested can Q.

Must be within two years from grant UNLESS the incorrect owner knew about the problem.

Question 11

Under s37, where the result is revocation due to ownership by an incorrect grantee, the claimant may do what?

Answer 11

The usual:
1. apply got a patent in the whole matter if revocation was unconditional (within 3m); or
2. apply for a patent for whatever matter was determined to be exlcuded from a patent in a conditional revocation (keeping filing date of original in both cases).

Question 12

What is the time limit for actions under s37?

Answer 12

2 yrs from grant unless one of the grantees knew they were not entitled.

Question 13

What happens to licences if the ownership of a uk patent changes?

Answer 13

The same as for an application:
If one or more of the original applicants remain, the licence etc. will be allowed to continue (normally).

If none of the original applicants remain, the licence etc. lapses upon change in ownership.

However, if the licensee etc. was working or making the invention in good faith, then they are entitled to be granted a licence from the new owner. (Licences should be requested within two months of the order to transfer ownership).

Reasonable and fair terms.

Question 14

Under s39, an invention by an employee belongs to his employer, if:
a) it was made ____________________ of the employeem or in the course of additional ___________________, and an invention might ___________________, or
b) it was made _____________________ and implicit in those duties is ___________________________.

Answer 14

(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b)the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking.

Question 15

Who does s39 apply to?

Answer 15

Employees normally resident in the UK and mainly employed here.

Question 16

Can s39 result in joint ownership between employer and employee?

Answer 16

No.

Question 17

w.r.t s39, who is the burden of proof placed on?

Answer 17

The employer, the default position is that ownership is by the employee.

Question 18

What are the three routes to employer ownership?

Answer 18

1. Normal duties where inventions may reasonably arise.
   - employees contracted role (researcher vs janitor)
   - does not preclude working at home, or outside normal hours, or using own equipment
2. specially assigned duties where inventions may reasonably arise, and
3. where duties carry a special obligation to further the interests of the employer’s undertaking (e.g. senior management, fiduciary responsibility).

Question 19

What is the immunity provided by s39?

Answer 19

s39(3) sets out that if an invention belongs to the employee, then
a) the patent can be applied for and
b) the invention can be worked,
without infringing any copyright or design right that may belong to the employer as a consequence of the employee making the invention (i.e. overlapping rights, CDPA s11 and s215).

Question 20

In the absence of any indication to the contrary, who will usually own the invention of a PhD student?

Answer 20

The student themselves.

Question 21

Can inventors apply for compensation for their invention?

Answer 21

s40(1)
Patent must be in force, or within 1 year of lapse.
Employee must be inventor.
Employer is owner.
Invention and/or patent is of outstanding benefit to the employer.
The court or Comptroller may award compensation to the employee according to s41.
(inventions owner by employer via s39(1))

s40(2)
Patent must be in force, or within 1 year of lapse.
Employee must be inventor.
Employee is owner (not employer).
Invention is assigned or exclusively licensed to the employer;
the benefit to the employee is inadequate in relation to the benefit to the employer of the invention and/or patent, and so it is just that the employer (further) compensates the employee according to s41.
(Inventions owned by employee via s39(2))

s40(2) overrides any contract or agreement.

Question 22

What are the requirements for an inventor to apply for compensation for their invention?

Answer 22

s40(1)
Patent must be in force, or within 1 year of lapse.
Employee must be inventor.
Employer is owner.
Invention and/or patent is of outstanding benefit to the employer.
The court or Comptroller may award compensation to the employee according to s41.
(inventions owner by employer via s39(1))

s40(2)
Patent must be in force, or within 1 year of lapse.
Employee must be inventor.
Employee is owner (not employer).
Invention is assigned or exclusively licensed to the employer;
the benefit to the employee is inadequate in relation to the benefit to the employer of the invention and/or patent, and so it is just that the employer (further) compensates the employee according to s41.
(Inventions owned by employee via s39(2))

s40(2) overrides any contract or agreement.

Question 23

What is the exception to s40(1) and (2)?

Answer 23

s40(3), (1) and (2) do not apply if the employee is in a trade union that has negiotated a pay settlement regarding such inventions.

Question 24

What factors influence whether a benefit is deemed oustanding benefit? (3)

Answer 24

1) NOT future benefit but foreign rights can be taken into account;

2) ACTUAL benefit, not theoretical benefit - i.e. not how the employer could have benefited under a better exploitation of the invention;

3) Size of the business, a given level of benefit will be proportionately less outstanding the larger the employing organisation becomes; (can be subsidiary of a larger company though, Shanks v Unilever);

EXTRA: obviously benefit is calculated only up to expiry of the relevant patent or SPC etc.

Question 25

Can the one year time limit from lapse of a patent for use of s40 be extended?

Answer 25

Yes, at the Comptrollers discretion under R108(1).
Request a ‘caveat’ using PF49 on the patent to be informed if lapse occurs.

Question 26

What factors are taken into consideration under s41 regarding the amount of any compensation? (4)

Answer 26

1) the employee’s duties and existing pay;
2) the effort and skill in inventing;
3) any co-inventor’s contribution (esp. other employees); and
4) the employer’s contribution.

Payment can be a lump sum or periodic.

Question 27

Can an employee sign away their rights under UKPA?

Answer 27

s42, any ‘term’ diminishing the employee’s rights is unenforceable in respect of those rights, but this does not extend to any duty of confidentiality.

The whole agreement is not void if it contains a ‘term’ diminishing an employee’s rights.

The confidentiality caveat means that the patent application of an employee must not breach the employer’s confidence. The employer could get an injunction banning the application (whilst of course still not entitling the employer to file the application instead).

Question 28

Can compensation for an invention be pursued by an employees inheritors?

Answer 28

Yes, s43.

Question 29

Can an employee claim compensation under s39-42 for the benefit to an employer from ensuing overseas patents and other protections (SPCs)?

Answer 29

Yes, s43.

Question 30

s39-42 applies to what type of employees? (Answer is not ‘inventors’)

Answer 30

Those mainly employed in the UK or if unclear where mainly employed, then if they are attached to a UK place of business.

Question 31

Can an assignment, share or an exclusive licence of a patent confer the right to bring infringement proceedings for earlier acts?

Answer 31

Yes.

Question 32

Should transactions relating to GB patents/applications be registered at the UKIPO?

Answer 32

Yes, PF21.

Question 33

If a patent owner is overseas, how can transfers of rights be registered at the UKIPO?

Answer 33

Needs to be via UK representative.

Question 34

Is VAT payable on royalties?

Answer 34

Yes - implications for back royalties as damages in court settlement.

Question 35

What happens if a UK company goes bust w.r.t to its patents?

Answer 35

They go to the Crown - the liquidator must assign the patents to itself or another party before discharging a company.

Question 36

Is a nominal £1 consideration on an Assignment needed?

Answer 36

No

Question 37

How are patent transactions in Scotland handled?

Answer 37

The same as in England and Wales - but any agreement must conform to Scottish requirements for property transactions.

Question 38

What is the deadline for registering assignments, licences etc. at the UKIPO?

Answer 38

6 months or as soon as practical after the date of assignment or licensing, otherwise, costs or expenses for infringement proceedings will not be awarded to the assignees or exclusive licensees.

Question 39

What happens if Party X assigns a patent to Party Y but does not register this with the UKIPO, subsequently Party X goes bust and the administrator assigns the patent to themselves and subsequently sells it to a third Party Z?

Answer 39

The later transaction has entitlement over the earlier unregistered transaction. (If later transaction one in good faith).

Question 40

Who is an application for rectification under s34 made to?

Answer 40

The Patent Court, with copies sent to the parties and the Comptroller.

Question 41

What is the default arrangement w.r.t to co-ownership of patents and applications?

Answer 41

The default arrangement for co-ownership is equal undivided share - subject to agreements to the contrary.

Each party is entitled to work the invention independently without it being classed as infringing each other’s rights - subject to agreements to the contrary.

Anyone may supply a co-owner with essential means to validly work the patent without being classed as a secondary infringer.

Question 42

What are the default arrangement w.r.t to co-ownership of patents and applications and requests to amend the patent, revoke the patent, licence, assign or mortgage the patent?

Answer 42

Subject to contested entitlement or an agreement to the contrary, all parties must agree in order to amend the patent, revoke the patent, licence, assign or mortgage the patent.

Question 43

Can one co-owner sue for patent infringement without the consent of the other?

Answer 43

Yes, however, the other owner(s) will become parties to the proceedings but will only be liable for costs if they take an active part in them.

Question 44

What happens upon death of one co-owner of a patent or patent application?

Answer 44

The right passess to their successor(s) in title.

Question 45

If joint applicants disagree with how to prosecute a case, how can this be resolved?

Answer 45

s10, the Comptroller can be asled by any of the parties to arbitrate and direct how to proceed, and/or alter the number of applicants.

Question 46

Can revocation of a UK patent on the grounds of grant of a patent to a person who is not entitled be sought?

Answer 46

Yes

Question 47

When can employee compensation not be applied for?

Answer 47

Where a relevant collective agreement provides for payment of compensation.