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 clarify precisely how the applicant has become entitled.
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 method the “actual deviser” of the invention. The “invention” in this context is the inventive concept which was offered at the start of the application course of action. If, as sometimes happens, the ultimately granted patent is slightly narrower in its scope than the originally purported invention, this makes no difference. An assessment of the prior art is not applicable in calculating questions of inventorship.
In order to properly determine the identity of the inventor or inventors, it is first necessary to clarify 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 basic 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. however, a person who provides only disclosure of details which the skilled person could freely 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 without of entitlement is a grounds for revocation of a granted patent, resolving any possible uncertainty at the start of the time of action is worthwhile.
How rights pass from the inventor
The most shared scenario in which somebody other than the inventor is entitled to a patent for an invention is where the inventor makes the invention during his employment. In this case, the right to the patent will typically belong to the employer, as long as two criteria are met:
- the invention was made during the employee’s duties; and
- either the duties were such that an invention might reasonably have been expected to consequence or the duties were such that the employee had a special obligation to further the interests of his employer.
In practice, consequently, employers will usually own inventions which were made by employees working in any kind of research role, because inventions might reasonably be expected to consequence 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.
observe 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 during the employee’s duties) is unenforceable.
The term “employee” can sometimes be a source of doubt. It does not necessarily average that the person has to be an employee for the purposes of tax and national insurance, for example. The Court of popularity 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 keep up 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 issue
If somebody else has applied for a patent to an invention which is rightly yours, the argument may be referred to the Intellectual character 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 obtainable. 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 consequence in a far more costly argument further down the line.