PA 12 - Entitlement of foreign & convention application; EPR 14 Flashcards
Who can and when can they bring entitlement questions if foreign and convention patents. And what does the comptroller do
S12 (1) BEFORE grant of an OVERSEAS patent:
ANY person may refer a question of entitlement to the Comptroller
OR
one or more co-applicant may approach the Comptroller regarding transfer of entitlement to any other person
and the Comptroller will do as they see fit
What can the Comptroller do regarding foreign entitlement questions (s12)
S12 (2) May decline to deal with it and pass on to the court
(if it would be more properly dealt with there)
Who has jurisdiction for entitlement with an EP patent
S12 (3) Refer to Section 82.
Comptroller shall have jurisdiction if:
the applicant has residence or principal place of business in the UK
OR
the other party claiming entitlement has residence or principal place of business in the UK
When does section 12 apply
ONLY when referral is made BEFORE grant
What happens with Employee related questions for EP patents
(S82)
for Employee inventions
the employee is mainly employed in the UK
OR
the employee is not mainly employed anywhere or his place of main employment cannot be determined, but the employer has a place of business in the United Kingdom to which the employee is attached
When does S10 apply (Handling of Joint Applicants) in foreign entitlement proceedings
S12(4) To all orders made under subsections (1) and (2), EXCEPT where it regulates a manner in which an application is to proceed
When does S11 apply (Effect of Transfer of Application)
S12(5) For orders made under subsections (1) and (4)by either the Comptroller or overseas court, unless already covered in Sections 8 or 10 (Entitlement and Joint Applicants)
What happens to entitlement when EP applications or GB designations (EP and PCT) are withdrawn
The comptroller may allow a party he considers entitled to all or part of the matter to file WITHIN THREE MONTHS a new application (subject to no added matter), and that is treated as being filed on the date of the original application under the following circumstances
(a) Where it is withdrawn or refused during prosecution BEFORE a question is referred under S12(1)
OR
(b) an EP application is refused by request of the entitled person in and deliberation under S12(1)
OR
(c) where a PCT(GB) application, or the GB designation thereof is withdrawn or refused during normal prosecution
BEFORE OR AFTER any question is referred under S12(1) above.
What does “patent” and “application” mean for S12 relating to overseas entitlement
They encompass overseas equivalents
When is Section 12 used
When there is an EP application whose entitlement is in doubt
When does S12 not apply
To GRANTED foreign cases.
But if they grant during S12 proceedings, the proceedings can continue
When is a decision made final for S12 proceedings
A decision is final once an appeal can no longer be sought
OR
an appeal is disposed of
Can S12 be used to determine inventorship
YES, as this can give rise to rights in some states (e.g. Germany)
UNLIKE S8 which defers to S13
How do S12 decisions affect other jurisdictions
It can affect them, but only as guidance, and is not binding
c.f. S83
What happens if entitlement results in need to assign
Comptroller has the power to bypass a losing party that fails to operate and authorise the transfer on their behalf
