Section 36

Co-ownership of patents and applications for patents

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36.-(1) Where a patent is granted to two or more persons, each of them shall, subject to any agreement to the contrary, be entitled to an equal undivided share in the patent.

(2) Where two or more persons are proprietors of a patent, then, subject to the provisions of this section and subject to any agreement to the contrary -

  • (a) each of them shall be entitled, by himself or his agents, to do in respect of the invention concerned, for his own benefit and without the consent of or the need to account to the other or others, any act which would apart from this subsection and section 55 below, amount to an infringement of the patent concerned; and
  • (b) any such act shall not amount to an infringement of the patent concerned.

(3) Subject to the provisions of sections 8 and 12 above and section 37 below and to any agreement for the time being in force, where two or more persons are proprietors of a patent one of them shall not without the consent of the other or others

  • (a) amend the specification of the patent or apply for such an amendment to be allowed or for the patent to be revoked, or
  • (b) grant a licence under the patent or assign or mortgage a share in the patent or in Scotland cause or permit security to be granted over it.

(4) Subject to the provisions of those sections, where two or more persons are proprietors of a patent, anyone else may supply one of those persons with the means, relating to an essential element of the invention, for putting the invention into effect, and the supply of those means by virtue of this subsection shall not amount to an infringement of the patent.

(5) Where a patented product is disposed of by any of two or more proprietors to any person, that person and any other person claiming through him shall be entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor.

(6) Nothing in subsection (1) or (2) above shall affect the mutual rights or obligations of trustees or of the personal representatives of a deceased person, or their rights or obligations as such.

(7) The foregoing provisions of this section shall have effect in relation to an application for a patent which is filed as they have effect in relation to a patent and -

  • (a) references to a patent and a patent being granted shall accordingly include references respectively to any such application and to the application being filed; and
  • (b) the reference in subsection (5) above to a patented product shall be construed accordingly.

Notes:
Manual of Patent Practice

Hughes v Paxman [2006] EWCA Civ 818: co-proprietors do not have the right to grant licences to 3rd parties, but this is subject to section 37(1), which gives the comptroller a discretion to order licences in appropriate cases (e.g. where a co-proprietor refuses).

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