Who may apply for a patent? The applicant vs the inventor

10 May 2019

“Every once in a while, a new technology, an old problem and a big idea turn into an innovation.” – Dean Kamen

Such an innovation may cause the inventor to obtain a patent towards the protection thereof, and a granted patent is a highly lucrative commercial tool in the hands of the patent applicant. But being the inventor does not necessarily mean that you are entitled to be the applicant for a patent.

It remains a question of fact whether a person is the inventor of a particular invention and whether the applicant was rightfully entitled to apply for the patent. One would ordinarily assume that the person who invented a particular process or device would be the inventor and that the inventor would be eligible to apply for a patent for their invention. The standard position in all jurisdictions is that an application for a patent may be made by the inventor. However, in some instances, the inventor assigns his right to apply to another person or juristic entity by operation of law.

In South Africa, section 27(1) of the Patents Act 57 of 1978 (the Act) states that an application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from him the right to apply or by both such inventor and such other person. Section 27(2) of the Act further states that, in the absence of an agreement to the contrary, joint inventors may apply for a patent in equal undivided shares.

In terms of the Act, an “applicant” may also include the legal representative of a deceased applicant or an applicant who is a person under legal disability.

An invention made by an employee in the normal course and scope of employment will vest in the name of the employer unless otherwise provided in writing. Therefore, if A is an employee of B, the rights to file the patent application will vest automatically in the name of B.

It is standard practice for the employee as the inventor to assign the invention to the employer by means of a contract of employment; however, should the employee refuse to assign the invention to the employer at a later stage, the employer may apply for the grant of a patent and lodge the employee’s contract of employment to support the assignment of the invention by operation of law.

The Act in section 59, however, aims to protect the inventions of employees which are made after termination of employment and which do not fall within their course and scope of employment. Employees should be encouraged to be innovative without the fear that their employer will own all of their inventions.

In the circumstances where a dispute arises between persons as to their rights to obtain a patent for, or to make use of, exercise or dispose of an invention, or as to the right to or title in a patent, any such party may apply to the Court of the Commissioner of Patents to decide the matter in dispute, and the Commissioner shall decide the matter in dispute in terms of section 28 of the Act.

It is highly recommended that you consult with a patent attorney when you are not certain whether or not your invention falls within the scope and course of your employment. It is further advisable to enter into negotiations with your employer regarding your compensation for the invention.

The general rule is that the inventor or any other person acquiring from him the right to apply (assignee) may apply for the grant of a patent. Remember to consider your employment contract and whether the invention falls within the course and scope of your employment before applying for a patent as the inventor.

See also:

• Patent inventorship – Not always so patently clear
• The perils of inventorship – Navigating patent inventorship issues

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)