According to the Intellectual Property Office at least 30 disputes are referred to its tribunals every year over who should own or be entitled to apply for a British or foreign patent or be named as an inventor (see the table on page 50 of the IPO;s Facts and figures for 2013 and 2014 calendar years). Disputes over ownership are known as entitlement disputes and disputes who should be named as inventors as inventorship disputes. Often entitlement and inventorship disputes arise between the same parties and are resolved in the same proceedings.
S.7 (3) of the Patents Act 1977 defines an "inventor" as "the actual deviser of the invention." If more than one person devised the invention they are each "joint inventors." The reason why it is important to identify the inventor is that the inventor or joint inventor is the person or persons primarily entitled to apply for a patent for the invention under s.7 (2) (a). The only person entitled to apply for a patent in preference to the inventor or joint inventors is the inventor's employer if he, she or they devised the invention in the course of their duties or a third party such as a product design consultancy's client if he or she agreed with the consultancy that he or she rather than the inventor or inventor's employer should be entitled to apply for patents for any inventions that might be devised.
The Comptroller's Jurisdiction
The head of the Intellectual Property Office (who is referred to as "the Comptroller-General of Patents, Designs and Trade Marks" or simply "comptroller" in s,130 (1) of the Patents Act) has power under s.8 to decide who is entitled to apply for a British patent at any time before the patent is granted. The comptroller also has power under s.12 to decide who is entitled to apply for a foreign patent at any time before grant. If a UK patent has been granted, the comptroller has power under s.37 to determine who should be entitled to the patent. Finally, the comptroller may decide who may be named as an inventor under s.13 of the Act. The comptroller no longer exercises those powers personally. Instead they are exercised on the comptroller's behalf by officials known as "hearing officers" who conduct proceedings in accordance with the Patents Rules 2007 and practices that have been codified into a series of Tribunal Practice Notices.
Proceedings before Hearing Officers
Proceedings before hearing officers are intended to be much less formal and expensive than proceedings before judges but they follow similar lines. Their decisions have to be based on the law and evidence which means that each side has the right to present evidence and test that of its opponent and to submit arguments to the hearing officer. If the parties agree the hearing officer may decide the case on the documents without a hearing. If one or more of the parties request a hearing it can take place at the Intellectual Property Office's premises in London or Newport or at some other centre around the country, In the last 5 years I have represented parties to entitlement disputes at Concept House in Newport, Manchester Immigration and Asylum Chamber, Leeds Magistrates Court and the Radisson Blu Hotel in Glasgow.
The practice and procedure are made as easy to follow as possible to enable parties to represent themselves. They can also appear by counsel (barristers or advocates in Scotland), solicitors or their patent attorneys. Parties who instruct lawyers or patent attorneys can claim a contribution to their fees from the other side if they are successful but that is never more than a modest proportion of their costs unless the other side has behaved particularly unreasonably.
As proceedings before hearing officers usually take at least a year to resolve and cost many thousands of pounds towards which the successful party can expect only a modest contribution it is obviously in the interests of all sides to resolve their dispute by agreement if they possibly can. Disputes arise or are protracted because the parties do not have access to all relevant information and documents. The first step is to put the complainant's case to the other side as cogently as possible in a letter before claim. The other side should identify the parts of the case that it accepts and those that it does not. At the very least that should narrow the scope of the dispute and save time and costs.
As often as not such exchange of correspondence is enough to settle the dispute either because one side accepts the case of the other or because the parties begin to negotiate. Usually the parties can conduct their negotiations without any outside help but occasionally they need a facilitator. Facilitated negotiation is another name for mediation. Both the IPO and WIPO offer specialist mediation services as do we (see IP Mediation 22 May 2015 4 to 5 IP),
If the dispute cannot be resolved by negotiation or mediation a party may start proceedings by completing Form 2 and lodging it together with a remittance of £50 and a statement of grounds with the Intellectual Property Office. The statement of grounds is the equivalent of particulars of claim in litigation must include a concise statement of the facts and grounds on which the claimant relies and the remedy that he or she seeks verified by a statement of truth. Once the Office is satisfied that the application is in order it sends it to the other side who must respond with a counter-statement. That is the equivalent of a defence in litigation and must state:
(a) which of the allegations in the statement of grounds the defendant denies;
(b) which of the allegations he or she is unable to admit or deny, but which he or she requires the claimant to prove; and
(c) state which of the allegations he or she admits.
The counter-statement must also be verified by a statement of truth.
Often negotiations start or re-start at this stage but if they do not resolve the natter the claimant must file Patents Form 4 and pay £350. The Office usually gives directions for the filing of evidence which usually takes the form of a witness statement though it can still be a statutory declaration or affidavit. This the parties' opportunity to set out their case in full. The witness statements together with any documents that may be exhibited to them stand as a party's evidence in chief at the hearing.
Once the evidence is filed the Office fixes a date for the hearing. A few days before the hearing the parties exchange skeleton arguments and lodge copies of their skeletons with the hearing officer.
The hearing room is set up like a court room with the hearing officer on a dais and desks for the parties and their representatives.
Everyone present rises as the hearing officer enters the room. He or she is addressed as "sir" or "madam" throughout the hearing.
The party with the burden of proof opens the case to the tribunal. Usually he or she makes sure that the hearing officer and the other parties have the same bundles of documents and that the skeletons have been filed. He or she outlines the issues that are to be decided and how he or she intends to prove them. He or she then calls his or her witnesses. He or she refers them to their witness statements and establishes that they are happy for the statements to stand as their evidence in chief. He or she then sits down and allows the other side to test his or her evidence by cross-examination. Sometimes the witness raises an issue that requires supplemental questions in re-examination. After all that parties' witnesses have been called and examined the party tells the hearing officer that his or her case is complete.
The other side responds by calling his or her witnesses and offering them for cross-examination.
At the end of his or her case the defendant makes oral submissions on the evidence and the conclusions to be drawn to the judge. These are answered by the other parties.
There is usually several weeks delay between the hearing and the delivery of the hearing officer's decision.
Those who are dissatisfied with a hearing officer's decision can appeal to the Patents Court as of right.
The Intellectual Property Office publishes a useful booklet entitled Patents:Deciding Disputes which can be downloaded from its website. Readers can also call me on 020 7404 5252 or send me a message through my contact form.