Questions of Entitlement Flashcards
Learn sections 8, 9, 12, 37 of the UK Patents Act
Under which section of the Act may a person take action during an entitlement dispute BEFORE grant?
Section 8
Under Section 8(2), which actions can be taken by the Comptroller during an entitlement dispute?
REPLACE some or all applicants
REFUSE to grant patent/AMEND to excise contested elements
ORDER a license or transfer of right
Under which section of the Act may a person take action during an entitlement dispute AFTER grant?
Section 37
Under which section of the Act may a person take action during an entitlement dispute for FOREIGN applications BEFORE grant?
Section 12
Under which section of the Act may a person take action during an applicant dispute?
Section 10 (in parallel with section 8 if one applicant not entitled)
Under which section of the Act may a person take action during a UK inventorship dispute?
Section 8 defers to Section 13
Under which Article of the EPC may a person take action during an inventorship dispute regarding an EPC(GB) application?
Article 61 EPC
Under which section of the Act may a person take action during an overseas inventorship dispute?
Section 12
Which Rules are used for disputes under the sections 8, 10, 12, 13 or 37?
Rules for Proceedings
What is the deadline for a party to file a new application containing excised elements of a previously contested application?
Rule 20 - 3 months from the decision or end of the appeal
What is the filing date for a new application containing excised elements of a previously contested application?
Filing date of the old application
What can the Comptroller do if the ordered party ignore an order for a license or transfer of right for 14 days under section 8?
permit the other party to implement the order
How do trustees/representatives pursue entitlement?
The same way as applicants/inventors
What is the deadline for starting entitlement proceedings under Section 37?
2 years
Who can challenge patent ownership under Sections 37 and 72(2)(b)?
Only a potentially entitled person, such as the original inventor or rightful owner, can challenge patent entitlement.
What happens if the Comptroller believes another person should have been mentioned as an inventor?
Comptroller issues an addendum, Register is altered. Form 7 is kept the same.
What is the deadline for declaring inventorship for new applications arising from disputes under sections 8, 12, or 37?
later of 2 months from filing or 16 months from priority
What is the deadline for filing priority documents for new applications arising from disputes under sections 8, 12, or 37?
later of 2 months from filing or 16 months from priority
When must new applications arising from disputes under sections 8, 12, or 37 be filed with inventorship and priority documents?
If the new application is filed within 6 months of the R30 compliance period.
What is the deadline for depositing biological material for new applications arising from disputes under sections 8, 12, or 37?
date of filing or 16 months from priority.
Under which section of the Act may a person take action during an entitlement dispute for FOREIGN applications AFTER grant?
No provisions
What happens if section 8 proceedings do not conclude before grant?
Section 9 allows them to continue under section 37
What actions can you take in Europe when UK entitlement proceedings have begun?
You may request suspension of EP proceedings by providing evidence that UK proceedings are taking place.
What is the impact of UK entitlement proceedings on EP applications which claim priority from the UK application?
If successful, the UK position can be used to transfer rights of an EP application
When do the courts have jurisdiction to deal with entitlement proceedings?
When the Comptroller declines to deal
How is the prosecution process impacted during entitlement disputes?
Preliminary Examination, Search, Publication, Substantive Examination should not be deferred
What is the procedure for referring a question of inventorship/entitlement?
Patents Form 2 and statement of grounds in duplicate
