Inventorship and Entitlement

Question 1

What rights does an inventor have?

Answer 1

• To be mentioned in a granted patent and if possible the published application s13(1)
• presumed to be entitled to the patent grant s7(2)(a) unless superceded by agreement, law, or treaty s7(2)(b)

If not mentioned, must be mentioned subsequent addendum R10(1)
Anyone can apply to have an alleged inventor indicated R10(2)

Question 2

Who is an inventor?

Answer 2

• A single or joint devisor of the invention s7(3)
• advice or assistance not sufficient s43(3)

Question 3

How can an inventor prevent their address being published?

Answer 3

• Request that their address is not published

Question 4

How can the inventor waive their right to be mentioned?

Answer 4

• Provide reasoning R11, R26(2)

Question 5

How and when must the inventor be identified?

Answer 5

• w16m priority the applicant must provide UKIPO with the identity of the inventor(s) s13(2)
• use PF7

failure = app deemed withdrawn

Question 6

How can inventors be amended?

Answer 6

• w16m priority provide replacement PF7
• > 16m priority s117 correction
• request register amendment R49

Alternatively apply to comptroller s13(3)

Question 7

How can inventorship be resolved?

Answer 7

Application to Comptroller s13(3)

Question 8

If the applicant is not the inventor(s), what actions should they take?

Answer 8

• w16m priority applicant must provide UKIPO with indication of derivation of right s13(2)
• use PF7
• actual assignments or contracts not required to be filed

failure = app deemed withdrawn
R108(2) applies
R108(3) s20A apply (unintentional)

Question 9

Who may apply for a patent?

Answer 9

• Any person s7(1)
• May be natural or legal s30
• unincorporated partnerships excluded

Question 10

How must the applicant be indicated?

Answer 10

PF1

Question 11

How can missing applicants be added? (4 methods)

Answer 11

1. Missing applicant and no PF7 filed = Request amend application R31
2. Missing applicant and PF7 filed = (uncontested) entitlement s8
3. Missing applicant and granted = (uncontested) entitlement s37
4. Transaction = File PF21 R47

Question 12

3 methods

How can the applicant details be corrected?

Answer 12

1. Incorrect name/address on PF1 = Request to correct PF1 R49
2. Clerical/translation error on PF1 = Request to correct PF1 R105
3. Incorrect name/address on register = Request to correct register R50

Question 13

What must be filed on the date of filing with a divisional?

Answer 13

• PF1
• complete application (description, claims, figures, abstract)
• inventor declaration - PF7
• search request PF9A and fee
• request for examination PF10 and fee