Sheel Khemka v Nana-Akoto Osei (Patent): IPO 19 Sep 2003

Burden of proof, Entitlement, Inventorship, Jurisdiction, Orders – One of the co-applicants for the PCT application (Mr Khemka) referred questions of inventorship and entitlement on forty applications derived from the PCT application. There was no domestic GB application. The hearing officer found that he did not have jurisdiction under sections 8 and 37 (section 9 did not therefore apply); did have jurisdiction under section 10; had no jurisdiction under section 12 over patents which had been granted at the time the reference was filed; and only had jurisdiction under section 13 in respect of the EP(UK) . On the evidence, he declined to issue a certificate under section 13, finding that neither co-applicant had discharged their onus to show that they were sole inventor. He also found that both were entitled to be co-owners, but ordered under section 12 that Mr Khemka should be sole owner of the EP(UK) patent and Dr Osei have a licence. He invited submissions on the form of the order. He declined to make a ruling under sections 10 and 12 for those applications other than the EP(UK) absent submission as to the status of the applications and the law of the respective countries.
Mr P Hayward
[2003] UKIntelP o28403, O/284/03
Patents Act 1977 8 9 10 12 13 37 82

Updated: 31 March 2021; Ref: scu.455708