Inventorship Flashcards
Learn sections 7, 13, 36, 39-43 of the UK Patents Act
under section 7(1) who can apply for a patent?
anyone single or jointly
Who may be granted a patent?
inventor, a person entitled, successors in title of either
How may a non-inventor be entitled to the grant of a patent?
By agreement, law, or treaty.
What is the definition of the inventor?
The actual deviser of the invention.
Who is the entitled person by default?
Inventor
Who cannot apply for a patent?
firm, partnership, unincorporate body
Who classes as “anyone” in section 7(1)?
natural person, legal person, corporate body, LLP
How do you correct an error in the register?
Apply to correct PF1 by filing request under R50 with written evidence or reasons.
How do you correct a mistake in the application relating to applicant details?
Apply to correct PF1 by filing request under R105 if clerical or translation error.
How can you amend an application before grant when a PF7 hasn’t yet been filed?
File a request in writing under Rule 31
How do you register a transaction to change applicant details?
File PF 21 under Rule 47
What are the three options to change applicant details?
Apply to correct PF1 under R50 or R105
File request under R31
File PF21 under R47
What is an unenforceable clause?
A clause that diminishes an employee’s right to an invention which has no legal effect.
How is the inventor identified in a UK patent application?
Form 7 - statement of inventorship
Under what circumstances can a patent be revoked under Section 72(1)(b) of the Patents Act 1977?
Following a challenge when the granted patent was obtained by someone who was not entitled to it.
What does Section 42(2) of the Patents Act 1977 protect employees from?
It prevents any contractual term from diminishing an employee’s rights to their inventions or related patents. Such terms are unenforceable.
How long after grant can a patent be revoked under Section 72(1)(b) for lack of entitlement?
Within two years of grant.
In which case is there no time limit for a patent to be revoked under section 72(1)(b) for lack of entitlement?
If the patent was obtained fraudulently.
In a patent entitlement dispute, who has the burden of proof under Section 7(4)?
The second party must prove that the first party was not entitled to the patent.
What is required to remove defendants during entitlement disputes?
Prove they devised the invention and prove named inventors contributed nothing of substance.
What is the deadline for filing a statement of inventorship
16 months
What do you do if you miss the deadline for filing a statement of inventorship?
Follow procedure in section 32(2)
In who’s name does an application proceed if an applicant dies?
Applicant’s personal representative
Who may act on the behalf of an inventor if the inventor dies?
Inventor’s personal representative
What happens if a personal representative has not been appointed by the applicant and the applicant dies?
patent granted in name of the deceased.
In who’s name does an application proceed if the applicant is of unsound mind?
The applicant’s
In who’s name does an application proceed if the applicant is under 18 years of age?
their name or their parent/guardian name
What must a claimant prove to add their name to entitlement?
prove on the balance of probabilities that they had made a relevant contribution to the inventive concept
What is the deadline for inventors to apply to waive their right to be mentioned in publication?
Before preparations for publishing are complete.
When must an inventor provide satisfactory reasons as to why they are waiving their right to be mentioned?
When witholding name AND address
Is waiving your right to be mentioned as the inventor permanent?
No
If someone believes they should have been added as an inventor, what must they do?
File a question of inventorship under section 13 - Form 2 and statement of grounds (both in duplicate)
What is the procedure when someone files a question of inventorship under Section 13
Form 2 and statement of grounds sent to relevant parties
What is the time limit for referrring questions about inventorship?
no time limit
What happens to the application if statement of inventorship is not filed within the prescribed period?
Withdrawn
Requirements of statement of inventorship.
Identify inventor and underline surname in black.
Indicate how non-inventor applicants derive the patent rights.
How many statements of inventorship must be filed for multiple inventors?
one
When all parties agree that an amendment to the specification means that it is no longer fitting for a person to be mentioned as inventor, what can be done to avoid action under section 13(3)?
An amicable amendment.
As opposed to Form 2, how do you submit an amicable amendment?
Relevant facts and agreement of all parties filed in writing at IPO
When may an inventor be named in the application but not in the patent?
If the claims differ so that a person has no longer contributed towards the inventive concept.
How can you rectify inventorship for EP(UK) applications before grant is mentioned in EPB, to avoid proceedings in the UK?
Rectification under Rule 21 EPC
In which situation would a UK application not require a Statement of Inventorship (Form 7)?
For an EP(UK) application, if all of the provisions of the EPC have been met, the requirements of 13(2) are considered met.
What can co-applicants do without consent from the other applicants?
Any act which would amount to infringement s36(2)
Which actions require consent from co-applicants?
License, assign, amend, revoke
In what situation would a co-owner be able to license the invention without consent from other co-owners?
If an agreement has been made
Does a co-owner require consent from other co-owners to sue a third-party for infringment?
No
If co-owner A sues someone for infringement, are the other co-owners liable for costs?
No - unless they take an active part in the proceedings.
Who acquires a co-owner’s rights when they die?
Their successor in title.
Which section should disputes about co-ownership be made under
Section 10 (Section 8 in parallel if entitlement also an issue)
What options should you consider when a non-amicable co-ownership arises between different employers?
Agreement, assignment, attempt refusal under section 8, attempt revocation under section 72.
What can you suggest when an employee improves an invention made with a previous employer such that working the invention would infringe the previous patent?
Patent the improvement then propose a cross-license to previous employer
When is the Employer entitled to the Employees invention?
1) If made in normal duties OR
2) If made in duties specifically assigned to them AND 3) If the invention might reasonably be expected to result from employees duties OR
4) If employee has a special obligation to further the interests of the employer
What can an employee do if they are entitled to an invention but their employer owns related copyright or design rights?
The employee can still apply for a patent and work the invention without infringing any copyright or design right.
What are the requirements to qualify as an “employeee” according to this section?
normally resident in UK and mainly employed in the UK
An employee is entitled but a clause in their employment contract states otherwise. Are they still entitled? Why?
Yes - ny terms in contracts of employment that diminish the employees rights are unenforceable.
How can you prove and confirm inventorship/entitlement when an invention arises from a group discussion?
Obtain minutes and statements indicating contributions of parties involved.
A member involved in a group discussion defects and files an application for an invention developed within that discussion. What should you check?
Was the discussion confidential?
Who are they employed by?
How do you determine practically whether someone is a contractor or an employee?
Ask them who pays their National Insurance. If they do themselves, they are a contractor. If someone else does, they are that person’s employee.
What documents can you request when a question of entitlement is raised regarding a PhD student or a retired lecturer?
Employment contract, funding/grant agreements, IPR clauses
In what situation is an employee entitled to compensation from an employer who owns a patent for an invention made by the employee?
When the invention or patent is of OUTSTANDING BENEFIT to the employer considering the size and nature of the company
When can an employee who exclusively licenses their patent to their employer gain further compensation?
Benefit to the employee is inadequate in relation to the benefit to the employer.
What prevents employee compensation under section 40?
Employee is in trade union that has negotiated a pay setttlement.
What is the deadline for the employee to request compensation under section 40?
whilst patent is in force, or within 1 year after its lapse.
How can an employee request to know when the patent will lapse?
PF 49
What 4 factors are taken into account when determining the value of a “fair share” of the benefit to the employer from the invention/application/assignment/rights
- employee’s duties and existing pay
- effort and skill in inventing
- Co-inventor contribution
- Employer’s contribution
When can terms diminishing an employee’s rights be enforceable?
Confidential subject-matter
