PA 37 - Determination or right after grant

Question 1

What does S37 cover

Answer 1

S37 covers the determination of rights to a Patent AFTER GRANT

Question 2

What can people ask w.f.t. S37 re entitlement of a patent

Answer 2

S37 (1) After grant, anyone having or claiming a PROPRIETARY interest may refer to the Comptroller to ask:
a) who is/are the true proprietor(s) of the patent
b) should the patent have been granted to the grantee(s) or
c) should any right be granted or transferred to other person(s)
- and the Comptroller determines and gives order

Question 3

What can the Comptroller’s order include re S37

Answer 3

S37(2)
The order may for example be to:
a) include a claimant as an extra or replacement proprietor,
b) require registration or a transfer or event that gave rise to a right for a claimant,
c) grant a licence or other right and/or
d) direct the current proprietor(s) or right-holder to comply/facilitate

Question 4

What is the time limit for complying with an order under S37, and what happens if they don’t do it

Answer 4

S37(3)
If a person does not comply within 14 DAYS the claimant may apply to the Comptroller to do it themselves

Question 5

What happens if the result of a S37 order is revocation due to an unentitled grantee

Answer 5

S37(4)
the claimant may:
a) apply for a patent in the whole matter of the spec IF revocation was unconditional and the claimant is entitled
b) apply for a patent in whatever matter was determined to be excluded from a patent in a conditional revocation,
and such a new filing will keep the original filing date

Question 6

What is the time limit under R20 for a claimant to apply for a new patent S37 (4)

Answer 6

The application must be made WITHIN THREE MONTHS of the decision or end of appeal

Question 7

What is the time limit for 37(4) to be actionable

Answer 7

S37(5)
Subsection 4 is NOT actionable if the referral is made more than TWO YEARS after grant, UNLESS one of the grantees knew they were not entitled at the time of grant.

Question 8

When will courts deal with matters under S37

Answer 8

S37 (8) the comptroller can pass the issue to the court
(9) The court won’t look at the issue unless it complies with the conditions of S37(5) i.e. the time limits.

Question 9

What’s the difference between S8 and S37

Answer 9

Section 8 deals with UK APPLICATIONS
Section 37 deals with UK PATENTS (and only within 2 years unless the proprietor knew they weren’t entitled)

Question 10

What type of patent does S37 deal with

Answer 10

ANY UK patent including any EP(GB) Patents