Litigation Manual (online version)

Chapter 7: Sections 8, 10, 12, and 37 entitlement

Sections (7.01 - 7.35) last updated: March 2016

Introduction

7.01

Within the Patents Act 1977, three sections deal specifically with the question of who is entitled to a patent or patent application. These are:

  • Section 8 which relates to GB patents that have not yet been granted and applies whether or not a patent application, has been filed
  • Section 12 which relates to patents under foreign or international law which have not yet been granted
  • Section 37 which relates to patents granted under the Patents Act 1977

7.02

Where a European patent application is concerned, section 82 lays down the jurisdiction of the court and the comptroller to determine such questions. Thus before proceeding with an EP reference under section 12, the B2/B3 should check section 82 provides the appropriate jurisdiction.

7.03

A granted European patent designating the UK, that is a European patent (UK), is treated as if it were a patent under the 1977 Act resulting from an application made under the 1977 Act. Questions with regard to entitlement may therefore be referred to the comptroller under section 37.

7.04

Section 12 applies to applications under the Patent Co-operation Treaty (PCT), during the international phase while section 8 applies during the national phase (see section 89B(4) of the Patents Act 1977).

7.05

In addition to these sections, section 10 of the Act provides that certain disputes between joint applicants for a patent may be resolved by the comptroller on request from any of the parties involved.

7.06

Occasionally entitlement references refer to sections 9 and 82 of the Patents Act 1977. These do not provide for proceedings to be filed. Rather they simply affect the extent to which the other sections are applicable.

7.07

The procedures in relation to entitlement actions and for requests made under section 10 or section 12(4) by a joint applicant, are set out in the Patents Rules 2007.

Initial Action

Formal Requirements

7.08

Follow procedures at 1.04 to 1.07

7.09

Upon checking the Form 2 if any of the applications listed are unpublished the proceedings may still be deemed to be OPI if any of the other published applications or patents listed in section 2 of the form claim priority from the unpublished applications. If proceedings are held to be NOPI then no adverts should be prepared for the Patents Journal.

Action by Litigation

7.10

Using the OPTICS function REG ENT, the appropriate free text entry in relation to a reference under section 8, 12 and 37 is as follows:

Reference as to entitlement under Section xx. filed on xxxxxx

Where a request is made under section 10 or section 12(4), the free text entry should read:

Request by joint applicants for directions under Section xx filed on xxxxxxxx

Statement of grounds

What should the statement of grounds contain?

7.11

Follow procedures in paragraphs 1.11 to 1.12

Relief under section 8

7.12

For a reference made under section 8(1), the comptroller will determine the question and will make such orders as he thinks fit to give effect to the determination (See section 8(2)).

7.13

Where a question is referred to the comptroller under section 8(1)(a), section 8(3) provides, at the discretion of the comptroller, for the making of a new application by the claimant when the original application is no longer proceeding or no longer contains the matter to which the claimant is held to be entitled. The question of third party terms may need to be raised and considered.

7.14

Where a person refers a question under section 8(1)(b), the comptroller may make an order giving directions to any person in relation to transferring or granting any right in or under the application.

Relief under section 12

7.15

For a reference under section 12(1)(a) or 12(1)(b), the comptroller may make such orders as he thinks fit to give effect to the determination; however, the extent to which the comptroller is able to determine the question may be affected by a number of factors, for example, the particular foreign or international law under which the application has been made and the stage reached in the prosecution of the application.

Relief under section 37

7.16

For a reference under section 37(1)(a),(b) or (c), the comptroller may again determine the question and make such orders as he thinks fit. Examples of the type of relief available are mentioned in section 37(2).

7.17

Whilst a reference may be referred to the comptroller under section 37 at any time after the publication of the mention of its grant, the remedies available may be restricted if the reference is made more than two years after the mention of grant (section 37(5)). In such circumstances, although, for example, the claimant may claim a proprietary interest, the HO may not make an order that satisfies the relief sought.

Section 10, 12 (4)

7.18

For a request made under section 10 or 12(4), the statement should again set out fully the facts relied upon and also the directions sought. Under section 10 of the Act, the comptroller may give such directions as he thinks fit for enabling the application to proceed in the name of one or more of the parties alone or for regulating the manner in which the application should proceed or both as the case requires.

What happens if the statement does not comply?

7.19

Follow procedures at 1.13 to 1.18.

7.20

Where the reference has been made under section 8(1)(a) or 12(1)(a), the letter pointing out the defects in the statement should be copied for example to:

  • any person (other than the claimant) alleged in the reference to be entitled to be granted a patent for the invention
  • any person, not being a party to the reference, who is shown in the register as having a right in or under the patent
  • where the application for the patent has not been published, any person who is an applicant for the patent or has given notice to the comptroller of a relevant transaction, instrument or event
  • every person who has been identified in the patent application or a statement filed under section 13(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention. Note:- The claimant should not receive copies of letters sent to the named inventors for applications that are unpublished
  • any other persons who it appears are likely to have an interest in the case

7.21

Where the reference has been made under section 8(1)(b) or 12(1)(b), the letter should be copied for example to:

  • each proprietor who is not a party to the reference and who has not otherwise indicated his consent to the making the order sought
  • any person to whom it is alleged in the reference that any right in or under an application for a patent should be transferred or granted
  • any person not being a party to the reference, who is shown in the register as having a right in or under the patent application
  • where the application for the patent has not been published, any person (not being a party to the reference) who has given notice to the comptroller of a relevant transaction, instrument or event
  • every person who has been identified in the patent application or a statement filed under section 13(2)(a) as being, or being believed to be, the inventor or joint inventor of the invention. Note:- The claimant should not receive copies of letters sent to the named inventors for applications that are unpublished
  • any other persons who it appears are likely to have an interest in the case

7.22

Where the reference is made under section 37(1), the letter should be copied for example to:

  • a person who is shown on the register as having any right in or under the patent
  • a person who is alleged in the reference to be entitled to a right in or under the patent
  • any other person who it appears is likely to have an interest in the case

7.23

Where a request is made under section 10 or section 12(4), the letter should be copied to each joint applicant and anyone else likely to have an interest in the case.

7.24

A covering letter should be sent with the copy letter. This should point out to the parties concerned that they are not being invited to file a counter-statement until the issues raised with the claimant have been resolved.

Serving the Statement of Grounds

7.25

Follow procedures at 1.19 - 1.24.

Conversion of a Section 8 Reference into a Section 37 Reference

7.26

Occasionally a reference under section 8 will need to be converted to one under section 37 because the patent application in question has proceeded to grant. A letter should be sent to the claimant and copied to the other side (see Annex 1 Letter issued on grant of patent and Chapter 16). If entitlement proceedings are filed between the date on which the grant letter is issued and the date on which the notice of grant appears in the Journal, no action can be taken under either section 8 or 37. Instead, the proceedings should be treated as having been filed under section 37 on the date on which the notice of grant appears in the Journal.

PDAX:- Letter is created and imported using manual import (doc code is LETTER-IP)

Counter-Statement

7.27

Follow procedures at 1.25 to 1.26.

Management of Proceedings

7.28

Follow procedures at 1.28 to 1.40.

Evidence Rounds

7.29

Follow procedures at 1.41 to 1.53.

Decision

7.30

Follow procedures at 1.54 to 1.55.

Updating the Register (B3 action) - free text entries (below the line):

7.31

If the reference has been allowed:

  • use REG ENT free text and type in a register entry. Examples are below:

    In a decision of the comptroller dated (day/month/year) [insert name] was removed as a named proprietor of the patent.

In a decision of the comptroller dated (day/month/year), the comptroller ordered that [insert name and address] should be named as joint applicant/proprietor

7.32

If the reference is refused:

  • use REG ENT free text and type in a register entry as in the following example:

    In a decision of the comptroller dated (day/month/year), the reference under section XX filed on (day/month/year), was refused.

Updating the Register (B3 action) - adding proprietor’s details (above the line):

7.33

  • check if the proprietor you wish to add has an ADP number - use OPTICS function SEA NAM
  • if no ADP number exists, contact Ex Parte Team 1 who will arrange for one to be created. The person’s/company’s full name and address need to be supplied
  • use OPTICS function CHA ROL. . Scroll through the CHA ROL 1 screens inserting Y at the bottom of each page
  • on screen CHA ROL 2, enter in Role Code 1, the start date (the date of the decision) and the ADP number of the person/company you are adding. When this is confirmed, the name and address details should appear on screen. Once this is confirmed as correct, the update is complete.
  • to check this, go back into the CHA ROL 1 screen. The added proprietor details should also appear on the DIS FUL print

Updating the Register (B3 action) - removing proprietor’s details (above the line):

7.34

  • use OPTICS function CHA ROL. Rather than removing details from the register, the action taken will close them down. On screen CHA ROL 1, insert end date. This should be the date of the Hearing/Office decision and should be the same date as referred to in the free text entry initially carried out

    Note: The screen on which the free text register entry is typed provides an option to move directly to the CHA ROL screens. Simply change the Roles to Record to Y. From the following pages, select the appropriate options.

Registration of assignmnets within entitlement proceedings

7.35

Where entitlement proceedings are pending before the comptroller, a request to register an assignment should be referred to a HO. Unless special circumstances apply, the HO will direct the B2 to contact the claimant to determine if he is content with the registration. If the claimant is not content, the registration should be stayed until the proceedings have been settled. The assignment request will be recorded on the register.

PDAX:-Minute is created Create and send message to HO. Message is PSM Letter created and imported (doc code is LETTER-IP).

Withdrawal/Termination of GB patent applications before publication

Follow procedures in chapter 16, (16.35 to 16.37).