Patent decision

BL number

O/447/22

Concerning rights in

GB2105428.3

Hearing Officer

Mr H Jones

Decision date

24 May 2022

Person(s) or Company(s) involved

Stephen L Thaler

Provisions discussed

Section 89B(1)(c)

Keywords

Inventorship, PCT application

Related Decisions

O/741/19

Summary

The decision is concerned with the interpretation of section 89B(1)(c) of the Act and the extent to which the Office can examine whether requirements of section 13(2) concerning the naming of inventor have been satisfied when the information has been provided when the PCT application was in the international phase. The applicant argued that section 89B(1)(c) meant that the Office was required to treat the information filed in the international phase as meeting the requirements concerning naming of inventor because the International Bureau had not objected to the indication provided in the international phase. The formalities examiner considered that section 89B(1)(c) required the Office only to consider the indications provided in the national phase to have been filed within the required period and made on the required form as set out under national law.

The hearing officer agreed with the formalities examiner-™s interpretation. He found that section 89B(5) gave the comptroller power to undertake an examination with respect to section 13(2) to the extent necessary in view of the examination carried out in the international phase. Even if the applicant was correct that the International Bureau had deemed the indication concerning the inventor to meet requirements, the Office could re-examine the same indication with respect to national law if it was known that national law had not been complied - in this case, the Court of Appeal had found that the naming of DABUS as inventor did not meet the requirements of section 13(2).

Full decisionO/447/22  226Kb