Following on from Part 1, we explore further questions relating to applying for and owning a patent, particularly cases where there are multiple owners.
As a patent is a form of property, how does it work to have two or more joint owners?
In the UK, joint owners are considered to have an equal, undivided share of the patent, unless there is an agreement to the contrary, for instance specifying different share percentages.
Each joint owner is free to use the patent and work the patented invention without requiring the consent of other co-owners and without infringing the patent. If a joint owner passes away, their share passes to their estate rather than to the other joint owners.
The above also applies to joint applicants (i.e. before grant of the patent).
All the above dealt with using the patent owned by a joint owners. But what about dealing with the patent itself?
A patent can be amended after or before grant, surrendered or revoked. As a form of property, a patent or patent application can also be licenced, assigned, or mortgaged. However, to do any of the above actions, the consent of all joint owners must be obtained, unless there is an agreement specifying otherwise. Such a situation might arise, for example, where one joint applicant is a funding body who is not interested in being actively involved in the prosecution of the patent application, but wants to retain a share of the patent.
Renewals are an exception to the rule that consent from all joint owner is required. A renewal fee is due every year after grant on the filing anniversary in order for the British patent to be kept in force. Any party can pay the renewal fee, even a third party, without the consent of the patentee(s) or other joint owners.
What can you do if you cannot agree with another co-proprietor on how to proceed with a patent application?
Requiring the consent of all joint owners can be an issue if joint owners cannot agree. For instance, one joint owner may want to continue prosecution whilst another joint owner wants to give up on the process entirely. Alternatively, all joint owners may want to continue proceedings but have opposing views on the direction of the patent application.
In such cases, UK law specifies that any of the parties can refer the dispute to the UK Intellectual Property Office (UKIPO). The UKIPO can take any decision it deems appropriate. For example, the UKIPO can transfer the application from one party to another, such that the application proceeds in the name of one or more of the parties.
If one of the joint owners develops an improvement to the patented invention, do all joint owners of the original patent automatically become joint owners of a patent to the original patented invention with the improvement?
No. If, upon working the patented invention, a joint owner develops an improvement which is patentable in its own right (i.e. novel, inventive and non-excluded subject-matter), only the joint owner is entitled to a granted patent protecting the improvement (or the original invention incorporating the improvement). The right to this new invention is owned solely by the joint owner who developed it. The other joint owners of the original patent are not entitled to the new invention, even though it was developed from the original patented invention.
The above also applies to joint applicants of a patent application (i.e. before grant of the patent).
This concludes Q&A about Applying for and Owning a Patent – Part 2. Please see Q&A about Filing Strategies – Part 3 (coming soon) for further discussions relating to what, in anything, can be done if someone files a patent application to your invention. In the meantime, if you have any queries about patents, please do not hesitate to contact us.