Right to apply for and obtain a patent and be mentioned as inventor (7-13)

Question 1

Section 7

Answer 1

Right to apply for and obtain a patent

Question 2

Any person may apply, either singly or jointly with another, for a patent. However, a patent may only be granted to: (3)

Answer 2

The inventor/s;
a person entitle by agreement, law or treaty (employer, trustee); or
a successor in title to either of above

Question 3

Section 30 says that patents are personal property and thus the applicant must be a natural or legal person, this therefore excludes who from being applicants?

Answer 3

Unincorporated partnerships, though individual partners are eligible (as are LLPs).

Question 4

Which section states that a person who merely gives advice or assistance is not a co-inventor?

Answer 4

s43(3)

Question 5

s43(3)

Answer 5

a person who merely gives advice or assistance is not a co-inventor

Question 6

Does your contribution to an invention need to be in a granted claim to be named as an inventor?

Answer 6

Coupling Technology v Coupling Solutions - all inventor names should be retained after amending a claim in response to prior art, even if this may remove the entire contribution of one inventor from the claims.

Hence ‘an inventor’ can be thought of as someone who contributed materially to what was thought to be the invention at the time of its devising, however small that contribution originally was or ends up being in the claims.

Question 7

How can the applicant details be changed? (3)

Answer 7

Three options

1. Apply to correct PF1 by (a) filing a request in writing under R50 (correction of error in register), with written evidence of reasons;
   (b) filinng a request in writing under R105 (correction of error in application) if a clerical error or translation error.
2. File a request in writing under R31 (amendment of application), if PF7 has not been filed.
3. File PF21 under R47 if registering a transaction.

Question 8

Three options to change applicant name:

1. Apply to correct PF_by (a) filing a request in writing under R__ (correction of error in register), with written evidence of reasons;
   (b) filing a request in writing under R___ (correction of error in application) if a clerical error or translation error.
2. File a request in writing under R__ (amendment of application), if PF_ has not been filed.
3. File PF__ under R__ if registering a transaction.

Answer 8

1. Apply to correct PF1 by (a) filing a request in writing under R50 (correction of error in register), with written evidence of reasons;
   (b) filinng a request in writing under R105 (correction of error in application) if a clerical error or translation error.
2. File a request in writing under R31 (amendment of application), if PF7 has not been filed.
3. File PF21 under R47 if registering a transaction.

Question 9

Entitlement should be clearly established, as its lack is grounds for revocation under s__()() after grant. This ground lasts ___ years from grant only, unless…

Answer 9

s72(1)(b), two years from grant unless owner was knowingly fraudulent, and after grant can only be raised by a potentially entitled person.

Question 10

From s7(4) it follows that the onus of proog is on the second party to prove lack of entitlement of the first, except possibly under s__(_) for what?

Answer 10

s39(2) for employer-employee cases

Question 11

Section 8

Answer 11

Procedure to Resolve Entitlement (UK)
s12 for foreign
s37 for patents

Question 12

How should entitlement be resolved pre vs post grant?

Answer 12

Pre: Section 8
Post: Section 37

Question 13

Who can refer a question of entitlement of a patent application to the Comptroller?

Answer 13

Any party (including non-applicants) may refer a question of entitlement.

Includes Trustees and representatives of deceased parties.

Question 14

WRT s8 entitlement, what can the Comptroller do?

Answer 14

i. replace some or all applicant names with new party/s
ii. refuse to grant a patent, or amend to excise contested elements
iii. order a licence or transfer of a right in the application to the new party/s

Comptroller can pass matter on to courts to decide.

Question 15

If following s8(2), the Comptroller decides to remove a party/s elements from the application (or app is refused/withdrawn), the C may order that the party can file a new app for those elements (subject to s76- added sm) within what timeframe?

Answer 15

within three months from decision or end of appeal - R20, this app will be treated as having the filing date of the original application

Question 16

WRT s8 entitlment, if an order under 8(2)(d) or 8(4) is ignored for by the ordered party for __ days, the C can permit the other party to implement the order.

Answer 16

14 days

Question 17

Entitlement disputes use s_ for UK applications, s__ for UK patents and s__ for foreign appplications.

Answer 17

s8 UK, s37 patents, s12 foreign apps, if foreign app grants during s12 proceedings they can continue.

Question 18

Innovia Films v Frito-Lay [2012]

Answer 18

s12 entitlement of foreign applications can continue if grant during proceedings

Question 19

Joint applicant disputes (RE entitlement) use s_

Answer 19

s10, if one applicant is not entitled then s8 should be used in parallel.

Question 20

Inventorship disputes fall under s__

Answer 20

s13 - however s12 for foreign applications e.g. EPC(GB), PCT or other overseas applications. for EPC(GB) use s12 with A61 EPC.

Question 21

Inventorship disputes of foreign applications all under s__

Answer 21

s12 for foreign applications e.g. EPC(GB), PCT or other overseas applications. for EPC(GB) use s12 with A61 EPC.

Question 22

BDI v Argent [2019]

Answer 22

Entitlement case law - who were the inventors?

Question 23

What are the effects of s8 proceedings on the timeline of a UK patent application?

Answer 23

Does not delay publication or prosecution of the case in the UK, if s8 proceedings do not conclude before grant they can continue under s37 (post-grant entitlement proceedings). However, proceedings for a corresponding EP case can be suspended pending the outcome.

Question 24

Section 9

Answer 24

Determination after grant of questions referred before grant

Because referral under s8 does not affect prosecution timelines, s9 states that if the contested application gets granted before the referral is resolved, then the referral is to be treated as a s37 referral.

Question 25

Section 10

Answer 25

Handling an application by joint applicants.
If joint applicants disagree how to prosecute a case (e.g. one of them wants to drop it) then the comptroller can be asked by any of the parties to arbitrate and direct how to proceed, and/or alter the number of applicants.

Question 26

Inventor disputes use

Answer 26

s13 but use s12 for foreign applications such as EP, PCT or other overseas applications; for EP applications, use together with A61 EPC

Question 27

applicant disputes use

Answer 27

s10 (if one applicant is not entitled use s8 in parallel)

Question 28

Section 11

Answer 28

Effect of Transfer of application under s8 or s10

Question 29

Under Section 11: effect of transfer of application under s8 or s10, any extant rights (licence) granted to others are normally allowed to continue, in what circumstances?

Answer 29

If one or more of the original applicants remain, e.g. if X, Y and Z were the original applicants and Z licensed use to A after publication, but Z was then removed by the Comptroller, A’s license is treated as being granted instead by X and Y.

If none of the original applicants remain, the license lapses.