Ownership of inventions – patent applicant, patent proprietor and inventor

Home / Ownership of inventions – patent applicant, patent proprietor and inventor
What is the difference between a patent applicant, a patent proprietor, and an inventor?
Who owns the rights in a patent or a patent application, or an invention?

Patent Applicant

The applicant is the person who applies for a patent i.e. files a request for the grant of a patent. Anybody can apply for a patent, but that does not necessarily meant that they are the true owner of the invention or the patent rights. 

Both natural persons (human individuals) and legal persons such as companies, universities, limited liability partnerships etc, can apply for patents.

Patent Proprietor

The proprietor of the patent is the person to whom the patent is granted. The patent for an invention may be granted -

  • primarily to the inventor or joint inventors;
  • in preference to the inventor or joint inventor, anyone who at the time the invention was made, was entitled to the whole of the property of the invention; or
  • a successor in title to either the inventor(s) or any other person who was entitled to the whole of the property in the invention; and
  • nobody else.

Where an inventor is an employee, ownership of an invention as between the inventor and the employee is determined by Section 39 of the UK Patents Act. According to Section 39, an invention made by an inventor who is an employee belongs to the employer if the invention:

(a)    was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b)    the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking.

Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.
The term “special obligation to further the interests of the employer’s undertaking” includes inventions made by directors of a company, as company directors have a fiduciary duty towards their company to further the interests of the company.
However, where an employee-inventor relinquishes their entitlement to an invention they have made by virtue of their employment, they may be entitled to compensation under Section 40 of the UK Patents Act provided:

(a)    the employee has made an invention belonging to the employer for which a patent has been granted,

(b)    having regard among other things to the size and nature of the employer’s undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer, and

(c)    by reason of those facts it is just that the employee should be awarded compensation to be paid by the employer.

To be entitled to compensation, a patent must be granted. Simply filing a patent application is not enough to entitle the inventor to compensation. Additionally, the patent or the invention must be of outstanding benefit to the employer, having regard to the size and nature of the employer’s undertaking. This is a relative test, and it is not enough that the patent or the invention generates significant revenue for the employer – the quantum of the revenue or other benefit must be of outstanding benefit having regard to the size and nature of the employer’s undertaking. This means that for the same invention, and all other things being equal, an inventor working for a company having a very large revenue may find it more difficult to establish a right to compensation than an inventor working for a smaller company, where the benefit of the invention makes up a larger percentage of the revenue of the company. 

Inventor

The inventor is the actual deviser of the invention, and where there are two or more devisers, they are joint inventors. The inventor must be a natural person. There have been cases where it was claimed that a computer made an invention, and it was determined that a computer cannot make an invention, it must be a human individual (natural person). Similarly, a legal person such as a limited company which is not a natural person cannot be an inventor. 
Each inventor has:  

  • the right to be named as an inventor of the published patent application,
  • the right to be named as an inventor on the granted patent.

For more information please contact one of our patent attorneys or patent representatives

Kate.Hilton-Balfe@franksco.com
manchester@franksco.com