Section 7: Right to apply for and obtain a patent
Sections (7.01 - 7.13) last updated: February 2008.
|Any person may make an application for a patent either alone or jointly with another|
The status of a properly-launched application (see 15.02-15.06) is not impugned if it subsequently transpires that the applicant has no right to the grant of a patent or that he only acquired the right after making the application.
The term “person” includes one or more individuals or a corporate body but not a firm, partnership or body which is unincorporate, although in such cases application may be made by individual partners jointly. In the case of a limited partnership, the application may be in the names of all personally responsible partners see also 7.05.
The following are regarded as corporate bodies:- British companies limited by guarantee;
- cooperative Societies (Home and Foreign)
- euratom and similar international organisations
- foreign states;
- limited liability partnerships (LLP) in the UK
- ministers and other Heads of government departments (home and foreign);
- trade associations (on evidence of incorporation);
See 32.06 with regard to the effect of re-registration as a p.l.c and conversion to LLP.
The following are examples of foreign companies regarded as corporate bodies by whom applications may be made:-
- Akciova spolecnost
- Aktiebolag, Aktiebolaget
- Aktiengesellschaft (A.G.)
- Aktieselskab, Aktieselskabet, Aktieselskapet
- Besloten Vennootschap met beperkte aansprakelijkheid (B.V)
- Eingetragene Genossenschaft
- Eingetragenen Verein
- Gesellschaft mit beschrankter Haftung (G.m.b.H)
- Kabushika Kaisha
- Kommanditgesellschaft auf Aktien
- Naamlooze Vennootschap (N.V.)
- Sociedad anonima
- Sociedad Limitada
- Societa Anonima
- Societa per Azioni (S.p.A.)
- Societe Anonyme
- Societe a responsibilite limitee
- Societe en commandite par actions
- Societe en commandite simple Societe en nom collectif
- Versicherungsverein auf Gegenseitigkeit
An application by a German or Austrian “Kommanditgesellschaft”, “offene Handelsgesellschaft” or a Swiss “Societe Commandite”, may be made in the names of the responsible partners. Following a decision by the Patents Appeal Tribunal (Schwarzkopf’s Application,  RPC 387) an application made in the names of one of these bodies is also allowed to proceed, but such a course is at the risk of the applicants should their representations thereafter be found to be false. Consideration will be given to other foreign firms if it is affirmed by the applicant or agent, that under the laws of the foreign state in question, such firms can acquire title to land and property in their own name, such title being wholly unaffected by changes in the personnel of the members. A Scottish partnership firm may apply in its own name, the partners’ names being given. Applications may also proceed in the name of a limited partnership organised under the laws of the American state of Arkansas, California, Connecticut, Delaware, Illinois, Louisiana, Michigan, Minnesota, Missouri, New York, Ohio, Pennsylvania , Tennessee, Texas or Wyoming. In Canada, limited partnerships may be incorporated either federally or provincially. In the latter case, the name of the province (e.g. Quebec, Ontario) should be given as the state or incorporation.
|A patent for an invention may be granted -
(a) primarily to the inventor or joint inventors;
(b)in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom;
(c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a)
or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person.
The right to grant of a patent belongs primarily to the inventor, but this may be overridden by any rule of law or any legally enforceable agreement existing at the time the invention was made. The commonest way in which this proviso would cause the rights to pass from the inventor is when the invention was made in the course of employment (see s.39). The right to the patent will also pass to another person if for example the inventor or a person who has acquired the right by operation of law assigns those rights, or dies or becomes bankrupt.
s.13(2) is also relevant
Any applicant who is not an inventor must file Form 7 identifying the inventor and indicating his own right to be granted a patent - see 13.08 to 13.16. If the period allowed for doing this has expired at the time the rights are assigned, the procedure described in 32.08-09 must be followed.
If an applicant dies the application may proceed in the name of his personal representative. Likewise if an inventor dies before an application is made the personal representative may act on his behalf. If the Office becomes aware of the death of an applicant before a patent is granted but the application has not been assigned to another party by the time it is in order for grant then, if a personal representative has been appointed, the patent should be granted in the name of the personal representative. If, however, a personal representative has not been appointed by the time the application is in order for grant, the patent should be granted in the name of the deceased applicant.
The term “personal representative” is interpreted in its ordinary meaning as “executor or administrator”, and is restricted to a representative appointed in the UK. Probate or Letters of Administration must be produced to confirm the standing of the personal representative. A person is not regarded as a personal representative merely by being an assignee or by holding a power of attorney, nor is an Official Receiver or trustee in bankruptcy. The personal representative may be a corporate body.
Where an applicant is less than eighteen years of age the application may proceed in his name. Alternatively, the application may be made by his parent or guardian.
Where an applicant is of unsound mind the application should nonetheless proceed in his name. Where there is no patent agent acting the application should be signed (see 14.04.20) by the person duly appointed to administer the applicants’ property.
|In this Act “inventor” in relation to an invention means the actual deviser of the invention and “joint inventor” shall be construed accordingly.|
s.130(1) is also relevant
This definition of “inventor” applies to all references in the 1977 Act. In Henry Brothers (Magherafelt) Ltd v The Ministry of Defence and the Northern Ireland Office  RPC 442 the Court of Appeal emphasised that a two-step approach was necessary to determine inventorship. One must first identify the inventive concept and then determine who devised that concept.
Identifying the inventive concept
The need to keep in mind the inventive concept was also highlighted in Stanelco Fibre Optics Ltd’s Applications  RPC 15, where Christopher Floyd QC, sitting as a Deputy Judge in the Patents Court, commented “It is clear that a mechanistic, element by element approach to inventorship will not produce a fair result. If A discloses a new idea to B whose only suggestion is to paint it pink, B should not be a joint inventor of a patent for A’s product painted pink. That is because the additional feature does not really create a new inventive concept at all. The feature is merely a claim limitation, adequate to overcome a bare novelty objection, but having no substantial bearing on the inventive concept. Patent agents will frequently suggest claim limitations, but doing so does not make them joint inventors. Some stripping of a claim of its verbiage, may be necessary to determine the inventive concept, and consequently the inventor.” This statement was approved by the Court of Appeal in Markem Corp v Zipher Ltd  RPC 31. In the case of joint inventorship, the question is therefore whether all parties are jointly responsible for devising the inventive concept.
The inventive concept may reside in more than an idea and may encompass the means of realisation of that idea (Minnesota Mining & Manufacturing Company v Birtles, Lovatt and Evode Ltd (BL O/237/00). Where the invention consists of a combination of individually known elements, the inventor is the person who in substance made the combination rather than one who merely contributed to it (Henry Brothers (Magherafelt) Ltd v The Ministry of Defence and the Northern Ireland Office  RPC 693; whilst the Court of Appeal disagreed with Jacob J on the facts of this case, it did not disagree with the principle). In Statoil ASA v University of Southampton (BL O/204/05), the hearing officer held that if the thrust of the disclosure is that the invention covers a broad area, it would be wrong to determine inventorship and entitlement solely by considering only a narrow subset of that area.
Determining who devised the inventive concept
A person is not the inventor merely because he contributed to a claim - his contribution has to be the formulation of the inventive concept (University of Southampton’s Applications  RPC 11). In this case, Laddie J also held that devising an invention and providing an enabling disclosure were two quite different things, and pointed out that it is possible to make a good invention but to lose one’s patent for failure to make an enabling disclosure. The requirement to include an enabling disclosure is concerned with teaching the public how the invention works, not with devising the invention in the first place. On the facts of this case, the Court of Appeal ( RPC 21) concluded that all that was needed to get a patent was disclosure of the idea for the invention (substituting electrostatic particles for magnetic particles in an insect trap); from this idea the skilled man could readily practice the invention without disclosure of a means of enablement. However, Jacob LJ held obiter dictum that: “In the context of entitlement to a patent a mere, non-enabling idea, is probably not enough to give the patent for it to solely the deviser. Those who contribute enough information by way of necessary enablement to make the idea patentable would count as ‘actual devisers’, having turned what was ‘airy-fairy’ into that which is practical … On the other hand those who contribute no more than essentially unnecessary detail cannot on any view count as ‘actual devisers’ as Laddie J rightly said, see his para. .”
Stanelco Fibre Optics Ltd’s Applications  RPC 15 demonstrated that more than a theoretical proposal is required to be an “actual deviser”. An antecedent worker responsible for an initial prompt without which the invention might never have been made but with no idea as to whether it could actually be done or how it might be done could never be an inventor. Christopher Floyd QC (sitting as Deputy Judge) continued in this case: “But where the antecedent worker comes up with and communicates an idea consisting of all of the elements in the claim, even though it is just an idea at that stage, it seems to me that he or she will normally, at the very least, be an inventor of the claim. What US patent law calls ‘reduction to practice’ is not, it seems to me, a necessary component of a valid claim to any entitlement.”
In Statoil ASA v University of Southampton (BL O/204/05), the hearing officer held that contributing information that cannot really be said to have an owner - and that might include the knowledge of an expert - may not be sufficient to justify a claim to entitlement.
|Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.|
s.72(2), s.37(4) is also relevant
Thus an applicant who has stated that he is the inventor or that he derives a right from the inventor (see 13.08 to 13.10) is presumed prima facie to be entitled to be granted a patent. The Office makes no attempt to question these assertions. If any person wishes to dispute them and to claim that the patent should be granted to them, either instead of or as well as, the present applicant they must take action under s.8 or 37 as appropriate. In University of Southampton’s Applications  RPC 11, the Patents Court held that in order to succeed in being added to an application the claimants had to prove on the balance of probabilities that they had made a relevant contribution to the inventive concept. But the requirement to remove the defendants as inventors was greater, as the claimants also had to overcome the presumption in s.7(4) and prove not only that they devised the inventive concept or concepts but that the named inventors contributed nothing of substance to any of them.