The applicant had not filed his statement of inventorship form the time allowed, although in he had indirectly identified the inventors and the Hearing Officer Mr Panchen held that s13(2)(a) was satisfied. However nothing at all had been said about how the applicants had any entitlement to apply. The argument had been that since the applicant company was obviously not the inventor, it must be deriving title under s7(2) (b) or (c) and that was a sufficient indication to satisfy s13(2)(b). The Hearing Officer at p124 ln10-20 noted the content of a Notice from the Official Journal at the time and added an observation about what was then Patent Office practice, saying:
‘That notice, under the heading ‘Statement of Inventorship and Right to the Grant of a Patent (Form 7/77)’, reads as follows:
‘Under the provisions of section 13(2) and rule 15(1), an applicant who is not the inventor is required to indicate, at paragraph III(ii) of form 7/77, the derivation of his right to be granted the patent.
The information given on completed forms 7/77 submitted to the Patent Office is sometimes inadequate, either because it is too vague (e.g. ‘by operation of law’ or ‘by due process of law’) or because it refers to an incomplete claim of title (e.g. ‘by virtue of assignment from A to B’, the applicant being C). In future, the Patent Office will raise objection to any statement which does not adequately indicate the derivation of right.’
I should add to this that, although not given as an example in the notice reproduced above, the Patent Office practice has been such as to regard statements of the form ‘by virtue of section 7(2)’ as also being inadequate.’
The Hearing Officer held that s13(2)(b) was not satisfied in the case before him because it was necessary at least to indicate which of the section 7(2) categories (b) or (c) the applicant falls under. Thus the applications were deemed withdrawn and so failed. Whitford J dismissed the appeal.
The Comptroller has to decide whether or not the statement complies with section 13(2). It is not the Comptroller’s function to examine statements of inventorship and entitlement filed by the applicant pursuant to section 13(2) and rule 10(4) of the Patents Rules 2007 to determine whether or not they are well-founded. Provided that the applicant complies with the requirements of ‘identifying the person or persons whom he believes to be the inventor or inventors’ and, where applicable, ‘indicating the derivation of his right . . to be granted the patent’, then the application must proceed.
Whitford J
[1987] RPC 120
Patents Act 1977 13(2)
England and Wales
Cited by:
Cited – Thaler v Comptroller General of Patents Trade Marks and Designs CA 21-Sep-2021
Inventor Must be a Person to apply for Patent
The case appears to be about artificial intelligence and whether AI-based machines can make patentable inventions – correct processing of application
Held: The appeal failed. On the face of the Form 7s he filed, Dr Thaler did not comply with . .
Lists of cited by and citing cases may be incomplete.
Updated: 22 September 2021; Ref: scu.668143