PA 8 - Determination before grant re Entitlement

Question 1

What is the difference between S8, S12 and S37

Answer 1

S8 is concerned with UK APPLICATIONS
S12 is concerned with FOREIGN APPLICATIONS
S37 is concerned with UK PATENTS

Question 2

What do you do to resolve entitlement of a UK patent under S8

Answer 2

S8(1)
BEFORE grant:
ANY party (including non-applications) may refer a question of entitlement o the Comptroller
OR
one or more co-applicants may approach the Comptroller regarding transfer of entitlement to any other person,
and the Comptroller will do as they see fit

Question 3

What can the Comptroller do to resolve Entitlement

Answer 3

Following S8(1)

S8(2)
replace some or all applicant names with new party/s
refuse to grant a patent or amend to excise contested elements of it
order a licence or transfer of right in the application to the new party/s

Question 4

What can the new party do if the application is refused, withdrawn or exsised

Answer 4

S8(3)
File a NEW application to those elements (subject to added matter provisions)
within the prescribed period
which is treated as having being filed on the date of the older application

Question 5

What is the prescribed period for making a new application under S8(3)

Answer 5

R20
THREE MONTHS from decision or end of appeal

Question 6

What happens if the applicants name is replaced during entitlement proceedings S8

Answer 6

S8 (4)

The Comptroller can order the transfer of a right in the application between parties

Question 7

What happens if parties ignore the Comptrollers order under S8(4) to transfer rights in applications

Answer 7

S8(5) If it ignored for 14 DAYS
the Comptroller can permit the other party to implement the order

Question 8

Who knows about entitlement proceedings

Answer 8

S8(6) Potentially affected parties are informed of the referral

Question 9

Does the Comptroller always deal with entitlement issues under S8

Answer 9

S8(7) No - it can be passed on to the courts

Question 10

What happens with deceased parties when entitlement is at issue

Answer 10

S8(8) Trustees and representatives of deceased parties can still pursue entitlement

Question 11

If new applications are arise from disputes under S8(3), 12(6) and 37(4) or divisionals under S15(9) what must be done

Answer 11

R21
1)THE LATER OF TWO MONTHS FROM FILING OR 16 MONTHS FROM PRIORITY
declare inventorship under s13(2)
file priority documents under R8

2) BUT if it is filed WITHIN SIX MONTHS of the R30 compliance period (see S18), these must be supplied AT FILING

3)Details relating to deposited biological material must be provided BY THE LATER OF TWO MONTHS FROM FILING OR 16 MONTHS FROM PRIORITY

Question 12

What should you consider with entitlement disputes (esp S8)

Answer 12

amicable agreements (assignment or a comfort letter)
Check for agreements and the facts of the case
Attempt early settlement where other party is clearly wrong - point out they could bear costs if they reject such an offer
Consider accelerated prosecution due to likely infringement by the other party (S61)

Question 13

What effect does entitlement proceedings (S8) have on proceedings

Answer 13

S8 procedure DOES NOT delay publication or prosecution in the UK
Corresponding EP cases CAN be suspended pending the outcome