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13.01

This section deals with the right of an inventor to be mentioned in an application or a patent, the obligation on the applicant to identify the inventor(s) and the right of any person to object to a mentioned inventor. Relevant procedures are prescribed in r.10 and part 7 of the Patents Rules 2007. The inventor may also apply to waive their right to have their name and address mentioned following the procedures prescribed by r.11.

13.02

s.125(1) is also relevant

Since the invention to which a patent or an application relates is determined by the claims, which may differ as between application and patent, it is possible that a person may be entitled to be named as an inventor in the application but not in the patent. The meaning of inventor is discussed in paragraph 7.12

13.03

r.11(1), r.11(2), r.11(3), r.26(2), r.44(2), r.51(3)(e) is also relevant

The front pages published with the specification of the application and any patent granted normally each contain separate lists of all the applicants and all the inventors even when these lists are identical. However, before the preparations for publication have been completed, anyone identified as an inventor may apply in writing to the comptroller to waive their right to have their name and address mentioned as those of the inventor, or to waive this right in respect of their address only. If the application is to withhold both the inventors name and address, satisfactory reasons must be given, but this is not required if the application is to withhold just the address. Where an application to withhold an inventors details has been accepted, they will not appear in the patent application as published. The comptroller will also omit the details from the Register, and unless otherwise directed, no document bearing them shall be open to public inspection.

13.03.1

r.11(4), r.11(5) is also relevant

Where an application to waive an inventors right to be mentioned has been accepted, the inventor can later apply to the comptroller to end the waiver. An agreement by the comptroller to end such a waiver may be subject to any conditions they may direct.

13.04

PR part 7 is also relevant

Under s.13(1) and r.10(2) any person who alleges that they or another person ought to have been mentioned as the or an inventor in a granted patent or a published application may apply on Form 2 to have the matter rectified. There is no time limit on when an application may be made. Form 2 should be accompanied by a copy thereof and by a statement of grounds in duplicate; this starts proceedings before the comptroller, the procedure for which is discussed at 123.05 123.05.13 . There is no need to file an additional Form 2 and statement to deal with inventorship when it has been put in issue by a reference in entitlement proceedings under section 8 or 37.

13.04.1

s.78(2) is also relevant

In the case of an application for a European patent (UK) an incorrect designation of an inventor may also be rectified before the EPO under r.21 EPC. (An application under s.13(1) may be made once the grant of a patent has been mentioned in the European Patent Bulletin (see also 13.18)).

[The front page of the specification will be republished together with an amendment sheet giving details of the changes indicating that the addition is only in respect of EP(UK) (see file of EP 0370590). Publication Section will send a copy of the republished specification to the applicant. A copy should also be sent to the EPO for information suggesting that they might like to associate it with the B publication (again see EP 0370590). ]

13.05

r.77 is also relevant

Provided that they have not given written consent to the application, the comptroller will send a copy of Form 2 and the statement to the or each proprietor of, or applicant for, the patent, to each person identified as an inventor either in the application or on Form 7 (see 13.08) and to any other person whose interests the comptroller considers may be affected by the application under s.13. Copies are not of course sent to the person making the application. Any recipient of such a copy who wishes to oppose the application should file a counter-statement in the proceedings.

13.06

[deleted]

13.07

r.10(1) is also relevant

If the comptroller is satisfied that a person should have been mentioned in the published application or patent an addendum or erratum to this effect should be issued. The Register should be altered but not Form 7.

13.08

r.10(4) is also relevant

The request for grant of a patent (Form 1) requires an indication as to whether the applicant(s) is/are the sole/joint inventor(s). If the or any applicant is not an inventor or if any inventor is not an applicant it will be necessary to file Form 7 identifying the inventor(s) and indicating how any applicant who is not an inventor derives the right to be granted a patent.

[The surname or family name of the inventor(s) should be underlined in black ink. Where this has not been done the underlining can be effected in the Office. However, caution must be exercised in the case of overseas inventor since the surname or family name may not be obvious. Guidance from the applicant/agent should be sought in such cases. ]

13.09

While it is not necessary to give details of the derivation of right, sufficient information particular to the application should be given. For example it is acceptable to indicate that the applicant is the employer of the inventor, or has rights by virtue of an assignment from the inventor to the applicant, or that the applicant is the personal representative of a deceased inventor. Alternatively, at the very least an indication should be given of which of the s.7(2) categories the applicant falls under (Nippon Piston Ring Co Ltds Application [1987] RPC 120). Thus, vague statements to the effect that the applicant acquires their rights by operation of law, or by virtue of s.7(2) are not sufficient, nor is an incomplete chain of title, such as by assignment from A to B, the applicant being C. However By assignment on its own is, in the context of Form 7, sufficient to indicate an assignment directly from the inventor to the applicant.

In Thaler v Comptroller-General of Patents [2021] EWCA Civ 1374 Arnold LJ, relying on Nippon, reiterated that the requirement imposed by section 13(2)(b) cannot be ignored and that, if it is not complied with, then an application must be deemed withdrawn. The COA noted that it was not for the Comptroller to investigate in detail the correctness or factual accuracy of the information provided on F7s filed before them, rather such information had to be taken at face value. In this case however, the applicant had deliberately identified a non-person as the inventor and brought this to the attention of the Comptroller the Comptroller taking this at face value (and in the absence of any explanation of a satisfactory derivation of right) was correct to treat the applications as having been withdrawn.

[Where the Formalities Examiner discovers a defective description of derivation of right, the matter must be immediately discussed with the Formalities Manager. If the Formalities Manager confirms the objection, and provided at least three weeks remain of the prescribed sixteen-month period for submitting the Form 7, the agent/applicant must be telephoned and advised to correct the defect within two weeks by submission either of a fresh Form 7 or of a written request for correction. (A telephone conversation report should issue in the usual way, with a copy placed on file). If, however, there is less than three weeks left of the sixteen-month period, or the agent refuses to correct the defect, or the Form 7 or written request for correction is submitted after expiry of the sixteen-month period, the Formalities Manager must refer the matter immediately to the Divisional he

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