3) Ownership & Entitlement

Question 1

Who is excluded from making an application for a patent?

Answer 1

1. A firm
2. A partnership
3. An unincorporated body

Question 2

What is the default assumption according to the person entitled to the granted patent

Answer 2

Default assumption that the Applicant is entitled to the granted patent

Question 3

Usually, the right to grant of a patent belongs to the inventor. In what cases is this different?

Answer 3

When overridden by any rule of law or any legally enforceable agreement.

1. Invention made in the course of Employment
2. Assignment
3. Death
4. Bankruptcy

Question 4

What is the 2 step approach in UK for determining inventorship?

Answer 4

(i) Identify the inventive concept
(ii) Determine who devised that concept

Question 5

For sole to joint inventorship disputes, who is the burden of proof and what must he show?

Answer 5

The person seeking to be added as a joint inventor.

He must show that contributed to the inventive concept underlying the claimed invention (aka. was an actual deviser)

Question 6

For 1 sole to another sole inventorship disputes, who is the burden of proof and what must he show?

Answer 6

On the person who seeks to be substituted as sole inventor

He must show that
(i) he contributed to IC
And
(ii) the inventor named in the patent did not

Question 7

If someone has filed an application but is not entitled, what are the options and when to use?

Which PF should be used?

Answer 7

4 diff Entitlement proceedings depending on the app/patent or the number of applicants

Use PF2

1. s8 proceedings (for a pending app)
2. s37 proceedings (for granted GB or EP(GB) patents)
3. s12 proceedings (for a foreign app: eg EP(GB))
4. s10 Joint applicant disputes

NB. 1&4 can be used in parallel

Question 8

Does s12 apply to granted foreign case?

Answer 8

No, only applies if referral is made before the application grants (like s12)

Question 9

When can a s8 / s12 entitlement question be brought?

Answer 9

At any time before a patent has been granted for an invention

Even before the making of an application

Question 10

When can a s37 entitlement question be brought?

Answer 10

Within a 2Y period from the date of publication of the Mention of grant of the patent

Unless the current proprietor knew they were not entitled when the patent granted

Question 11

If a foreign (EP(GB)) grants during s12 proceedings, can s8 proceeding for GB equivalent continue?

Answer 11

Yes

Question 12

Who can make a s8 entitlement dispute?

Answer 12

• Any person claiming a right in any application
• Trustees/Representatives of deceased parties

Question 13

Who can make a s37 entitlement dispute?

Answer 13

Any person having or claiming a proprietary interest in or under the patent

Question 14

If someone claims to be named as an inventor but is not an actual deviser, what dispute option(s) exist?

Answer 14

s13 Inventorship disputes for GB apps/patents

s12 Inventorship disputes for foreign apps/patents

Question 15

What happens if a question referred to the Comptroller under s8 is still not determined by the time the app comes to grant?

Answer 15

Entitlement question is treated as a s37 entitlement question

Question 16

What is the date of grant for the purpose of s8 entitlement proceedings? Does it differ for the purpose of s37?

Answer 16

Date of Grant = issue of s18(4) comm (aka. grant letter), for the purpose of s8 proceeding.

Yes, different for s37.
Date of Grant = date on which the notice of grant appears in the Journal and the patent is published

Question 17

What happens to entitlement question is referred to Comptroller between s18(4) date and Notice Grant in Journal?

Answer 17

Nothing.

Treated a s37 proceeding, but will only start after the Notice of Grant appears in the Journal

Question 18

What remedies exist after the outcome of s8 proceedings?

Answer 18

1. Change of Applicant to claimant(s) name, and application proceeds
2. Refusal of whole of app
3. Amendment of app to exclude SM which the original Applicant is not entitled to
4. Order that the right will be transferred/licensed to the claimant
5. Declaration that SM (X) is the property of claimant

Question 19

What remedies exist after the outcome of s37 proceedings?

What condition must be met before any of these are carried out?

Answer 19

1. Include the claimant as extra or replacement proprietor
2. Require that a transfer to claimant is registered
3. Grant a licence to claimant

Condition = Current proprietor need to be informed

Question 20

What is the DL for the non-entitled person to provide remedy to entitled

Answer 20

14 days

Question 21

What is the DL for the claimant of s8/s12 proceedings to make a fresh applications (from excised or refused SM)?

Is the DL extendable?

Answer 21

3M from
- the the day on which the order; or
- if an appeal, from the day which it is finally disposed of.

3M is extendable at the discretion of Comptroller

Question 22

What is the EFD of a “fresh” application resulting from a s8, s12, s37 dispute?

Answer 22

FD of earlier application

Question 23

Does s8 proceedings affect prosecution timings?

Answer 23

No.

So upon grant, s8 becomes a s37 question

Question 24

Describe interplay between UK entitlement proceedings (s8 and s37) and foreign entitlement proceedings (s12)

Think PoR

Answer 24

For EP parallel proceedings:
1. Request suspension of s12 by providing proof that s8 are brought in UK
2. Use successful UK decision to transfer right of EP app

For PCT parallel proceedings:
1. No option to suspend s12 proceedings
2. Possibility of using successful UK decision in International but not all PCT members are signatories of Protocol of Recognition - so there may be divergence btw national courts

Question 25

What's the diff between conditional and unconditional revocation following s37 entitlement dispute?

Answer 25

Unconditional revocation = the whole SM is revoked Conditional revocation = SM which is non-entitled is excluded from the patent

Question 26

If a joint applicant has issues with the co-applicant who wishes to alter the course of prosecution, what can he do?

Answer 26

File s10 proceedings using PF2 The Comptroller will arbitrate and provide directions on how to proceed

Question 27

If proceedings under s8/s12 or s10 lead to a change in applicant name, but at least one original applicant is retained, what is the effect on any licence previously agreed?

Answer 27

Licence continues to be in force as if granted by the applicants in whose names the application proceeds. Eg A,B&C are joint apps. C grants licence to X. C is then removed from applicant list. Licence to X remains in force, and licensor becomes A&B.

Question 28

If proceedings under s8/s12 lead to a change in applicant name due to non-entitlement and none of original applicant(s) are retained, what is the effect on any licence previously agreed?

Answer 28

Licence will be voided upon registration of the righfully entitled owner. Eg A&B are joint apps. A grants licence to Y. A&B are not entitled and C is. Licence to Y lapses as soon as C is registered as Applicant

Question 29

If proceedings under s8/s12 lead to a change in applicant name due to non-entitlement and none of original applicant(s) are retained, how can the non-entitled or any licence still retain their FTO?

Answer 29

Continued user rights Make a request under s11(3) for a non-exclusive licence

Question 30

What is the DL for requesting the AOR licence from the newly registered owner following s8 proceedings? Is it extendable

Answer 30

2M from the s8 decision Extendable at the Comptroller's discretion

Question 31

In what case do you need to file a PF7 declaration/derivation?

Answer 31

1. If not all the inventors mentioned on PF1 are Applicants 2. When you file a divisional application (because not necessarily all inventors named on the parent contributed to claims of divisional) 3. When you file a "fresh" application within 3M of s8, 12, 37 proceedings

Question 32

Can you correct a mistake in a filed Declaration of Inventorship/ Derivation of Rights (PF7)? What's DL?

Answer 32

Yes, just file a fresh form before the expiry of the DL (PD/FD+16M) & say it superseded the previous PF7 If DL has expired, need to use correction of clerical error route (s117)

Question 33

Can you correct a mistake/add another inventor during the international phase? What is the DL

Answer 33

Yes, do so before entering the National Phase so that the correction is centralised. DL = PD/FD+30M

Question 34

What is the DL for waiving an inventors right to be named (incl. name and address). Do reasons need to be provided?

Answer 34

PD/FD+16M Satisfactory reasons need to be provided for waiving the name + address. No reasons necessary for waiving address only.

Question 35

Can an inventor reverse a waiver to be be named?

Answer 35

Yes.

Question 36

What is the DL for an inventor requesting his right to be named? What form is used?

Answer 36

No time limit PF2

Question 37

What happens if the application (from an alleged Inventor) to his right to be named (s13) is filed after publication of the application/patent?

Answer 37

An addendum or erratum is issued (ie. re-publication)

Question 38

Can a Applicants and named Inventors oppose an application (from an alleged Inventor) to his right to be named (s13)

Answer 38

Yes. His application will be sent to them and they can oppose

Question 39

Who can dispute that an inventor should not be named on a patent/app? How?

Answer 39

Anyone may apply for a certificate saying that a person should not have been an inventor in a published application or a granted patent Use s13(3) and request by PF2. If Comptroller is convinced, an erratum is published

Question 40

In what circumstance is a s13(3) request via PF2 for a certificate of non-inventorship not appropriate? How would you proceed in such a case?

Answer 40

If the reason is because, due to prosecution of an app, it is no longer fitting for a person correctly mentioned as an inventor in the published application still to be mentioned in any granted patent. To remove the person from inventors of granted patent, need agreement of all parties in writing

Question 41

What is the type of ownership do co-owners of a patent have? What happens if 1 co-owner dies?

Answer 41

Tenancy in common If death of an owner, his share is passed onto SIT The share does not aggregate with the surviving co-owner

Question 42

What is each person in a co-ownership of a patent entitled to? What is the exception?

Answer 42

An equal undivided share in the patent. Unless there is an agreement to the contrary

Question 43

What can a co-owner do with the invention, even without the consent of the other owner(s)?

Answer 43

Co-owner can independently: 1. Re-instate/restore a lost right 2. Do any infringing act "work the invention" 3. Source means relating to an essential element of the invention (2ndary infringement) 4. Sue for infringement (shared liability only if the co-owner takes an active part)

Question 44

What can a co-owner do independently, providing they get consent from all other co-owner(s)?

Answer 44

1. Amend the app/patent 2. Withdraw the app/ surrender or revoke the patent 3. License, assign etc

Question 45

What is the territorial requirement for an Employer's right to an employee's invention?

Answer 45

1. The employee must be mainly employed in the UK OR 2. Place of employment cannot be determined but Employer has a place of business in the UK

Question 46

In what case are the certain terms in an employment contract not enforceable? Note: not the whole contract...

Answer 46

If the terms diminish the employee’s rights in inventions made by them Exception: if the term relates to Confidentiality

Question 47

Complete s39(1): A invention made by an employee shall belong to to his employer if: a) it was in made in the course of: - [1...] of the employee+ reasonable expectation; or - duties falling outside his normal duties, but [2...] to him + reasonable expectation OR b) if employee has a [3...] to [...4] of the employer’s undertaking

Answer 47

1. Normal duties 2. Specifically Assigned 3. Special Obligation 4. Further the interests

Question 48

If work was carried out in the employee’s home and using their own equipment and an invention was made, and such work falls within the employee’s normal duties, who does the invention belong to?

Answer 48

It still belongs to the Employer, regardless of where and when it was carried out. It could belong to the employee, if 1. The work was not: a) a normal duty b) a specifically assigned duty or 2. The employee does not have a 'special' obligation

Question 49

Describe the overlapping rights provision of s39(3) and the effect it has employee right to work their invention?

Answer 49

When an employee is the rightful owner (and not the Employer), their Employer cannot claim that employee is infringing existing copyright/design rights which overlap with the employee's invention.

Question 50

What is the default position for an employee's inventions whilst in employment? Who is the burden of proof on?

Answer 50

Default = Invention is owned by the employee BoP is on the Employer

Question 51

Is a PhD student an employer of the University? Do they own their own inventions?

Answer 51

No, PhD students usually not governed by same contracts as post-docs. This means, they can end up owning their own inventions

Question 52

On what condition will the court order than the Employer compensates his employee

Answer 52

A) 1. Employer is the Patentee 2. The invention is of "Outstanding benefit" to Employer 3. Compensation is just B) 1. Employee is the Patentee (but excl. licenced or assigned to Employer) 2. The benefit from the deal is inadequate compared to the benefit the Employer is getting 3. Further compensation is just

Question 53

What properties of the Employer must be considered when determining if the benefit is Oustanding?

Answer 53

The size and nature of the Employer’s undertaking ie. Benefit must be something out of the ordinary

Question 54

When can you claim for Compensation and what is the DL? Extendible?

Answer 54

From grant date --> until 1Y after Lapse (either due to missed RF or end of term) Extendible at Comptroller's discretion

Question 55

In what case does the Employer not need to compensate the employee (even if benefit is outstanding to ER or inadequate to EE)?

Answer 55

If Employer and employee have a Collective agreement about the payment (i.e., employee is in a trade union which has negotiated pay settlements)

Question 56

What does the employee get as compensation? How is this paid?

Answer 56

A fair share It can be paid in a lump sum and/or periodical payments

Question 57

Can you inherit the right to claim compensation?

Answer 57

Yes, even if proceedings start after death of employee

Question 58

Over what period does benefit (compensation) accrue?

Answer 58

The whole term of the patent, but not once the patent expired/surrendered/revoked