A QUESTION WE ARE OFTEN ASKED IS: “WHO SHOULD BE NAMED AS THE INVENTOR AND/OR APPLICANT ON OUR PATENT APPLICATION, AND HOW TO WE SAFEGUARD AGAINST ENTITLEMENT DISPUTES?”
This information relates to UK patent applications.
Before answering this question, it is important to be clear about a few concepts surrounding inventorship, ownership and IP transfers.
First, an “invention” (or in reality, the “act of inventing” or arriving at the initial “inspiration” or “spark” that underpins a new idea) is the product mental activity that is carried out by an actual person, or in some cases, by a team of people. An invention therefore only exists in the mind of an inventor, unless and until it is reduced to practice or made manifest in some tangible form (e.g. a prototype is made, or a description of the invention is recorded in some way). (In view of the fact that the act of “invention” is fundamentally a mental activity, it is not possible for a corporate entity, such as a company, to be the inventor on a patent application, however, it is often desirable for a company to own a patent or patent application).
Second, a patent application is a legal document that describes an invention. Thus, a patent application must always follow “invention”, and in many cases there is a delay between the initial inventive concept being realised, and a patent application being filed.
Third, a patent is essentially a fixed-term, state-granted monopoly right that is given only after an application for a patent is successful. Patents can only be granted where the invention is new, non-obvious and capable of industrial application, and where the patent application describes the invention in a manner that is clear and complete enough for the invention to be carried out by a skilled person.
Given that the “invention” is, technically separate from the patent application (the patent application describes the invention, but is not, itself, the invention), it follows that there is often uncertainty about who “owns” the underlying idea behind and invention, the patent application itself, or in due course, the right to exercise the rights arising when a patent application is published or when it matures into a granted patent.
For the purposes of illustration, the “rights” that are most often desired/argued about, include: the right to file a patent application, the right to claim priority and the right to sue for infringement etc.
Given the commercial importance of “patent rights”, it is critical that the ownership of the rights in question is correctly allocated to the correct people or entities, and that the situation is clear. This is particularly so because disputes over entitlement and ownership of IP rights often arise much later (when memories have faded or people have moved on), and when the sums of money involved are much higher (an invention is usually not worth much at first, but a successful commercial product embodying the invention some time later may be very lucrative indeed).
It is also often the case that inventors, employees, companies move on, die, fall out, go bust etc. and experience tells us that it is highly recommended to try to establish and document the legal situation as early as possible in the procedure.
As a result of the above, we need to turn to the relevant legislation for guidance:
Under UK law (section 7 of The Patents Act 1977), the inventor is the first person who is entitled to the grant of a patent, unless certain other conditions are satisfied (see below). Therefore, the person who is entitled to a patent for an invention is usually the actual inventor and this is the default position, unless:
- before the invention was made: there was an agreement in place transferring the inventor’s right to the grant of a patent to another person or entity; or
- after the invention was made: there was an agreement (or other rule or operation of law) that transferred title in the invention from the inventor to that other person or entity.
Circumstances that give rise to meeting the pre-invention criterion (1 above) include the situation where the inventor was employed by a company at the time the invention was made. This is codified in Section 39 of the Patents Act 1977, which (paraphrased) says that where the inventor was employed at the time the invention was made and where his/her specifically-assigned duties included, or were likely to result in, “inventing” (“Technical Directors”, and “Research Scientists”, for example, often fall into this category), or where the inventor had a fiduciary duty towards his/her employer (“Ordinary Directors” and “General Managers” often fall into this category), then the right to the grant of a patent automatically belongs to the employer. In the situation where there is one inventor, who is employed, as an inventor, by the entity in whose name a patent application is subsequently filed, the patent application automatically belongs to the employer by virtue of the operation of Section 39 of the Act.
It should be noted, however, that the right to the grant of a patent belongs to each inventor’s employer, so where there are several inventors and/or where they are employed by different companies (as sometimes happens in group-structured companies), then the right to the grant of a patent could be shared between the respective employers. Care should also be taken to check whether the inventors’ employers are the same entity as the entity in whose name the patent application will be filed.
In situations where the inventor is not employed by the entity in whose name the patent application will be filed, something more is needed, in which case the post-invention provisions (2 above) need to be invoked.
According to the Patents Act 1977, inventions, patent applications and patents are property rights that can be transferred by way of assignment. Therefore, it is possible to legally transfer title (legal ownership) in an invention, a patent application or a patent to another entity by way of a contract or deed (an agreement between the parties transferring title from one part to another).
We are able to draw-up suitable agreements for execution by the parties, but this is detailed work that requires due diligence to ensure that the chain of title is correct. The drafting of assignments is a “reserved instrument activity” under the Legal Services Act 2007, and must, therefore, be carried out by a registered patent attorney, solicitor or other suitably-empowered individual.
It is possible to execute a “confirmatory agreement”, which whilst not actually transferring title in and of itself, confirms, in writing, the legal situation (e.g. by referring to another Agreement by which title was transferred). Confirmatory agreements can also contain “mop-up clauses” to avoid ambiguity (e.g. “…to the extent that title was not transferred by way of Agreement X, the parities hereby confirm and agree…”). It is often recommended, even where the chain of title isclear, to execute confirmatory agreements to safeguard title in the event of a later entitlement dispute.
Once the chain of title has been established, and documented, it is also a requirement under the Patents Act 1977 to file a “statement of inventorship” explaining how the right to the grant of a patent passed from the inventor(s) to the applicant. This can be done by way of filing “Form 7”, but an explanation is needed as well as the full names and addresses of all of the named inventors.
Also, if a patent application or patent has been assigned, it is also a necessary requirement to record the transfer at the UKIPO so that the Register of Patents correctly identifies the actual legal owner of the patent/application.
INFORMATION ON THE PUBLIC RECORD
In certain circumstances, the UKIPO may ask for copies of any agreements, which can be put on the public record. It is for this reason also, that a “confirmatory agreement” may be useful because the confirmatory agreement can be worded in neutral terms but referring back to another agreement containing commercially sensitive information, which earlier agreement does not need to be put on the public record.
A further point to note about the “public record” is that the inventor’s full names and given addresses appear on the Register, which is published online. Therefore, if inventors do not wish their home addresses to appear on the public record, then another valid postal address can be supplied, e.g. a work address, but the inventor must be contactable at the given address because the UKIPO may need to write to the inventors to confirm certain things.
In the UK, the deadline for naming the inventors and filing the statement of inventorship is 16 months after the filing (or priority) date of the patent application. However, as it is easy to lose track of inventors, it is recommended to attend to this as soon as possible post-filing, or at the time of filing.
In the case of an assignment, this should be recorded within six months of the date of execution of the agreement, to ensure that the assignment takes precedence over later-recorded assignments.