Section 13: Mention of inventor
Sections (13.01 - 13.19) last updated: April 2024.
13.01
This section deals with the right of an inventor to be mentioned in an application or a patent, the obligation on the applicant to identify the inventor(s) and the right of any person to object to a mentioned inventor. Relevant procedures are prescribed in r.10 and part 7 of the Patents Rules 2007. The inventor may also apply to waive their right to have their name and address mentioned following the procedures prescribed by r.11.
13.02
s.125(1) is also relevant
Since the invention to which a patent or an application relates is determined by the claims, which may differ as between application and patent, it is possible that a person may be entitled to be named as an inventor in the application but not in the patent. The meaning of “inventor” is discussed in paragraph 7.12
| Section 13(1) |
| The inventor or joint inventors of an invention shall have a right to be mentioned as such in any patent granted for the invention and shall also have a right to be so mentioned if possible in any published application for a patent for the invention and, if not so mentioned, a right to be so mentioned in accordance with rules in a prescribed document. |
13.03
r.11(1), r.11(2), r.11(3), r.26(2), r.44(2), r.51(3)(e) is also relevant
The front pages published with the specification of the application and any patent granted normally each contain separate lists of all the applicants and all the inventors even when these lists are identical. However, before the preparations for publication have been completed, anyone identified as an inventor may apply in writing to the comptroller to waive their right to have their name and address mentioned as those of the inventor, or to waive this right in respect of their address only. If the application is to withhold both the inventor’s name and address, satisfactory reasons must be given, but this is not required if the application is to withhold just the address. Where an application to withhold an inventor’s details has been accepted, they will not appear in the patent application as published. The comptroller will also omit the details from the Register, and unless otherwise directed, no document bearing them shall be open to public inspection.
13.03.1
r.11(4), r.11(5) is also relevant
Where an application to waive an inventor’s right to be mentioned has been accepted, the inventor can later apply to the comptroller to end the waiver. An agreement by the comptroller to end such a waiver may be subject to any conditions they may direct.
13.04
PR part 7 is also relevant
Under s.13(1) and r.10(2) any person who alleges that they or another person ought to have been mentioned as the or an inventor in a granted patent or a published application may apply on Form 2 to have the matter rectified. There is no time limit on when an application may be made. Form 2 should be accompanied by a copy thereof and by a statement of grounds in duplicate; this starts proceedings before the comptroller, the procedure for which is discussed at 123.05 – 123.05.13 . There is no need to file an additional Form 2 and statement to deal with inventorship when it has been put in issue by a reference in entitlement proceedings under section 8 or 37.
13.04.1
s.78(2) is also relevant
In the case of an application for a European patent (UK) an incorrect designation of an inventor may also be rectified before the EPO under r.21 EPC. (An application under s.13(1) may be made once the grant of a patent has been mentioned in the European Patent Bulletin (see also 13.18)).
[The front page of the specification will be republished together with an amendment sheet giving details of the changes indicating that the addition is only in respect of EP(UK) (see file of EP 0370590). Publication Section will send a copy of the republished specification to the applicant. A copy should also be sent to the EPO for information suggesting that they might like to associate it with the B publication (again see EP 0370590). ]
13.05
r.77 is also relevant
Provided that they have not given written consent to the application, the comptroller will send a copy of Form 2 and the statement to the or each proprietor of, or applicant for, the patent, to each person identified as an inventor either in the application or on Form 7 (see 13.08) and to any other person whose interests the comptroller considers may be affected by the application under s.13. Copies are not of course sent to the person making the application. Any recipient of such a copy who wishes to oppose the application should file a counter-statement in the proceedings.
13.06
[deleted]
13.07
r.10(1) is also relevant
If the comptroller is satisfied that a person should have been mentioned in the published application or patent an addendum or erratum to this effect should be issued. The Register should be altered but not Form 7.
| Section 13(2) |
| Unless he has already given the Patent Office the information hereinafter mentioned, an applicant for a patent shall within the prescribed period file with the Patent Office a statement - (a) identifying the person or persons whom he believes to be the inventor or inventors; and (b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent; and, if he fails to do so, the application shall be taken to be withdrawn. |
13.08
r.10(4) is also relevant
The request for grant of a patent (Form 1) requires an indication as to whether the applicant(s) is/are the sole/joint inventor(s). If the or any applicant is not an inventor or if any inventor is not an applicant it will be necessary to file Form 7 identifying the inventor(s) and indicating how any applicant who is not an inventor derives the right to be granted a patent.
[The surname or family name of the inventor(s) should be underlined in black ink. Where this has not been done the underlining can be effected in the Office. However, caution must be exercised in the case of overseas inventor since the surname or family name may not be obvious. Guidance from the applicant/agent should be sought in such cases. ]
13.09
While it is not necessary to give details of the derivation of right, sufficient information particular to the application should be given. For example it is acceptable to indicate that the applicant is the employer of the inventor, or has rights by virtue of an assignment from the inventor to the applicant, or that the applicant is the personal representative of a deceased inventor. Alternatively, at the very least an indication should be given of which of the s.7(2) categories the applicant falls under (Nippon Piston Ring Co Ltd’s Application [1987] RPC 120). Thus, vague statements to the effect that the applicant acquires their rights “by operation of law”, or “by virtue of s.7(2)” are not sufficient, nor is an incomplete chain of title, such as “by assignment from A to B”, the applicant being C. However “By assignment” on its own is, in the context of Form 7, sufficient to indicate an assignment directly from the inventor to the applicant.
In Thaler v Comptroller-General of Patents [2021] EWCA Civ 1374 Arnold LJ, relying on Nippon, reiterated that the requirement imposed by section 13(2)(b) cannot be ignored and that, if it is not complied with, then an application must be deemed withdrawn. The COA noted that it was not for the Comptroller to investigate in detail the correctness or factual accuracy of the information provided on F7’s filed before them, rather such information had to be taken at face value.
This position was emphasised in the Supreme Court decision in Thaler v Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49 at paragraph 96. In this case the applicant had deliberately identified a non-person as the inventor and brought this to the attention of the Comptroller. The question was therefore one of law; did this statement, of itself, provide a proper basis for accepting the application. The Comptroller was correct to take the statement at face value and in the absence of any explanation of a satisfactory derivation of right was correct to treat the applications as having been withdrawn.
[Where the Formalities Examiner discovers a defective description of derivation of right, the matter must be immediately discussed with the Formalities Manager. If the Formalities Manager confirms the objection, and provided at least three weeks remain of the prescribed sixteen-month period for submitting the Form 7, the agent/applicant must be telephoned and advised to correct the defect within two weeks by submission either of a fresh Form 7 or of a written request for correction. (A telephone conversation report should issue in the usual way, with a copy placed on file). If, however, there is less than three weeks left of the sixteen-month period, or the agent refuses to correct the defect, or the Form 7 or written request for correction is submitted after expiry of the sixteen-month period, the Formalities Manager must refer the matter immediately to the Divisional head of admin for further action. ]
13.10
s.7(4) is also relevant
An applicant is not required to substantiate a statement of derivation of right to the invention. In the absence of anything being established to the contrary they are assumed prima facie to be entitled to be granted a patent see 7.13.
13.10.1
In Thaler v Comptroller-General of Patents [2021] EWCA Civ 1374 the court held that for the purposes of sections 7 and 13 of the Patents Act 1977, an inventor must be a natural person.
This position was emphasised by the Supreme Court when upholding the earlier decision in Thaler v Comptroller-General of Patents, Designs and Trademarks [2023] UKSC 49.
In this case, the applicant had designated an artificial intelligence (AI) machine, which he called DABUS, as inventor. The court found that because DABUS was not a natural person it could not be regarded as an inventor, and furthermore could not own intellectual property or by extension transfer ownership of that intellectual property to the applicant. As a result, derivation of right through ownership of DABUS did not meet the requirements of section 7(2) and the applicant was not entitled to apply for the patents in question (see also 7.11.1).
13.11
r.10(3), r.21 is also relevant
The period prescribed for filing Form 7 is sixteen months from the declared priority date or, where there is none, from the filing date. This period may be extended in accordance with r.108(2) or (3) and (4) to (7), see 123.34-41 if for example all the required information has not been supplied in time. A longer time limit may however apply in the case of a divisional application (see 15.26) or other application claiming an earlier date of filing. Different periods also apply in converted European applications (see 81.11) and international applications (see 89A.12 and 89A.18); see also 13.12).
13.12
s.81(3)(c) and s.89B(1)(c) is also relevant
In the case of a converted European application the requirements of s.13(2) are regarded as being met, and hence Form 7 is not needed, if the provisions of the EPC requiring the applicant to give the full name and address of each inventor and an indication of the derivation of title to the invention have been met.
13.12.1
s.13(2) and s.89B(1)(c) is also relevant
In the case of an international application which enters the UK national phase, where a declaration of the name and address of each inventor was filed in the international phase then that declaration is treated as having been provided under section 13(2) [this is provided for explicitly by s.89B(1)(c)]. Similarly, a declaration in the international phase of the applicant’s entitlement to apply for and be granted a patent is also treated as having been provided under section 13(2) [this is not stipulated by s.89B but follows from the provisions of the PCT itself]. It does not follow that the declarations necessarily meet the requirements of section 13(2) to identify the inventor(s) and indicate the derivation of the applicant’s right, it being open to the Comptroller to determine these matters (see 89B.07.1 and Thaler’s application O/447/22).
13.13
If, in a case where it is required, a properly-completed Form 7 is not filed within the prescribed period (see 13.11) the application is taken to be withdrawn, and is consequently not published. (See also 15A.12).
[For termination procedure, see 14.199 and 15.55 ]
13.14
A defect in the form may be rectified by filing a fresh form, provided that the prescribed period has not expired or, if it has, an extension has been allowed (see 13.11). (If the application is one where copies of Form 7 are sent to the inventors (see 13.15), they should be sent copies of the replacement form). No evidence is needed to substantiate this alteration, but if the prescribed period and any extension has expired the only way in which the information on the form can be changed is (in an appropriate case) by submitting a written request to correct an error (see 117.22). However if any discrepancies are minor, so that the requirements of r.10(3) can be regarded as having been complied with, they can be rectified, within a period specified by the Office. An insufficient indication of the derivation of title (see 13.09) is not regarded as a minor discrepancy, and if the prescribed period has expired an extension of the period would need to be sought under r.108 to enable the required information to be supplied. The decision in Payne’s Application [1985] RPC 193 means that s.117 cannot be invoked to overcome the mandatory requirements of s.13(2) (see 13.13).
[If the fresh form is acceptable the Formalities Examiner should endorse it as the effective form]
13.14.1
In the case of an international application in its international phase, a request to record any change in the person, name or address of the inventor should be made to the International Bureau under PCT Rule 92 bis before the expiry of 30 months from the priority date.
13.15
There is no longer a need for more than one copy of Form 7 to be filed for multiple inventors.
13.16
[Deleted]
| Section 13(3) |
| Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time apply to the comptroller for a certificate to that effect, and the comptroller may issue such a certificate; and if he does so, he shall accordingly rectify any undistributed copies of the patent and of any documents prescribed for the purposes of subsection (1) above. |
13.17
PR part 7 is also relevant
Anyone may apply for a certificate to the effect that a person should not have been mentioned as inventor in a published application or a granted patent. The application is made by filing Form 2 and a statement of grounds in duplicate. This starts proceedings before the comptroller, the procedure for which is discussed at 123.05 – 123.05.13 and is essentially similar to that for an application under s.13(1), (see 13.04 - 13.05). If the person making the application satisfies the comptroller they will issue a certificate accordingly and will correct, by means of an erratum, any copies of the patent which are subsequently distributed. The formal decision incorporates any such certificate. The Register is altered accordingly, but not Form 7.
13.18
Where before a patent is granted, an application is made on Form 2 for a certificate that a person should not have been mentioned in a published application, the hearing officer should issue a certificate in respect of the application if appropriate and make an order that that person is not entitled to be mentioned as an inventor in any patent granted for the invention.
[The order shall be given effect as far as the register is concerned by the head of Tribunal Section. If an erratum or addendum is required for the published application, these will be issued by the appropriate formalities group at the earliest opportunity in the pre-grant cycle. If the patent is granted, responsibility for requesting republication of the front page and production of an amendment sheet giving details of the changes rests with Tribunal Section]
13.18.1
Action under s.13(3) is not immediately appropriate where, following amendment of an application before a patent is granted, it is no longer fitting for a person correctly mentioned as an inventor in the published application still to be mentioned in any granted patent. Form 2 should not be filed in such cases. Instead the relevant facts accompanied by, whenever possible, the agreement of all parties to the person not being so mentioned, should be filed in writing at the Office. If necessary, the Office will write to any party who has not already consented, giving an opportunity for comment. If the Office is satisfied that all registered applicants, named inventors and any other person whose interests it considers might be affected, agree, it will not mention the inappropriate person as an inventor in any granted patent. If the matter cannot be agreed and the patent application becomes in order, then the application should be granted and the question resolved by an action under s.13(3).
13.19
s.78(2) is also relevant
In the case of an application for a European patent (UK) an application under s.13(3) may be made either before or after the mention of grant of a patent in the European Patent Bulletin but if made before such mention of grant, the relief available in respect of a published application is limited to the issue of a certificate (see also 13.04.1). An incorrect designation of an inventor may also be cancelled before the EPO under r.21 EPC.