Patent decision

BL number

O/218/07

Concerning rights in

EP 1123774

Hearing Officer

Mr R C Kennell

Decision date

6 August 2007

Person(s) or Company(s) involved

R S Brookhouse Engineering (Evesham) Ltd v Pro-Tek Engineering Ltd

Provisions discussed

PA 1977 sections 12(1), 13(1), 13(3), 78(2); EPC Art 61(1)(b) and rule 18(2)

Keywords

Entitlement, Inventorship

Related Decisions

None

Summary

The matter was unopposed and (there being parallel proceedings before the court in respect of other intellectual property) a consent order containing an assignment of the EP application to the claimant had been sealed by the court. However the application had lapsed for failure to pay renewal fees, and the proceedings before the comptroller had been stayed to await advice from the European Patent Office as to what rights the claimant might still have. The EPO advised that, provided the claimant had been recognised by a final decision as entitled to the grant of a European patent on the original application, it could file a new application for the same invention under EPC Art 61(1)(b).

Having regard to the terms of the consent order agreed by the parties, the hearing officer determined under s.12(1) that the claimant was entitled to the grant of a patent for the invention in EP 1123774 and certified under ss.13(3) and 78(2) that the inventors named in that application ought not to have been so mentioned. However he did not consider that s.13(1) gave him power to require designation, for the purposes o f EPC r.18(2) in any new application under EPC Art 61, of the persons agreed instead to be inventors.