The past week has seen issues of patent inventorship hit the headlines in the US as a simmering dispute between Moderna and the NIH has bubbled over into the public arena. At the centre of the dispute is a claim by the NIH that Moderna has failed to name three NIH scientists as inventors on a US patent application covering Moderna's mRNA based COVID vaccine. A key focus of the commentary surrounding the dispute is the fact that, if successful in having the NIH scientists named as inventors on the patent, the NIH would gain the right to grant licences under the patent to third parties.
The dispute highlights an interesting difference between rights of co-owners of patents under UK law as compared to the US.
In the UK, unless there is an agreement to the contrary, the default position under s.36 of the Patents Act is that a co-owner of a patent can exploit the invention covered by the patent for its own benefit, without the consent of the other co-owner and with no need to account to the other owner. However, importantly, a co-owner cannot without the consent of the other:
- amend the specification of the patent or apply for the patent to be revoked, or
- 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).
This difference between the UK and US approaches to co-ownership can sometimes lead to confusion and misunderstandings where there is no agreement between co-owners dealing with these issues. This is one of the reasons why it's recommended that if parties are going to agree to joint ownership of a UK patent that they put in place a joint ownership agreement. There doesn't necessarily need to be a stand-alone agreement; the issues could be dealt with in a joint ownership clause (e.g. in the research collaboration agreement between the parties).
There are a number of key points to consider addressing when agreeing joint ownership of a UK patent, such as:
- Rights to exploit (including exclusivity and any applicable field restrictions);
- Each party's ability to grant licences and assign (e.g. is consent from the other party needed?);
- Responsibility for prosecution and maintenance (e.g. who has the final decision? how will costs be shared?); and
- Rights to bring infringement actions and defend challenges (e.g. who will be responsible? who will have final decision making authority?)
Where joint ownership of a UK patent is a possibility, thinking about these issues at the outset of a collaboration can help avoid misunderstandings and potentially messy disputes in the future.