Only a person with the right can be granted a patent for an invention. In other words, the owner of a patent must be the inventor or must have somehow acquired the right to the patent from the inventor. When a patent application is made in the name of someone other than the inventor, it is important to identify precisely how the applicant’s right was acquired.
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 Patent Law, perhaps trying to be helpful, states that the inventor refers to the “real currency” of the invention. The “invention” in this context is the inventive concept that was offered at the beginning of the application process. If, as is sometimes the case, the ultimately granted patent is somewhat more limited in scope than the alleged original invention, this makes no difference. An assessment of prior art is not relevant to determining inventory issues.
To properly determine the identity of the inventor(s), it is first necessary to identify the inventive concept in the patent application. Once this is done, it is the creator of that inventive concept who is the inventor. Also, anyone who provides an essential enabling disclosure, in other words, information without which the person skilled in the art would not be able to practice the invention, is a co-inventor. On the other hand, a person who provides only disclosure of details that the person skilled in the art could easily have figured out for himself or herself is not necessarily an inventor.
Where there is any doubt as to whether a person is an inventor, it may be better to name them as such in the patent application and concentrate on ensuring that the case for the applicant’s acquisition of the rights is fully justified. Since lack of ownership is grounds for revocation of a granted patent, it is worth resolving any potential uncertainties early in the process.
How the rights of the inventor pass
The most common scenario in which someone other than the inventor is entitled to an invention patent is when the inventor makes the invention in the course of their employment. In this case, the right to the patent will normally belong to the employer, provided that two requirements are met:
- the invention was made in the exercise of the functions of the employee; Y
- either the duties were such that an invention could reasonably be expected to occur or the duties were such that the employee had a special obligation to further the interests of his employer.
In practice, therefore, employers often own inventions made by employees working in any type of research role, because it is reasonable to expect inventions 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 an employment contract that is intended to make the situation less favorable 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 inapplicable.
The term “employee” can sometimes be a source of doubt. It does not necessarily mean that the person has to be an employee for tax and social security purposes, for example. The Court of Appeal has established three conditions that must be met to determine that a ‘servant’ was an employee:
- the servant agreed that, in return for some payment, he would provide his own labor and skill in performing some service to his master;
- he agreed that he would submit to his master’s control in the performance of that service; Y
- the provisions of the contract were compatible with it being a service contract.
The implication of this rule is that a self-employed contractor engaged in research and development may be an employee for the purposes of the Patent Act if he must provide his own work (he may not subcontract to another person), and you must do the job in a way that is to some extent dictated by the employer.
Often a director and 100% shareholder of a company may not technically be an employee. However, the argument may be academic, since that person would likely have fiduciary rights to the company.
Rights can also pass from an inventor to an applicant by assignment, that is, by a contract that simply sells (or assigns) the right to a patent.
put the right in question
If someone else has applied for a patent for an invention that is rightfully yours, the dispute can be referred to the Intellectual Property Office. If the IPO agrees that you are entitled to the patent, then the application can be transferred to your name. Alternatively, you may request that the original application be denied and submit a new application on your behalf.
A similar procedure applies if a patent on your invention has already been granted to someone else, and similar remedies are available. However, rights generally must be disputed within two years of the grant of the patent in question.
It is best to resolve any questions about the right as soon as possible, especially if a cheap and amicable resolution is presented. Failing to do so can result in a much more expensive dispute later on.