Ownership and Entitlement Flashcards
Who can apply for a UK patent?
- According to Ss.7(1), any person may make an application for a patent either alone or jointly with another.
- The term “person” includes:
- one or more individuals or
- a corporate body
- The term “person” does not include
- a firm,
- partnership or body which is unincorporated (although in such cases an application may be made by individual partners jointly)
MoPP 7.02
To whom may a UK patent be granted? (3 points)
(s. 7(2)) A patent may be granted to
* Inventor/joint inventor
* Any person who by virtue of law or an enforceable agreement
* The successor in title to the above
Under what circumstances must a statement of inventorship be filed?
If the applicant is not the inventor.
(Section 13)
When must the statement of inventorship be filed and what extension of time is available, if any?
(You are not required to consider divisional applications)
- Must be filed by 16 months from the priority (or filing, if there is no priority) on Patent Form 7
- Extension of time available for two months as of right
- Further extension at the discretion of the Comptroller
(s. 13 and r.10(3))
According to s.7(3) and case law, what is an inventor?
- Invention means the actual deviser of the invention = the natural person who “came up with the inventive concept (Yeda v Rorer)
- A person who merely gives advice or assistance is not a co-inventor
- Therefore, “an inventor” can be thought of as someone who contributed materially to what was thought to be the inventor at the time of devising
How can an applicant’s details be changed? (4 points)
Can apply to correct Patent Form 1 by:
- Under r.49 - Filing a request in writing on Patent Form 20 to correct name/address/address for service
- Under r.50 - Filing a request in writing and with evidence to correct an error in the register or in any document filed with the IPO in connection with registration
- Under r.105 - Filing a request in writing and with evidence to correct an obvious error in the application/patent (also see s.117)
- Under r.47 - File patent form 21 to register a transaction
Under what sections can questions about entitlement to patents be referred?
Questions about entitlement to patents may be referred to the comptroller under
- s.8 - patents under the 1977 Act which have not yet been granted
- s.12 - patents under foreign or international law which have not yet been granted
- s.37 - granted patents under the 1977 Act
The comptroller is the primary jurisdiction for entitlement disputes.
What remedies are available to someone who is found to be entitled to a patent or application?
6 points
- Removing the wrongful applicant completely and replacing with the rightful one, the application proceeding normally
- Adding the claimant to the application so as to become co-owner
- Refusing the wrongful application
- Order the exclusion of material from the application to which the applicant is not entitled
- Allowing the rightful owner/claimant of the excluded material to file its own application in respect of it and ante-dating it to the filing or priority date of the wrongful application
- In general, the IPO has unlimited power to do justice as between the non-entitled person and the entitled one
Conditions for filing a new application under s.8(3)(c) (4 points)
- For a successful claimant under s.8(2), the Comptroller may order a new application due to the following
- It is refused or withdrawn
- It no longer contains the matter to which the claimant is held to be entitled as a result of amendment
- It is treated as having been filed on the filing date of the original application.
- The new application must be filed 3 months from the decision or the end of appeal (r.20)
If the Comptroller orders transferring/granting a license of a right (or transfer of the application) to the new party, what happens if this is not complied with?
- If the order is ignored by the party for 14 days, the Comptroller can permit the other party to implement - the affected parties are informed
What extensions arise due to the filing of a new application after an entitlement dispute? (4 points)
- 2 months from filing or 16 months from priority to:
- Declare invetorship under s.13(2)
- File priority documents under r.8
- But where the new application is filed within six months of the compliance date, the declaration of inventorship and the priority documents must be supplied at filing
- Biological material information - later of: date of filing or 16 months from priority
What does s.36(1) and (2) say about rights of the co-owners of a patent or application?
- Each co-owner is entitled to an equal undivided share in the patent.
- Each co-owner has the right to perform an act that would otherwise amount to an infringement w/o the consent of the others - unless an agreement to the contrary
What do co-owners need each other’s permission for under s.36(3)? (3 points)
Subject to contested entitlement or an agreement to the contrary, all parties must agree to:
- amend or request amendment of a patent
- apply for revocation of the patent
- license, assign or mortgage the patent
What does s.36(4) say about co-ownership and infringement? (2 points)
- Under s.60(2), a person who supplies any of the means, relating to an essential element of an invention, for putting the invention into effect may thus infringe a patent for the invention, i.e contributory infringement.
- Section 36(4) provides that such supply to a co-owner of a patent does not constitute such infringement.
What does s.36(5)-(7) say?
- s.36(5) - A patented product arising any of the co-owner validly working the invention is treated as per any conventional patented product
- s.36(6) - The rest of s.36 does not affect the rights of trustees or inheritors
- s.36(7) - The rest of s.36 applies to patent applications
