Intellectual Property and Patent & Trade Mark Protection

• About this group
• Forums

• Home
• Groups
• Intellectual Property and Patent & ...
• Forums
• Patents
• Entitlement Proceedings: When should the Chief Executive UK-IPO refer an Application to the Court

• 
  Jane Lambert    Group moderator

  The company name is only visible to registered members.

  Entitlement Proceedings: When should the Chief Executive UK-IPO refer an Application to the Court

  A point that may affect patent practitioners outside the UK whose clients seek patent protection in the UK is whether an application for entitlement to a share of a patent application that has been made under the law of any country other than the United Kingdom should be determined by a tribunal appointed by the "Comptroller" or chief executive of the UK Intellectual Property Office or whether it would be referred to the Patents Court.
  
  Typical circumstances where this sort of case might arise is where several folk work together on an invention so that each feels that he or she can claim to be an inventor and one or more but not all the members of the team apply for a patent for the invention leaving one of their colleagues out in the cold. This sort of case arises quite often (indeed I have got one instructions to do such a case in chambers as I write these words and I hope my instructing patent attorney is not reading this note because she may well think that I should have been drafting her statement of case and evidence ;-/)
  
  Our Patents Act 1977 provides the following remedies for the inventor who has been left out in the cold:
  - where an application has been made for a UK patent but the patent has not yet been granted, s.8 of that Act permits the aggrieved inventor to apply to the tribunal for an order that any patent that may be granted shall be granted to the aggrieved inventor outright in place of the others or to that inventor and the other members of the team;
  - where an application has been made for patent protection in the UK on the back of an application made in some other country (such as the Federal Republic of Germany or the Swiss Confederation for example ;-/) s.12 permits the aggrieved inventor to apply to the tribunal for an order that any British patent that may be granted shall be granted to the aggrieved inventor outright in place of the others or to that inventor and the other members of the team; and
  - where a UK patent has been granted, s.37 permits the aggrieved inventor to apply to the tribunal for an order that the patent be granted to him or her outright in place of the others or to that inventor and the other members of the team.
  
  Each of those provisions permits the tribunal to decline to deal with the application and refer it to the Patents Court if he or she so wishes. That has important costs consequences because the costs recoverable in the UK-IPO tribunals is fixed to a scale (as I believe to be the case in Germany and some other countries) and rarely exceeds a few thousand pounds wheres costs in the High Court can be many hundreds of thousands of pounds (which looks even worse in euros or and very much worse in dollars - particularly Zimbabwean dollars at current rates of exchange).
  
  In Luxim Corp v Ceravision Ltd [2007] EWHC 1624 (http://www.bailii.org/ew/cases/EWHC/Ch/2007/1624.html) an application was made by a company that claimed a number of intellectual property rights under foreign law. The other party asked the tribunal to refer the case to the court and the tribunal refused. The dissatisfied party appealed to the High Court.
  
  The case explored the tribunal's discretion under s.8, s.12 and s.37 and set down some general guidelines. On the particular facts of the case, the tribunal had snot exercised its discretion correctly and the decision was annulled. The claim to entitlement must now proceed - if it is to proceed at all - in the Patents Court.
  
  • 11 Jul 2007, 3:50 pm
  Jane Lambert wrote: > A point that may affect patent practitioners outside the UK whose > clients seek patent protection in the UK is whether an application > for entitlement to a share of a patent application that has been made > under the law of any country other than the United Kingdom should be > determined by a tribunal appointed by the "Comptroller" or chief > executive of the UK Intellectual Property Office or whether it would > be referred to the Patents Court. > > Typical circumstances where this sort of case might arise is where > several folk work together on an invention so that each feels that he > or she can claim to be an inventor and one or more but not all the > members of the team apply for a patent for the invention leaving one > of their colleagues out in the cold. This sort of case arises quite > often (indeed I have got one instructions to do such a case in > chambers as I write these words and I hope my instructing patent > attorney is not reading this note because she may well think that I > should have been drafting her statement of case and evidence ;-/) > > Our Patents Act 1977 provides the following remedies for the inventor > who has been left out in the cold: > - where an application has been made for a UK patent but the > patent has not yet been granted, s.8 of that Act permits the > aggrieved inventor to apply to the tribunal for an order that any > patent that may be granted shall be granted to the aggrieved inventor > outright in place of the others or to that inventor and the other > members of the team; > - where an application has been made for patent protection in the UK > on the back of an application made in some other country (such as the > Federal Republic of Germany or the Swiss Confederation for example > ;-/) s.12 permits the aggrieved inventor to apply to the tribunal for > an order that any British patent that may be granted shall be granted > to the aggrieved inventor outright in place of the others or to that > inventor and the other members of the team; and > - where a UK patent has been granted, s.37 permits the aggrieved > inventor to apply to the tribunal for an order that the patent be > granted to him or her outright in place of the others or to that > inventor and the other members of the team. > > Each of those provisions permits the tribunal to decline to deal with > the application and refer it to the Patents Court if he or she so > wishes. That has important costs consequences because the costs > recoverable in the UK-IPO tribunals is fixed to a scale (as I believe > to be the case in Germany and some other countries) and rarely > exceeds a few thousand pounds wheres costs in the High Court can be > many hundreds of thousands of pounds (which looks even worse in euros > or and very much worse in dollars - particularly Zimbabwean dollars > at current rates of exchange). > > In Luxim Corp v Ceravision Ltd [2007] EWHC 1624 > (http://www.bailii.org/ew/cases/EWHC/Ch/2007/1624.html) an > application was made by a company that claimed a number of > intellectual property rights under foreign law. The other party > asked the tribunal to refer the case to the court and the tribunal > refused. The dissatisfied party appealed to the High Court. > > The case explored the tribunal's discretion under s.8, s.12 and s.37 > and set down some general guidelines. On the particular facts of the > case, the tribunal had snot exercised its discretion correctly and > the decision was annulled. The claim to entitlement must now proceed > - if it is to proceed at all - in the Patents Court.