Chapter 3: The inventor
Sections (3.01 - 3.38) last updated: March 2017.
The right to grant of a patent belongs primarily to the inventor (s.7 (2)), the person(s) who devised the invention (s.7 (3)). However, this right may pass to another person or legal entity, for example by deed of assignment, by inheriting the rights following the death of the inventor, by contract of employment or by acquisition following the bankruptcy of the inventor.
Identification of Inventor
Any applicant who is not an inventor must file a Form 7 naming the person(s) who he believes to be the inventor(s) and stating how he derived his right to the grant of the patent. The form must be filed no later than 16 months from the earliest declared priority date, or, the filing date if there is no priority date, (r.10(3)). The period can be extended by two months under r.108 (2) upon filing of a Form 52 (with prescribed fee). A further discretionary extension may be considered under the provisions of r.108 (3) but will be subject to the conditions of rule 108(5) and (7). See Chapter 10.30-10.42.
The above may not apply to a divisional application (Please see Chapter 14 for further details of the time periods involved in submitting a Form 7 on a divisional application).
If this period has already expired, the form should be filed either within 2 months of the initiation date if there are more than 6 months to the compliance date when the divisional is filed or on the same date as the divisional application if less than 6 months remain to the compliance date. The period for filing a Form 7 may be extended by 2 months under r.108 (2) and a discretionary extension may be considered under r.108(3) although this is restricted by r.108(5) and (7). [See 10.07 - 42]
Guidance from the applicant/agent should be sought in cases where the surname or family name is not immediately obvious. Where it is evident from part 2 of Form 1 that any applicant is a corporate body a Form 7 will be necessary as described in 3.02.
Where it is evident that all the applicants (including single applicants) mentioned in part 2 of the Form 1 are not corporate bodies an objection should be raised if part 7 of F1 is not completed in full. It cannot be assumed that all applicants are also inventors unless the questions in part 7 are answered “YES” and “NO” in that order. The objection should be made at preliminary examination and should be communicated in accordance with the procedures in Chapter 7. If the objection is made to a private applicant a blank Form 7 should be sent.
If the applicant fails to file a statement of inventorship within the prescribed period the application is taken to be withdrawn under the provisions of s.13(2) and will not be published. The WR4 letter will be issued at the point of termination (see Chapter 11.29-33).
Derivation of right
There are various ways by which the applicant may have acquired his right, for example by deed of assignment, agreement or by a contract of employment (s.39), or by inheriting the rights following the death of the original applicant. Obtaining the rights via directorship is not acceptable.
A statement of the derivation of right must be given at part 5 of Form 7 if the applicant is not the inventor. This is a mandatory requirement of s.13(2). A F7 without a derivation of right should be treated as invalid (ie. not filed) and the applicant/agent requested to re-file it. If the 16 month period has expired an extension of time will need to be sought (see 3.02)
The statement must show clearly how the applicant derives the right to grant of the patent. Some statements may be too broad as they do not show how the right was derived.
Examples of such statements are:
“by operation of law or by due process of law”
an incomplete chain of title, such as “by assignment from A to B” where the applicant is C
“we are entitled to the whole property of the invention”
A statement that the applicant derived the right by virtue of s.7 (2) (b) or (c) is acceptable following the Nippon Piston Ring ( RPC 120) case (see Manual of Patent Practice chapter 13.09).
On any case where an unacceptable derivation of right is provided, and there are at least three weeks remaining of the prescribed 16 month period for submitting the Form 7, the agent/applicant should be telephoned/emailed and advised to correct the defect by filing a fresh Form 7. If the 16 months deadline has passed a request for correction under s.117 should be made in writing. The file should be noted accordingly. (Where no derivation of right has been given see 3.09).
(a) there is less than 3 weeks left of the 16 month period; or
(b) the agent refuses to correct the defect; and
(c) the Form 7 or the correction request is submitted after expiry of the 16 month period,
the Formalities Manager should refer the matter to the Head of Administration to discuss the next suitable action.
Incomplete or incorrect patents form 7
Where a corrected Form 7 is filed (see 3.11 above), and is deemed acceptable it should be annotated ‘effective’ on the TOC. The original form should be annotated ‘cancelled’.
Any minor discrepancy discovered after the prescribed period of 16 months (excluding the statement of derivation of right, see 3.09 - 3.11) may be capable of correction within a period specified by the Office.
Within the period prescribed by r.10(3) the applicant may submit a request to add or correct information on an earlier filed Form 7. Depending on the extent of the change requested, it may be acceptable for the request to be made by letter as opposed to filing a fresh Form 7. If all that needs correcting is a mis-spelt name, the Formalities Examiner can effect the correction using the Enhancer. No evidence is required to substantiate the correction. Depending on whether or not a fresh Form 7 is filed the Formalities Examiner should either correct the original Form 7 or cancel it and annotate the new Form 7 as ‘effective’ in the TOC.
If the 16 months has expired errors should be corrected with a written request under s.117. If the applicant/agent wishes to change an address on a Form 7 after the period prescribed by r.10(3) has expired he may do so by requesting the change in a letter.
When an inventor has been added or deleted following a correction request, the Form 7 should be corrected, and Footnote 6 should be recorded on COPS where appropriate.
If the 16 month period for filing Form 7 has elapsed, the applicant or agent can only add or remove an inventor by requesting a correction in writing if there is a Form 7 already on the dossier. If no Form 7 has been filed after 16 months the applicant or agent should be advised that Form 52 is required to extend the period for filing Form 7.
When a divisional application is filed under s.15 (9) of the Act, the applicant may request deletion of one or more of the inventors names from the parent application. To satisfy the Office in this regard, the applicant should be informed that if an inventor’s name is to be removed from the parent application, the procedure contained in s.13(3) and r.10 should be followed. Upon receipt of a completed Form 2 and attached statement the case should be directed to Litigation Section who will then deal with the matter. Following the amendment of claims the applicant/agent may request deletion of one or more of the inventors’ names from the parent application. Such a request need not be filed using a Form 2 but should be brought to the attention of the (Assistant) Head of Administration for action.
Right to be named as inventor
When the application is published under s.16, the inventors named on Form 7 will be mentioned on the ‘A’ print. Any person not mentioned on the Form 7 by the applicant may claim that he has a right to have been so mentioned as an inventor by filing Form 2 and appropriate fee. The form is then actioned by Litigation Section who also deal with applications under s.13(3) for the Comptroller to certify that a person should not be mentioned as inventor. This should not be confused with a correction request to correct inventor details. If there is any doubt the case should be referred to the Assistant Head of Administration.
Failure to file patents form 7
If the applicant is not the inventor, when the preliminary examination is made and expiry of the period prescribed by r.10(3) is near; the Agent/Private applicant should be contacted by telephone followed by a confirmatory report.
If a F7 is not filed by the time the r.10(3) period expires and the 2 month extension period allowed under Rule 108(2) has expired a WR4 letter should issue. (See 11.29 – 33). The letter will state that the application has now been terminated. If the application is to continue reinstatement action will be required.
Confidentiality and publication
An inventor (but not an applicant) may have his name and address kept confidential by the Office. These provisions are particularly important in meeting concerns about inventors working in controversial areas such as biotechnology although other reasons for suppression may be considered.
His address can be withheld ‘as of right’ but for both name and address to be kept confidential reasons must be given.The applicant will still be required to supply the inventor details and derivation of right on Form 7 but rule 11 allows the inventor to apply to the Comptroller to waive his right to be mentioned publicly as inventor.
The request for confidentiality must be made before the preparations for publication of the application are complete.
A request to withhold only the inventor’s address may be actioned by the Formalities Examiner dealing with the case. The Formalities Examiner should use COPS function SUP INV (Suppress Inventor Details) to action the request (selecting the option to suppress the address only).
A request to withhold both name and address will be decided by the Head of Administration in consultation with legal advisors. Each case will be decided on an individual basis.
If the request is accepted no document will be published which identifies the inventor’s name and/or address. No details will appear in the bibliographic data published online or on the front page of the ‘A’ specification and a footnote will indicate that at least one inventor has waived the right to be mentioned. The same will apply to the ‘B’ specification at grant and any documents viewable on IPSUM. A check of the file must be conducted and inventor details redacted as necessary. These details must be withheld from public inspection and rule 51(3) allows this.
If the request is accepted, the Formalities Examiner should use COPS function SUP INV (Suppress Inventor Details) to action the case (selecting the option to suppress the name and address). The Head of Administration will supply the wording for a footnote to the published specification, which should be added using COPS function REC FOO.
If there are other inventors who do not want their details kept confidential they will appear on the printed specifications in the usual way.
Documents containing suppressed inventor details should NOT be set open to public inspection. Form 7’s should be set as “No” in the Public column and the TOC annotated “Not Open to Public Inspection”. This also applies after publication where any document contains the suppressed details, including for example, the letter from the inventor requesting confidentiality. If only some of the inventor details are to be withheld then a copy of Form 7 should be made up with the confidential details blanked out so as to leave the remaining inventor details available on the open part of the dossier. The original Form 7 should be placed on the closed part of the dossier.
The Comptroller may however provide access to the inventor details in a particular case if there is a bona fide need to disclose them in, for example, entitlement or inventorship proceedings.
An inventor may change his mind and ask to have his details made public. This may be subject to conditions for example if he changes his mind after ‘A’ publication we do not have to re-publish the ‘A’ specification just to show the inventor’s name.
If the inventor’s name has been withheld from the register and ‘A’ and ‘B’ publication, it will also be withheld from the certificate of grant.
Rule 44 requires that unless a confidentiality request has been accepted the names of the inventors are entered on the register at s.16 publication therefore a request for accelerated publication cannot normally be actioned until Form 7 has been filed.
The Patents and PCT rules both require that an inventor’s name and address be supplied and these details are also required for entry onto the Patents Register. A number of section 89 National Phase PCT cases have been received where the inventor has been shown on the WIPO pamphlet as ‘deceased’ without any address details present.
Indexing and Scanning Section are unable to allocate an ADP number on COPS without some address information and this has caused difficulties processing the application through Formalities. Although the inventor may be deceased at the time of filing the application, at the time the invention was made he/she would have had an address. This is a potentially sensitive issue to be handled with care.
When the inventor is deceased and the address details are missing, Formalities Examiners should proceed as follows:
in all cases Formalities Examiners should request the last known address of the deceased inventor from the agent or representative
if the agent or representative cannot supply the address the Formalities Examiner should request the country in which the inventor resided, this will enable an ADP number to be allocated. If the country of residence cannot be supplied the application should be referred through the Formalities Manager to the Head of Administration
when requesting the last known address the Formalities Examiner should state that we are doing so because of the requirements of Rule 44 to enter this on the patents register
in all cases the Formalities Examiner should explain that if required, the address details can be suppressed (once supplied) under the provisions of Rule 44. If suppression is requested the Formalities Examiner should follow the procedure set out in paragraphs 3.26 to 3.29 above
having obtained the address details, the Formalities Examiner should refer the application to Indexing and Scanning Section for allocation of an ADP number. Index and Scanning will return the ADP number to the Formalities Examiner who will enter the details in COPS