When a person or company applies for a patent, it is necessary for us to identify the applicant (the person or company who will own the application/patent) when filing the initial application.
The right to apply for a patent, however, belongs to the inventor (the person or people who actually devised the invention) unless any one or more of the following applies:
- The inventor has agreed to transfer (or has actually transferred at the point of applying for a patent) ownership of the invention and any rights in it (e.g. the right to apply for a patent for that invention) to a third party;
- There exists any other agreement, at the time the invention was made, such as a contract relating to inventions and/or intellectual property, between the inventor and the applicant (this usually applies to external consultants, contracted-in designers/developers, etc.) – in which case, the invention belongs to the applicant.
- The invention was created during the course of the inventor’s employment by the applicant, and the employee’s normal or specifically-assigned duties during that employment included inventing or were likely to result in the creation of the invention (this usually applies to employees who are employed in technical, R&D, scientific, engineering, product development, etc. roles) – in which case, the invention belongs to the employer; or
- The invention was created during the course of the inventor’s employment by the applicant, and there exists a duty or obligation on the employee to further the interests of the employer (this usually applies to senior employees, heads of department, directors, company secretaries or other officers, shareholders, etc.) – in which case, the invention belongs to the employer.
In any of the above cases, the inventor will not be the applicant, and so the law requires the inventor and his/her relationship to the applicant to be given.
Obviously, in completing this procedure, we need to identify and disclose personal data of the inventor to the relevant patent office – otherwise the application cannot proceed.
In terms of the GDPR, the “legal basis” for us collecting and processing your personal data are the obligations arising under Sections 7, 8, 13, 39, etc. of the Patents Act 1977 (and corresponding laws/rules overseas).
The “purposes” for which your personal data will be used will be limited to: 1) identifying you, your address, nationality and residence on a patent application for our client; and 2) for us to contact you in relation to the same, should the need arise.
We will only share your personal data on a need-to-know basis, that is, with a patent office at which a patent application for your invention is filed; or to our foreign associates (overseas patent lawyers) who will do the same on our behalf at their local patent office. After 25 May 2018, any foreign associate that we use will need to agree to certain data protection terms with us, which are a precondition of them working for us. Those terms can be seen here.
That said, the GDPR restricts our freedom to transfer your personal data to entities outside the EU (EU entitles will already be bound by the same GDPR as us, so it is assumed that intra-EU data transfers are low-risk), unless any of the following conditions are met, that is to say, unless the transfer is:
- made with your informed consent (this page explains what you need to know, and enables you to make an informed decision, and provide consent, based on that information);
- necessary for the performance of a contract between the individual and the organisation or for pre-contractual steps taken at the individual’s request (this would be the case where you are also the applicant or client);
- necessary for the performance of a contract made in the interests of the individual between the controller and another person (this would be the case where we are acting on behalf of a client other than you, such as your employer);
- necessary for important reasons of public interest (not generally relevant to patent matters);
- necessary for the establishment, exercise or defence of legal claims (this is the case for the successful prosecution, maintenance and enforcement of patents);
- necessary to protect the vital interests of the data subject or other persons, where the data subject is physically or legally incapable of giving consent (not generally relevant to patent matters); or
- made from a register which under UK or EU law is intended to provide information to the public, and which is open to consultation by either the public in general or those able to show a legitimate interest in inspecting the register (which is the case where entries are made in the public patent registers, which contain applicant and inventor data).
Given that one of more of exceptions 2, 3, 5 or 7 almost always bite, there is no need for us to obtain your informed consent (exception 1), but for the avoidance of any misunderstandings, we do ask for you to consent to us transferring your data outside the EU at the bottom of this page.
What personal date do we need?
With regard to identifying you, your address, nationality and residence on a patent application for our client, the personal data that we need to collect and process (i.e. supply to the relevant patent office) is usually the inventor’s:
- Full name and title
- Valid postal address*
- Relationship to the applicant
* Note that any valid postal address can be supplied: it does not need to be your home address. If you do not want to supply your home address, you may use your employer’s address.
** This is needed because there are rules relating to the countries in which patent application must be first-filed (e.g. for national security reasons), and for other technical purposes, (e.g. only nationals or residents of certain countries are allowed to apply for patents in certain countries, and the rules about whether a professional representative needs to be appointed often depend on this).
The information listed above will be irreversibly put into the public domain. It will be published online and in paper journals/registers, and once so-published, cannot be “un-published”.
With regard to us contacting you, the personal data that we need to collect and process (i.e. to contact you) is your:
- E-mail address
- Phone number
- Home address*
* We especially need your home address if you have opted to use your employer’s address, as the address that we send to the patent office.
We will only use your contact data to contact you if any matters arise in relation to your status as an inventor. For example, in certain countries (notably, the US) inventors may be required to sign a form confirming that they are, in fact the inventor.
We will not use your personal data for any other purpose, unless you have completed another data submission form on this web site or consented to us doing so.
Having read and understood the above, please complete the form below and click submit.