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Determining entitlement to a patent

The UKIPO has handed down a decision in case BL 0/556/21, in which Mrs Gillian Taylor asserted her entitlement to a patent filed by Lanarkshire Health Board (LHB). This entitlement case was complicated by the employment relationship between the two parties, and much of the case was given over to determining who Mrs Taylor’s employer was at the time the invention was made. 

Whilst working for LHB as an A&E nurse in 2007/2008 Mrs Taylor had the initial idea for a weighing scale integrated into a patient transfer board, but did not develop the idea further at that time. During the trial, it was accepted by all parties that this did not constitute an ‘invention’, but was merely an early stage concept.   

In 2012 Mrs Taylor began employment with Chest, Heart and Stroke Scotland (CHSS), in a role related to stroke education that was jointly funded by CHSS and LHB. However, all her payslips were issued by CHSS, her NI and pensions contributions were made by CHSS, and her direct line manager was a CHSS employee. 

In 2014 Ms Taylor approached Scottish Health Innovations Limited (SHIL) about developing her idea. SHIL offer support to progress inventions developed by NHS employees, and they sourced and appointed a design consultancy to work with Mrs Taylor to take her idea forward. A UK patent application was filed in October 2015 and granted in October 2017, in the name of LHB and naming Mrs Taylor as sole inventor. Overseas applications were also filed, claiming priority from the initial UK application. 

The rights in an invention belong first and foremost to the inventor. However, where the invention was developed as part of the inventor’s employment, either as part of their normal duties or in the course of duties specifically assigned to them and from which an invention might reasonably be expected to arise, the rights to the invention automatically pass to the employer. 

In bringing this case, Mrs Taylor contended that LHB had not been entitled to file the patent application as they were not her employer at the time (she asserted that she was employed by CHSS), and because she developed the invention in her own time and not as part of her normal duties. 

LHB countered that they were entitled as they were a joint employer of Mrs Taylor at the time the invention was made, and that she did so as part of duties specifically assigned to her. In addition, they stated that a Mr McCorkindale, a director of the design consultancy who helped to develop the invention, should have been named as a joint inventor, and they were further entitled through their contractual relationship with him. Finally, LHB stated that this case was brought outside the 2-year time limit for entitlement proceedings, and there were no grounds (such as bad faith) to make an exception to this. 

The court began by considering who the inventor was. This is defined in the law as ‘the actual deviser of the invention’ and they held that, while the idea was Mrs Taylor’s, it was the design consultancy who was responsible for reducing the idea to practice. As both of these elements were necessary for the development of the product, the court held that Mrs Taylor and Mr McCorkindale should be named as joint inventors. 

The court then turned to the question of who Mrs Taylor’s employer was at the time the invention was made. LHB argued that they were joint employers with CHSS through an implied contract, as there was a joint working arrangement between LHB and CHSS, and LHB paid half of her salary. However, as Mrs Taylor’s employment contract was with CHSS, CHSS issued her payslips and paid her NI and pension contributions, and employed her line manager, the court found that Mrs Taylor’s contractual agreement was with CHSS and that she worked solely for that company. This meant that, if the invention was made as part of her normal duties it would belong to CHSS, and if it was made in her own time it would belong to her. 

All parties agreed that developing the invention did not lie within the scope of Mrs Taylor’s normal duties in stroke education. Mrs Taylor maintained that she was never assigned any additional duties relating to the invention, and that the majority of the work took place in her own time. In addition, CHSS denied any assignment of duties to develop the invention. Mrs Taylor was provided significant support and encouragement from LHB in the development of the invention but, as they were not her employers, they could not assign her duties which would result in an automatic transfer of patent rights. The court concluded that any rights deriving from Mrs Taylor’s contribution belonged to her. 

Thus, the conclusion reached was that Mr Corkindale and Mrs Taylor should be named as joint inventors, and that LHB (through their contractual relationship with Mr Corkindale) and Mrs Taylor were entitled to the patent as co-proprietors. However, the court also held that there was no indication that LHB had acted in bad faith in filing the application in their own name, and that the 2-year time limit on bringing entitlement proceedings should stand. Thus, although recognising Mrs Taylor’s rights, they had no power to transfer rights in the existing UK application to Mrs Taylor. 

However, the 2-year time limit for the related overseas applications had not expired at the time the proceedings were brought, and the court stated that they would consider whether orders relating to the ownership of these patents should be made. 

This case is complex, but it underlines the importance of taking appropriate, independent advice when determining patent ownership. If Mrs Taylor had been made aware of her potential rights in the invention earlier, or LHB had taken formal legal advice regarding the status of their relationship with Mrs Taylor, then this case may have progressed differently, or not been necessary at all.

Author: Katherine Wright

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