3.23
An inventor (but not an applicant) may have their name and address kept confidential by the Office. These provisions are particularly important in meeting concerns about inventors working in controversial areas such as biotechnology although other reasons for suppression may be considered.
3.24
The Inventor’s address can be withheld ‘as of right’ but for both name and address to be kept confidential reasons must be given. The applicant will still be required to supply the inventor details and derivation of right on Form 7 but rule 11 allows the inventor to apply to the Comptroller to waive their right to be mentioned publicly as inventor.
3.25
The request for confidentiality must be made before the preparations for publication of the application are complete.
3.26
A request to withhold only the inventor’s address may be actioned by the Formalities Examiner dealing with the case. The Formalities Examiner should use COPS function SUP INV (Suppress Inventor Details) to action the request (selecting the option to suppress the address only).
3.27
A request to withhold both name and address will be decided by the Head of Casework & Training in consultation with legal advisors. Each case will be decided on an individual basis.
3.28
If the request is accepted no document will be published which identifies the inventor’s name and/or address. No details will appear in the bibliographic data published online or on the front page of the ‘A’ specification and a footnote will indicate that at least one inventor has waived the right to be mentioned. The same will apply to the ‘B’ specification at grant and any documents viewable on the search for a patent service. A check of the file must be conducted and inventor details redacted as necessary. These details must be withheld from public inspection and rule 51(3) allows this.
3.29
If the request is accepted, the Formalities Examiner should use COPS function SUP INV (Suppress Inventor Details) to action the case (selecting the option to suppress the name and address). The Head of Casework & Training will supply the wording for a footnote to the published specification, which should be added using COPS function REC FOO.
3.30
If there are other inventors who do not want their details kept confidential they will appear on the printed specifications in the usual way.
3.31
Documents containing suppressed inventor details should NOT be set open to public inspection. Form 7’s should be set as “No” in the Public column and the TOC annotated “Not Open to Public Inspection”. This also applies after publication where any document contains the suppressed details, including for example, the letter from the inventor requesting confidentiality. If only some of the inventor details are to be withheld then a copy of Form 7 should be made up with the confidential details blanked out so as to leave the remaining inventor details available on the open part of the dossier. The original Form 7 should be placed on the closed part of the dossier.
3.32
The Comptroller may however provide access to the inventor details in a particular case if there is a bona fide need to disclose them in, for example, entitlement or inventorship proceedings.
3.33
An inventor may change their mind and ask to have their details made public. This may be subject to conditions for example if they change their mind after ‘A’ publication we do not have to re-publish the ‘A’ specification just to show the inventor’s name.
3.34
If the inventor’s name has been withheld from the register and ‘A’ and ‘B’ publication, it will also be withheld from the certificate of grant.
3.35
Rule 44 requires that unless a confidentiality request has been accepted the names of the inventors are entered on the register at s.16 publication therefore a request for accelerated publication cannot normally be actioned until Form 7 has been filed.