Only an entitled person may be granted a patent to an invention. In other words, the proprietor of a patent must either be the inventor, or must have somehow acquired the right to the patent from the inventor. Where a patent application is made in the name of someone who is not the inventor, it is important to identify precisely how the applicant has become entitled.
The inventor
The right to a patent begins with the inventor, or (as is often the case) with the joint inventors. But who exactly is the inventor? The Patents Act, perhaps attempting to be helpful, states that the inventor means the "actual deviser" of the invention. The "invention" in this context is the inventive concept which was offered at the start of the application process. If, as sometimes happens, the eventually granted patent is somewhat narrower in its scope than the originally purported invention, this makes no difference. An assessment of the prior art is not relevant in determining questions of inventorship.
In order to properly determine the identity of the inventor or inventors, it is first necessary to identify the inventive concept in the patent application. Once that is done, it is the originator of that inventive concept who is the inventor. Furthermore, any person who provides essential enabling disclosure, in other words, information without which the skilled person would not be able to put the invention into effect, is a joint inventor. On the other hand, a person who provides only disclosure of details which the skilled person could readily have worked out himself is not necessarily an inventor.
Where there is any doubt as to whether a person is an inventor, it may be best to name them as an inventor on the patent application, and to concentrate on ensuring that the case for the applicant's acquisition of the rights is fully made out. Since lack of entitlement is a grounds for revocation of a granted patent, resolving any possible uncertainty at the start of the process is worthwhile.
How rights pass from the inventor
The most common scenario in which somebody other than the inventor is entitled to a patent for an invention is where the inventor makes the invention in the course of his employment. In this case, the right to the patent will normally belong to the employer, as long as two criteria are met:
the invention was made in the course of the employee's duties; and
either the duties were such that an invention might reasonably have been expected to result or the duties were such that the employee had a special obligation to further the interests of his employer.
In practice, therefore, employers will usually own inventions which were made by employees working in any kind of research role, because inventions might reasonably be expected to result from that role (i.e. the employee's job is to invent). Employers will also own inventions made by employees who have some kind of special obligation to their employer, for example, employees who are directors of their employing company.
Note that any term in a contract of employment which purports to make the situation any less favourable to an employee (for example, a clause giving the employer the right to inventions not made in the course of the employee's duties) is unenforceable.
The term "employee" can sometimes be a source of doubt. It does not necessarily mean that the person has to be an employee for the purposes of tax and national insurance, for example. The Court of Appeal has set out three conditions which have to be met to determine that a 'servant' was an employee:
the servant agreed that, in consideration of some payment, he would provide his own work and skill in the performance of some service to his master;
he agreed that he would subject himself to his master's control in the performance of that service; and
the provisions of the contract were consistent with it being a contract of service.
The implication of this rule is that a self-employed contractor who is engaged to carry out research and development may be an employee for the purposes of The Patents Act if he must provide his own work (he cannot sub-contract to somebody else), and he must do the work in a way which is to some degree dictated by the employer.
Often, a director and 100% shareholder of a company may not technically be an employee. However, the argument may be an academic one, since such a person would likely hold rights on trust for the company.Rights may also pass from an inventor to an applicant by assignment, that is, by a contract which simply sells (or gives away) the right to a patent.
Putting entitlement at issueIf somebody else has applied for a patent to an invention which is rightly yours, the dispute may be referred to the Intellectual Property Office. If the IPO agree that you are entitled to the patent, then the application may be transferred into your name. Alternatively, you can ask for the original application to be refused, and file a new application in your name.
A similar procedure applies if a patent to your invention has already been granted to another person, and similar remedies are available. However, the rights must usually be disputed within two years following grant of the patent at issue.
It is best to resolve any doubt as to entitlement at the earliest possible opportunity, especially if an inexpensive and amicable resolution presents itself. Failing to do so may result in a far more costly dispute further down the line.
The inventor
The right to a patent begins with the inventor, or (as is often the case) with the joint inventors. But who exactly is the inventor? The Patents Act, perhaps attempting to be helpful, states that the inventor means the "actual deviser" of the invention. The "invention" in this context is the inventive concept which was offered at the start of the application process. If, as sometimes happens, the eventually granted patent is somewhat narrower in its scope than the originally purported invention, this makes no difference. An assessment of the prior art is not relevant in determining questions of inventorship.
In order to properly determine the identity of the inventor or inventors, it is first necessary to identify the inventive concept in the patent application. Once that is done, it is the originator of that inventive concept who is the inventor. Furthermore, any person who provides essential enabling disclosure, in other words, information without which the skilled person would not be able to put the invention into effect, is a joint inventor. On the other hand, a person who provides only disclosure of details which the skilled person could readily have worked out himself is not necessarily an inventor.
Where there is any doubt as to whether a person is an inventor, it may be best to name them as an inventor on the patent application, and to concentrate on ensuring that the case for the applicant's acquisition of the rights is fully made out. Since lack of entitlement is a grounds for revocation of a granted patent, resolving any possible uncertainty at the start of the process is worthwhile.
How rights pass from the inventor
The most common scenario in which somebody other than the inventor is entitled to a patent for an invention is where the inventor makes the invention in the course of his employment. In this case, the right to the patent will normally belong to the employer, as long as two criteria are met:
the invention was made in the course of the employee's duties; and
either the duties were such that an invention might reasonably have been expected to result or the duties were such that the employee had a special obligation to further the interests of his employer.
In practice, therefore, employers will usually own inventions which were made by employees working in any kind of research role, because inventions might reasonably be expected to result from that role (i.e. the employee's job is to invent). Employers will also own inventions made by employees who have some kind of special obligation to their employer, for example, employees who are directors of their employing company.
Note that any term in a contract of employment which purports to make the situation any less favourable to an employee (for example, a clause giving the employer the right to inventions not made in the course of the employee's duties) is unenforceable.
The term "employee" can sometimes be a source of doubt. It does not necessarily mean that the person has to be an employee for the purposes of tax and national insurance, for example. The Court of Appeal has set out three conditions which have to be met to determine that a 'servant' was an employee:
the servant agreed that, in consideration of some payment, he would provide his own work and skill in the performance of some service to his master;
he agreed that he would subject himself to his master's control in the performance of that service; and
the provisions of the contract were consistent with it being a contract of service.
The implication of this rule is that a self-employed contractor who is engaged to carry out research and development may be an employee for the purposes of The Patents Act if he must provide his own work (he cannot sub-contract to somebody else), and he must do the work in a way which is to some degree dictated by the employer.
Often, a director and 100% shareholder of a company may not technically be an employee. However, the argument may be an academic one, since such a person would likely hold rights on trust for the company.Rights may also pass from an inventor to an applicant by assignment, that is, by a contract which simply sells (or gives away) the right to a patent.
Putting entitlement at issueIf somebody else has applied for a patent to an invention which is rightly yours, the dispute may be referred to the Intellectual Property Office. If the IPO agree that you are entitled to the patent, then the application may be transferred into your name. Alternatively, you can ask for the original application to be refused, and file a new application in your name.
A similar procedure applies if a patent to your invention has already been granted to another person, and similar remedies are available. However, the rights must usually be disputed within two years following grant of the patent at issue.
It is best to resolve any doubt as to entitlement at the earliest possible opportunity, especially if an inexpensive and amicable resolution presents itself. Failing to do so may result in a far more costly dispute further down the line.