Inventorship, Ownership and Employee rights Flashcards by Matilda Arulampalam

under section 7(1) who can apply for a patent?

anyone single or jointly

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S7(2) Who may be granted a patent?

a) inventor
b) a person entitled by law, agreement, treaty
c) successors in title of either

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How may a non-inventor be entitled to the grant of a patent?

By agreement, law, or treaty.

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S7(3) What is the definition of the inventor?

The actual deviser of the invention.

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S7(4) Who is the entitled person by default?

Applicant

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Who cannot apply for a patent? (3)

firm, partnership, unincorporate body

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Who classes as “anyone” in section 7(1)? (5)

natural person, legal person, corporate body, LLP, individual partner.

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How do you change applicant details if there is an error in the register?

Apply to correct PF1 by filing request under R50 with written evidence or reasons.

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Someone who gives advice or assistance is…

not a coinventor

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How do you change applicant details if there is a clerical or translation error in the application?

Apply to correct PF1 by filing request under R105.

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How can you change applicant details if a PF7 hasn’t yet been filed?

File a request in writing under Rule 31

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How do you register a transaction to change applicant details?

File PF 21 under Rule 47

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What are the three options/rules for changing applicant details?

Apply to correct PF1 under R50 or R105

File request under R31

File PF21 under R47

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What is an example of an unenforceable clause under section 42(2)?

A clause that diminishes an employee’s right to an invention (has no legal effect)

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How is the inventor identified in a UK patent application?

Form 7 - statement of inventorship

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A patent can be revoked under Section 72(1)(b) after grant if…

a potentially entitled person challenges entitlement within 2 years of grant.

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How long does a potentially entitled person have after grant to raise grounds for revocation under section 72(1)(b)

2 years after grant.

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In a patent entitlement dispute, who has the burden of proof under Section 7(4)?

The second party must prove that the first party was not entitled to the patent.

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What is the deadline for filing a statement of inventorship PF7

16 months

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What is the outcome of failing to file statement of inventorship within the deadline?

Application deemed withdrawn.

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How might you remedy a failure to file PF7 within the deadline?

R108(2) - 2 month extension as of right

S20A - prove unintentional

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Under which sections are disputed assertions to inventorship resolved?

sections 8 or 10

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In who’s name does an application proceed if an applicant dies?

Applicant’s personal representative

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Who may act on the behalf of an inventor if the inventor dies?

Inventor’s personal representative

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What happens if a personal representative has not been appointed by the applicant and the applicant dies?

patent granted in name of the deceased.

In who's name does an application proceed if the applicant is of unsound mind?

The applicant's

In who's name does an application proceed if the applicant is under 18 years of age?

their name or their parent/guardian name

What must a claimant prove to add their name to entitlement?

prove on the balance of probabilities that they had made a relevant contribution to the inventive concept

Under Rule 10(1) where must an inventor be mentioned if not mentioned in the published application or patent?

subsequent addendum or erratum

R10(2) Who can apply to have an alleged inventor mentioned in a patent, published application, or addendum/erratum?

anyone

What is the right of inventors under s13(1)

To be mentioned in the granted patent and if possible in the published application.

R10(3) What is the deadline and Form for filing statement of inventorship?

16 months from priority PF7

According to s13(2) the statement of inventorship must be submitted with what within 16 months to prevent application being deemed withdrawn?

Identification of inventors Derivation of rights if applicants are not inventors

What is the deadline for filing statement of inventorship for PCT(GB) applications?

Later of: a) 16 months from priority R10(3) b) 2 months from start of NP R68(2)

How can you amend inventor details during the first 16 months from priority?

Send replacement PF7

R11(1) What is the deadline for inventors to apply to waive their right to be mentioned in publication?

Before preparations for publishing are complete.

R11(2) When must an inventor provide satisfactory reasons as to why they are waiving their right to be mentioned?

When witholding name AND address

R11(3) When must the Comptroller automatically accept the waiver not to be mentioned?

When just withholding address.

R11(4) Is waiving your right to be mentioned as the inventor permanent?

No - can later apply to end the waiver.

When is a PF7 mandatory? (2)

If the inventor is not the applicant. When the application is a Divisional or Dispute Filing

Section and Rule to add an inventor?

S13(1) AND R10(2)

Section and Rules for removal of inventor name?

S13(3) and Rules for Proceedings Heard before the Comptroller

If someone believes they should have been added as an inventor, what must they do?

File a question of inventorship under section 13 - Form 2 and statement of grounds (both in duplicate)

What is the procedure when someone files a question of inventorship under Section 13

Form 2 and statement of grounds sent to relevant parties

What is the time limit for referrring questions about inventorship?

no time limit

Requirements of statement of inventorship.

1) Identify inventor (underline surname in black) 2) Derivation of rights

How many statements of inventorship must be filed for multiple inventors?

What might you do if someone should not have been mentioned as inventor in the published application?

Apply for a certificate of non-inventorship with form 2 and statement of grounds in duplicate

When all parties agree that an amendment to the specification means that it is no longer fitting for a person to be mentioned as inventor, what can be done to avoid action under section 13(3)?

An amicable amendment.

As opposed to Form 2, how do you submit an amicable amendment?

Relevant facts and agreement of all parties filed in writing at IPO

When may an inventor be named in the application but not in the patent?

If the claims differ so that a person has no longer contributed towards the inventive concept.

How can you rectify inventorship for EP(UK) applications before grant is mentioned in EPB, to avoid proceedings in the UK?

Rectification under Rule 21 EPC

In which situation would a UK application not require a Statement of Inventorship (Form 7)?

For an EP(UK) application, if all of the provisions of the EPC have been met, the requirements of 13(2) are considered met.

What is the default share arrangement for co-ownership of patents under section 36(1)?

equal undivided share

What can co-applicants do without consent from the other applicants?

1) Any act which would amount to infringement s36(2) 2) Sue third parties 3) Source the essential means for the invention without the supplier comitting secondary infringement s36(4)

Section 36(3) Which actions require consent from co-applicants?

a) Amend, request to amend, revoke b) License, assign, mortgage

Section 36(3) In what situation would a co-owner be able to license the invention without consent from other co-owners?

If an agreement has been made

Does a co-owner require consent from other co-owners to sue a third-party for infringment?

If co-owner A sues someone for infringement, are the other co-owners liable by default for costs?

When are co-owners liable for costs relating to infringement proceedings started by another co-owner?

If they take an active part in the proceedings.

Who acquires a co-owner's rights when they die?

Their successor in title.

Which section should disputes about co-ownership be made under

Section 10 (Section 8 in parallel if entitlement also an issue)

What options should you consider when a non-amicable co-ownership arises between different employers?

1) Agreement for free dealing 2) assignment 3) attempt refusal under section 8 4) attempt revocation under section 72.

What can you suggest when an employee improves an invention made with a previous employer such that working the invention would infringe the previous patent?

Patent the improvement then propose a cross-license to previous employer

When is the Employer entitled to the Employees invention under section 39?

1) a) If made in normal duties OR If made in duties specifically assigned to them AND if the invention might reasonably be expected to result from employees duties OR b) If normal duties of employee entail a special obligation to further the interests of the employer

39(3) What can an employee do if they are entitled to an invention but their employer owns related copyright or design rights?

The employee can still apply for a patent and work the invention without infringing any copyright or design right.

Section 39 applies to employees that are...

...normally resident in UK and mainly employed in the UK

How can you prove and confirm inventorship/entitlement when an invention arises from a group discussion?

Obtain minutes and statements indicating contributions of parties involved.

A member involved in a group discussion defects and files an application for an invention developed within that discussion. What should you check?

Was the discussion confidential? Who are they employed by?

What questions should you ask if the "employee" is a major shareholder or director of the company?

Check they are actually employees Check if they fall under special obligation clause

How do you determine practically whether someone is a contractor or an employee?

Ask them who pays their National Insurance. If they do themselves, they are a contractor. If someone else does, they are that person's employee.

What documents can you request when a question of entitlement is raised regarding a PhD student or a retired lecturer?

Employment contract, funding/grant agreements, IPR clauses.

Under section 40, when is an employee entitled to compensation from an employer who owns a patent for an invention made by the employee?

When the invention or patent is of OUTSTANDING BENEFIT to the employer considering the size and nature of the company.

Who has the onus of proving that there has been outstanding benefit?

employee/applicant

S40(2) When can an employee who exclusively licenses their patent to their employer gain further compensation?

Benefit to the employee is inadequate in relation to the benefit to the employer.

What prevents employee compensation under section 40?

Employee is in trade union that has negotiated a pay setttlement.

What is the deadline for the employee to request compensation under section 40?

whilst patent is in force, or within 1 year after its lapse.

How can an employee request to know when the patent will lapse?

PF 49

Section 41 deals with the fair copmensation of the benefit the employer has derived from...

invention, appliction, assignment, any other rights

S41 What 4 factors are taken into account when determining the value of a "fair share" of the benefit to the employer from the invention/application/assignment/rights

a) employee's duties and existing pay b) effort and skill in inventing c) Co-inventor contribution d) Employer's contribution

S42 When can terms diminishing an employee's rights be enforceable?

Confidential subject-matter

S42 stipulates that any term diminishing employee's rights is...

unenforceable

S43 Limits s39-42 to employees that are...

mainly employed in the UK or attached to a place of business in the UK

Can employees claim compensation under these sections for the benefit of overseas patents and other protections (e.g. SPCs)?

Yes

What is the period used to the calculate the benefit to an employer?

Up until the patent is no longer in force

Inventorship, Ownership and Employee rights Flashcards

Learn sections 7, 13, 36, 39-43 of the UK Patents Act (86 cards)