#19705 - 17. Ownership, Exploitation, And Remedies - Intellectual Property Law

WEEK 17

Ownership, Exploitation, and Remedies

Bently and Sherman 6^th Ed: 629-645; 688-694; 696-705.

Outline

• issue of patent ownership / who is entitled to be granted the patent

• remedies available where the wrong person has applied for a patent or a patent has been granted to the wrong person.

• who counts as an inventor?

• issues surrounding inventions allegedly produced by artificial intelligence, joint inventors,

• entitlement issues that arise in relation to inventions created by employees.

Ownership plays a key role in shaping the way the rights and responsibilities that flow from the grant of a patent are organized

The proprietor of a patent is able to exploit and control the use that is made of a patent: they are able to

• make decisions about when and the conditions under which a patent can be assigned, licensed, or mortgaged.

• also the person who is able to sue for infringement

Primarily given to the inventor or joint inventors.

• Nevertheless, this presumption is overridden where the right to the patent has been transferred to a third party

Alternatively- a person entitled to grant of the patent may have assigned their rights in the patent to someone else and so they would not be the owner of the patent; or the patent may have been transferred to a third party as a result of death or insolvency.

most disputes tend to be heard after the patent has been granted

• because if an issue is raised during the application under PA 1977, s. 8(1), but has not been determined by the time of grant, the dispute is usually continued as if it were a dispute as to the entitlement of a granted patent (i.e. as if it were a PA 1977, s. 37, application).

Matters relating to the ownership of patents were decidedly better dealt with by the national courts or tribunals, than under the EPC; European Patent Office (EPO) only has a limited procedural role.

//

UK patents

section 7(4) of the 1977 Patents Act - rebuttable presumption that the patent applicant is the person who is entitled to be granted the patent

• may be rebutted - section 7(2) covers the grounds

evidence about entitlement is often inconclusive, thus the presumption frequently operates to maintain the status quo

• Often difficult to determine the precise point in time and the circumstances under which an invention was created.

• Lord Wilberforce in Beecham Group v. Bristol Laboratories International [1978] RPC 521, 567 - ‘it is often difficult to fix the point or points in a continuous line of discovery at which an invention has been made’

Prior to the grant, anyone may ask the Comptroller whether they are entitled to be granted a patent for that invention or whether they have or would have any rights in or under any patent so granted. Any person claiming a proprietary interest in a patent may ask the Comptroller to clarify who is the true proprietor of the patent, whether the patent should have been granted to the person to whom it was granted, or whether any right in or under the patent should be transferred or granted to another person

If wrong person has been granted the patent, the main aim should be ‘to reach a solution which would provide a reasonable opportunity for the patent to be exploited should there be a demand for it.

• Reflects desire to see the invention enter the commercial domain

possible remedies for a successful challenge before the grant

• the Comptroller can refuse, amend, or transfer the application (PA 1977, s. 8(2)(c). PA 1977, s. 8(2)(a))

• where it is decided that the referent was the sole inventor, it will probably be ordered that the application shall proceed in the name of that person.

• alternatively, if it is found that the invention was made jointly, the likely order is that the application will proceed jointly.

Refused application and the person properly entitled to apply submits a new application

• they may be able to avail themselves of the wrongful applicant’s priority date.

  • PA 1977, s. 8(3).

• Comptroller also has jurisdiction to reach more creative solutions. May grant the patent to one co-inventor, but order that the other co-inventor be given a non-exclusive, non-assignable licence, perhaps with payment of a royalty.

Where patent is granted and ownership is challenged

• Alternatively, the Comptroller may grant a licence to the claimant or revoke the patent on the ground that it was granted to the wrong person

• Wrong person = a person not entitled under PA 1977, ss 7(2), 36, or 72(1)(b); EPC, Art. 138 (1)(e).

• On deciding the patent should be revoked

  • may order that the person who made the application (or their successor in title) may make a new application for a patent

note: no order may be made to transfer the patent or to permit the reapplication if the reference was made two years from the date of the grant.

• This exclusion does not apply if the proprietor of the patent knew they were not entitled to the patent.

• PA 1977, ss 37(6)–(7), 38(1), (3)–(4) - Protection for third parties in these situations

European patents

EPO only has a limited procedural role in determining disputes over entitlement. EPO only takes account of questions of entitlement if a decision has been made by an appropriate national court to the effect that a person other than the applicant is entitled to the patent.

Questions relating to the ownership of European patents (UK) both before and after grant may be heard by the British Comptroller or courts.

Determining who is Entitled to Grant

S. 7(2) and (3) - patents should only be granted to a limited category of people.

the question of whether a person is entitled to grant is solely dependent on them being able to show that they had been the actual inventor.

• Yeda – HoL: to prove entitlement, it is enough for a person (A) to show that A and not the person (B) named on the patent was the actual inventor

• Rejected - ‘[A] must be able to show that in some way B was not entitled to apply for the patent, either at all or alone. It follows that A must invoke some other rule of law’—typically by virtue of contract or breach of confidence—‘to establish his entitlement—that which gives him title, wholly or in part, to B’s application.’

• Upshot - the decision as to whether a person is properly entitled to grant of a patent turns solely on who came up with the inventive concept.

Starting point - section 7(2)(a);

• the right to be granted a patent is primarily given to the inventor or joint inventors

• Thaler v. Comptroller-General [2021] EWCA Civ 1374 - artificial intelligence machines cannot qualify as inventors (because it is the PERSON who devised the invention)

Patent law bears many of the marks of the romantic author – based on a model of an individual inventor (illustrated in the requirement of the inventor to be the ‘actual deviser’ of the intention).

The assumption that the inventor is the person properly entitled can be overridden in two situations

1. S.7(2)(b) - the presumption in favour of the inventor as owner does not apply where it can be established that at the time the invention was made, another person was entitled to the invention by virtue of (i) any enactment or rule of law; (ii) any foreign law, treaty, or international convention; or (iii) an enforceable term of any agreement entered into with the inventor before the making of the invention.

   1. Precise meaning of this section is unclear – but it is widely accepted that it deals with employee inventions caught by s.39.

2. S.7(2)(C) - where the presumption that the inventor is the owner is overridden because the rights to the invention to be transferred to third parties

   1. The registered proprietor may be able to rely upon the equitable rules of proprietary estoppel to prevent or limit the transfer of a patent under section 7(2)

Inventors and Joint Inventors

Tribunals are often called upon to decide who is properly entitled to be named as inventor or joint inventor of a given invention.

Where someone claims that they, and not the named inventor, are the ‘actual deviser’ of the patented invention

1. PA 1977, s. 7(3) - to mean the ‘actual deviser’ of the invention. Joint inventors are construed accordingly.

2. Courts have to identify the inventive elements and consider whether the claimant was responsible for the development of some or all of those elements

3. In certain cases, courts have been willing to divide an invention up into parts, allocating responsibility for different claims to different inventors.

4. The appropriate way of determining who was the inventor was not to divide up the elements of a claim and ask who devised each; rather, it was necessary to interpret the claim so as to ascertain the essential inventive concept and then determine who contributed that concept (Henry Brothers v. Ministry of Defence [1997] RPC 693.)

What is an inventive contribution?

• The courts have emphasized that to qualify as an inventor, a person needs to show that they have contributed to the ‘inventive concept’ (GE Healthcare v. Perkin Elmer [2006] EWHC 214 (Pat), [146]), not just that they have contributed to the claims.

• Yeda – this is because the claims might include non-patentable integers derived from the prior art.

Because the process of invention is often a complex process, the determination of inventive concept is difficult

• ‘the inventive concept is a relationship of discontinuity between the claimed invention and the prior art. Inventors themselves will often not know exactly where it lies.’ (Lord Hoffman in Yeda in [20])

• certain contributions (such as the posing of the problem to be solved or the answering of those problems) are usually treated as being inventive....