Other Ip Rights Notes

UK: Average 2000 [cost of employing a Patent attorney]. Paper filing costs 280.

EU: Average 3000

Initial protection before the patent is granted [but after application]

Before the application:

• Filing the application generates a “priority date”. Infringement proceedings may be taken in respect of acts done after this date.

• Once a prototype is created – consider registering a trademark; UDR; RDR or use the law of secrecy.

• Early protection can be sought by inventor filing a description of the invention with the Patent Office stating that he has an intention to apply for a patent. [detailed specification, claim and abstract must be submitted within 12 months]

When ready, the application would proceed as normal but with the priority is granted from the initial date of filing [S.15 PA 1977]

• Must be paid yearly – otherwise the patent will lapse.

“a quantum leap over the existing technology”. It must show thinking which has not been seen before.

Would the invention have been imagined by some unimaginative person skilled in the art [i.e. someone knowledgeable but lacking in inventive spark]. Known as the “uninventive technician”.

See further criteria for this point in Windsurfing International Inc V Tabur Marine.

Does the invention add to the state of the art? [Sausage machine case]

Commercial success can be an indicator

S.1(2) and (3) 1977 Act. Includes;

• Computer software [but does it have technical effect i.e. practical application – maybe it can be patentable]

• Scientific theory / mathematical method

• Performing a mental act – e.g. business method / planning

• Anything contrary to public policy

S.39(1)

Employees =

• S.130(1) PA: employee = someone working under a contract of employment.

• Employee creates the invention – the patent belongs to the EMPLOYER where:

  • S.39(1): The invention is made in the course of the employee’s normal duties and it is reasonably expected that invention will be created [JOB description should emphasize that employee is expected to create inventions]

[Doctor case – Great Glasgow Health Authority – job was to treat patients not invent machines]

• S.39(2): The invention might be reasonably expected to result from his duties within the job description. Because of the particular responsibilities arising from his duties, employee had a SPECIAL OBLIGATION to further the interests of the employer’s undertaking.

• S.42: you cannot contract out of these provisions. A provision in the employment contract that future inventions made outside the course of employee’s duties are to vest in the employer would be ineffective [VOID]

• Compensation for employee inventors: S.40 – provided that outstanding benefit is received by employer AND it is just compensation that is awarded. [S.41 gives more guidance on this]