In this series of three articles, we explore common and slightly less common questions regarding Applying for and Owning a British or European Patent.
Who can apply for a patent?
Under UK law, anyone can apply for a patent, whether by themselves or jointly with another person. In this context, a “person” is understood to be a natural person (i.e. an individual) or a corporate body, limited companies being the most common type of the latter. Other corporate bodies include foreign states, universities and limited liability partnerships (LLP) in the UK, to name a few.
An unincorporate partnership on the other hand, such as a limited partnership, is excluded from applying for a patent. In this case, one or more of the personally responsible partners would need to apply instead.
The UK Intellectual Property Office (UKIPO) will also accept as applicant some foreign corporate entities not recognised as such in the UK, an extensive but non-exhaustive list of which can be found here.
If not listed above, other foreign entities which are not considered corporate bodies in the UK but which, under the laws of a foreign state can own land and property in their own name may potentially be considered as applicants for a British patent. For instance, Hindu law in India recognises a Hindu idol as both a deity and a “juridical subject being capable in law of holding property”. Therefore, whilst this scenario remains to be tested, a Hindu idol may, in theory, apply for and own a British patent (a form of property). In practice, the representatives of the applicant would need to confirm to the UKIPO that the Hindu idol can own property.
Similar provisions exist under European law. A European patent application may be filed by “any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it” (Article 58 EPC).
What is a proper chain of entitlement and why is it important?
Applying for a patent is only the first hurdle in the lengthy process of obtaining patent protection. Whilst anyone can apply for a patent, a patent will only be granted to an entitled person or persons (assuming the invention is patentable). If a patent is granted (incorrectly) to a non-entitled person, the patent may be transferred to the entitled party and/or may be revoked. Hence it is important to have a clear trail or chain of entitlement in place, i.e. why and how the applicant is the entitled party, particularly if the applicant is not the inventor.
By default in the UK and in Europe, the entitled person is the inventor. The inventor is defined as the person who devises or creates the invention. An inventor can only be an individual, not a corporate entity nor an Artificial Intelligence (AI) as clarified under UK law (see section 3.05). The European Patent Office has adopted a similar stance, as shown in two recent European patent applications.
However, another party may be entitled to the patent in preference to the inventor if a law or agreement to that effect was in place at the time of invention. Such a party is the successor in title to the inventor. An agreement may include an assignment or a contract, for example. The right to a patent can be further transferred by the entitled party to yet another party, via similar means.
In summary, it is always advisable to ensure that there is a proper chain of entitlement in place, as the absence of one can result in a transfer or the revocation of a patent.
Does an employer automatically own the right to a patent for an invention created by an employee?
An example of a law in the previous paragraph pertains to employer-employee cases.
Under UK law, the employer is entitled to the right to a patent if:
1/ the employee made the invention during the course of their normal duties or specially assigned duties, or if the employee has a special obligation to further the interests of the company (such as by being a director of the company), and
2/ it could be expected that an invention may arise from carrying out these duties.
If any of these conditions is not fulfilled, the right belongs to the employee instead, unless there is any agreement to the contrary.
For example, a researcher employed by a university is expected to do research as part of her normal duties. It can be expected that an invention may arise from such research. In this case, the invention and the right to a patent protecting the invention would likely belong to her employer.
On the other hand, the normal cleaning duties of a cleaner employed by the same institute would not be expected to give rise to an invention. As such, if the cleaner creates an invention, the right to the patent would vest with him, rather than the employer.
In essence, the employer typically owns the right to a patent in most cases, but it may be worth clarifying the ownership of any IP in a contract of employment.
What happens to a patent after the owner ceases to be?
In the case of a natural owner, the patent passes to their estate. Usually, the patent rights are transferred to a new owner, typically according to the deceased owner’s will if one was made, or according to the rules of intestacy in the absence of a will. This also applies to any patent applications. In this case, it is advisable to prepare a will so that the estate is administered according to the deceased person’s last wishes. As the value of IP is included in the estate for the purposes of calculating inheritance tax, it may also be worth consulting an Inheritance Lawyer specialised in IP law.
In the case of a corporate owner which goes into administration, an administrator is appointed. The administrator administers the assets which may involve attempting to sell the patent to cover any debts. If no new owner can be found, upon dissolution of the company, the patent will pass to the Crown. The same applies to patent applications. In this case, assigning the patent or patent application prior to entering administration may be worth considering to avoid losing the patent or application to another party or to the Crown.
This concludes Q&A about Applying for and Owning a Patent – Part 1. Please see Q&A about Applying for and Owning a Patent – Part 2 (coming soon) for further discussions relating to applying for and owning a patent, particularly cases where there are multiple owners. In the meantime, if you have any queries about patents, please do not hesitate to contact us.