Patent decision

BL number

O/556/21

Concerning rights in

GB2543835

Hearing Officer

Mr H Jones

Decision date

26 July 2021

Person(s) or Company(s) involved

Gillian Taylor and Lanarkshire Health Board

Provisions discussed

Sections 12 and 37 and rule 10

Keywords

Cross examination, Employees / employment, Entitlement, Inventorship

Related Decisions

None

Summary

The claimant had an embryonic idea for a weighing scale integrated into a patient transfer board when she was working for the defendant as an A&E nurse. Some years later when she was working in a role jointly funded by Lanarkshire Health Board (LHB) and Chest, Heart and Stroke Scotland (CHSS) she developed the idea into a workable invention with support and funding from Scottish Health Innovations Limited (SHIL). The resulting patent was filed in the name of Lanarkshire Health Board with the claimant named as inventor. The claimant argued that LHB are not entitled to be named proprietor as she was not employed by them at the time the invention was made. LHB claimed that they were her joint employers at the time as they had an implied contract of employment with her. Although her role was jointly funded by CHSS and LHB, the claimant was found to be employed by CHSS and there was found to be no implied contract of employment with the defendant.

The claimant argued that she developed the invention her own time as part of a managed time agreement and not as part of her normal role or duties specifically assigned to her. No-one had kept records of any time spent on developing the invention, and since she was also continuing to fulfil all the duties of her normal role the hearing officer concluded that she did develop it in her own time and not as a result of specifically assigned duties.

The inventive concept was considered, and it was concluded that the invention was developed together with input from a design consultancy. The director of the consultancy was thus considered to be a joint inventor. There was a contractual assignment of rights from the design consultancy via SHIL to LHB, so the claimant and the defendant should be considered joint proprietors of the patent.

The defendant sought to use s.37(5) to prevent transfer of rights in the patent to the claimant as the reference was brought out of time. The claimant argued that they were exempt from this because the defendant knew when it applied for the patent that it was not entitled. The hearing officer found that the time bar did apply to the patent but not necessarily to members of the first and second patent families. The defendant also sought to use the Scottish Law doctrine of personal bar to prevent the claimant from arguing that she is entitled to the patent because she agreed to the patent being filed in the name of LHB. The hearing officer concluded that the bar did not apply as the claimant was not aware at the time of filing the patent that she may have had any rights.

Further submissions on the orders to be made were sought.

Full decisionO/556/21  268Kb