Patent Protection - Legal Groundrules Changed

A recent ruling by the House of Lords in a case involving a patent marks a significant change to UK patent law. Prior to the decision, under UK law an action brought to prove entitlement to a patent could only be commenced if it could be demonstrated that the person applying for the patent had breached some other law. The House of Lords ruled that this approach was incorrect and that in a claim to assert entitlement to a patent, all that is necessary is that the claimant is able to prove that he was the inventor of the subject of the patent. The Lords also ruled that an amendment of a claim to joint entitlement to a patent to one of sole entitlement did not amount to a new claim. Accordingly, the two-year limitation period on such claims did not apply.

In the words of Lord Hoffman, “The first step in any dispute over entitlement must be to decide who the inventor or inventors of the claimed invention were. Only when that question had been decided could one consider whether someone else might be entitled.”

This ruling is significant, as it enables inventors who can prove that they invented a patentable invention to claim the right to the patent (or prevent someone else patenting it) even where the patent was not the result of a breach of any other law. This significantly advances the rights of inventors.