The right to apply for a patent - Keep it in writing

Recently there has been quite a bit of interest in whether an artificial intelligence (AI) machine can be an inventor and/or can apply for a patent (see Thaler). However, we should not forget that all inventors, and those seeking to commercialise an invention, can get in a tangle with the requirements of the Patents Act.

The UK's Intellectual Property Enterprise Court has recently considered just such a case in Jones v Irmac Roads. It shows that when discussing your new invention with your patent attorney you should not only focus on the technical invention but also on the commercial issues so that all involved are clear about who owns the invention, the resulting patent application and any granted patent(s). It is equally important that the paperwork successfully puts this into effect. The integrated team of patent attorneys and lawyers at Marks & Clerk can help out.

In this case Jones had devised a machine for laying roads. He was the inventor and therefore the person entitled to be granted a patent. He orally transferred the resulting "inchoate" property right to Irmac Limited and entered into other written agreements concerning how the invention would be commercialised and how he would be remunerated. Part of that agreement was an option to regain all rights to his invention if Irmac failed to commence trading activities within a certain time.

Relations broke down and as part of the fall out from this the court has clarified that in the UK the Patents Act requires all agreements dealing in "any patent or any such application or right" must be in writing and signed. This requirement extends to the right to apply for a patent which arises automatically and vests in an inventor upon making their invention.

The parties created a tangled web of oral and written agreements. However, ultimately the interpretation of Hacon J was that the parties had created a boomerang arrangement. On the facts, the agreements returned all rights in the invention back to Jones, the inventor.  

The clear lesson from this case, however, is that all rights in an invention should be transferred in writing and that it is important to get advice to ensure that the paperwork does achieve what is intended. Oral agreements will not successfully transfer legal title to the rights and in any event are likely to lack clarity if relations breakdown between the parties. Subsequently, a dispute arises and far more heartbreak (and cost) is created by the resulting tussle.