Inventions, Patents and Awards for Suggestions BRd 2

CHAPTER 89

INVENTIONS, PATENTS AND AWARDS FOR SUGGESTIONS

(MOD Sponsor: Articles 8901-8905

D/IPR. Articles 8906-8908 DOMD)

GENERAL REGULATIONS

CONTENTS

Para
8901. Inventions and Patents
8902. Inventions made by Crown Employees
8903. Patenting of Inventions
8904. Inventions and Note Taking
8905. Use of Inventions
J.8906. GEMS Staff Suggestion Scheme
8907. Awards from the Herbert Lott Naval Trust Fund
8908. Technical Suggestions from Members of the Public

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CHAPTER 89

INVENTIONS, PATENTS AND AWARDS FOR SUGGESTIONS

8901. Inventions and Patents

1. Introduction. These regulations set out the procedures relating to the making and
reporting of inventions (whether patentable or not) by Royal Navy and Royal Marines
personnel, the filing of patent applications, and the procedures relating to compensation
to RN and RM personnel for inventions.

2. Confidentiality. Nothing in the regulations is to be taken to override or detract from

the obligations of confidentiality which MOD employees including naval personnel have to
the Department (see Chapter 70). In particular, the Official Secrets Act and other
appropriate security precautions must be observed in all circumstances and at all stages.
No serviceperson may disclose, or cause to be disclosed to any unauthorized person (not
even to a patent attorney or a solicitor) any official information obtained or developed
during the period of their employment and they may not file a. patent application in respect
of an invention incorporating official information without the prior written consent of (1) their
Commanding Officer (CO) or their head of establishment or division (H/E) and (2) the
Director Intellectual Property Rights, MOD (PE) (D/IPR).

3. Inventors should also always bear in mind that any patent obtained, whether
belonging to the inventor or to the Crown, may be rendered invalid as a result of any
disclosure, otherwise than in confidence, of the invention to others, made before a patent
application is filed.

8902. Inventions made by Crown Employees

1. Ownership. The ownership of inventions, whether or not patented, or patentable,

made since 1st June 1978 by employees, including civilian and Service employees of the
Crown, is determined according to the principles set out in Section 39 of the Patents Act,
1977 reproduced at Annex 89A. Under the provisions of Section 39(1) an invention made
by a MOD employee on or after 1st June 1978 belongs to the Crown, as represented by
the Secretary of State for Defence:

a. If the invention was made by the inventor in the course of his normal duties or
duties specifically assigned to him and the circumstances were such that an
invention might reasonably be expected to result; or

b. If the invention was made by the inventor in the course of his duties and, at the
time of making the invention because of the nature of his duties and the particular
responsibilities arising from them, the inventor had a special obligation to further
the interests of the Department (this last provision would normally apply to all
senior Navy personnel). Otherwise, in accordance with Section 39(2), the
invention belongs to the inventor. Any dispute as to the ownership of an invention
made by a MOD employee should be referred to D/IPR who will endeavour to
settle the matter. If agreement cannot be reached either the inventor or D/IPR may
request the Comptroller-General of Patents or the courts to determine the
ownership.

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2. Reporting of Inventions. Inventors should report all inventions made during their
employment to their CO or H/E (or as otherwise prescribed locally). Each report should
provide full details of the invention and the circumstances of making the invention. Where
the CO or H/E considers that an invention was made in the course of an inventor’s duty,
falling under Section 39(1) of the Patents Act, the report should be forwarded to D/IPR
together with information on: the inventor’s name, grade and duties at the time of making
the invention; the general duties at the time if the invention arose as a result of a specific
assignment; whether the invention makes use of any employer-owned or third party owned
information (8901 sub para 2 refers); whether any of the information concerned is
classified; and reasons why the invention is considered to have been made within, or
outside, the course of the inventor’s duties and hence belongs to the Crown as employer
or to the inventor. Where appropriate, D/IPR will take steps to seek patent protection for
reported inventions and will advise on any inappropriate use of information. If, requested,
D/IPR will advise divisions and establishments of suitable procedures for the recording and
reporting of inventions.

3. Ownership. To try to resolve the matter of ownership at an early stage, Navy

Department personnel who have made an invention which they believe they own and
which may be capable of patent protection should report the invention immediately to D/
IPR. The report should include a description of the invention, the circumstances under
which it was made and the inventor’s grade and duties at the time the invention was made.
All this information will be treated as having been communicated in confidence and,
subject to any subsequent agreement between the inventor and the Department, only for
the purpose of obtaining agreement as to ownership. The inventor will be informed with
the minimum of delay of D/IPR’s view on ownership of the invention.

8903. Patenting of Inventions

1. Applying for Patents. The decision whether or not the Ministry of Defence will use
any invention or whether a patent will be applied for at public expense in respect of an
invention owned by the Department or in respect of which rights have been offered to the
Department (for which see below), is purely a matter of Departmental discretion; the
responsibility of determining whether patent or other protective action shall be undertaken
in respect of such invention falls to D/IPR. The considerations involved in deciding whether
or not to file a patent application at public expense will include the scope of protection likely
to be obtained, the desirability of registration or establishment of the Crown’s rights,
especially relating to work carried out by industry or other governments, and the likelihood
of commercial exploitation. Inventors are to co-operate fully with D/IPR staff in the
preparation of documentation relating to patent applications, including the supply of
background and explanatory material, the vetting of draft specifications and the signing of
documents.

8904. Inventions and Note Taking

1. It is important that anyone employed in a capacity where the making of an invention is

a possibility should keep dated records of their research and particularly of key
development milestones. Failure to do so may make it difficult to establish when an
invention was first made and this will in turn limit the value of the Crown’s rights in
establishing the earliest possible record of the making of any invention of interest to the
Crown.

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2. D/IPR recommends that bound and numbered notebooks are used to keep records of
research and of ideas and proposals for research as they occur. Loose-leaf note books
should not be used as page orders will not help establish the chronology of events. At
regular time intervals, notebooks should be endorsed by a superior in the form “I have read
and understand this entry”, signed and dated. A person who endorses a notebook entry
must not be a co-inventor of an invention to which that entry relates.

3. Notebooks should be retained when either completed or no longer required (e.g. when
an employee leaves a particular post). For further advice on note keeping, please contact
D/IPR.

8905. Use of Inventions

1. Offer to the Crown of Employees’ Rights in Inventions. The proprietor of an

invention may offer rights in the invention to the Ministry of Defence. Such offers should be
made to D/IPR who will determine whether or not such an offer is to be accepted and will
negotiate terms with the proprietor. Alternatively the proprietor may retain some or all of
his rights in an invention or dispose of them elsewhere, but in doing this he must observe
the obligations of security and confidentiality referred to in 8901 sub para 2.

2. Rights of Crown to use Inventions. It should be noted that in any case a

Government Department or any person authorized by a Government Department may use
any patented invention for the services of the Crown under Section 55 of the Patents Act,
1977 subject to terms to be agreed before or after use with the proprietor of the patent or
as determined by the court.

3. Rewards to Inventors Scheme. The MOD Rewards to Inventors (RTI) scheme

provides incentives for MOD civilians and military staff to notify MOD of inventions and
technical innovations, and to assist in their production and exploitation. The RTI scheme
sits alongside GEMS – The Defence Ideas Scheme – but specifically applies to patentable
inventions and technical innovations which, by virtue of the employees’s employment, are
owned by the MOD. All MOD civilian and military full-time and part-time staff, staff on short-
term contracts whose inventions are owned by the MOD, and staff who at the time of their
contribution to the exploitation of the invention or technical innovation were similarly
employed, are eligible for consideration for awards. Access to GEMS is unaffected by the
scheme. Rewards under the scheme are divided into two parts:

a. fixed awards to inventors for the filing and grant of patentable inventions, and

b. rewards to inventors and other staff for commercial exploitation of the technical
innovation.

All rewards are paid automatically and as such no application is required. The receipt of a
reward under the scheme does not remove the right of an inventor to claim compensation
under section 40 of the Patents Act 1977, but the amount of the reward under the scheme
will be deducted from any compensation under the Patents Act 1977 whether agreed or
awarded by any court or tribunal.

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4. Statutory Compensation Considerations for use of Employees’ Inventions.

Section 40 and 41 of the Patents Act, 1977 (see Annex 89A) provide for compensation to
be paid, in certain circumstances, by an employer to an employee if the employer has
derived outstanding benefit from a patent in respect of an invention made on or after 1st
June 1978 by the employee either alone or jointly with others. The decision as to whether
an employee should be compensated by the employer would be made by the Comptroller-
General of Patents or the court to either of whom an application may be made. Inventors
seeking payment of such compensation are however strongly recommended to make an
application in the first instance to D/IPR before making any formal application for
compensation since it is hoped that a settlement can be reached without the formalities
and expenses which arise should a case be referred to the Comptroller or the court.
Application to D/IPR would of course be entirely without prejudice to the proprietor’s right
to make a formal application at a later date.
It should be noted that:

a. For a Crown employee, benefit accruing to his employer includes benefit gained
by the Crown as a result of commercial exploitation of the invention by or on behalf
of the Crown.

b. In determining whether compensation is payable, account is taken of the size and

nature of the employer’s undertaking.

c. In the event that an MOD employee who has received an award (see above and
below) in respect of an invention also applies for compensation in respect of the
same invention, the Department will submit that the award should also be a matter
to be taken into account by the Comptroller or the court in assessing the
compensation, if any, to be paid.

J.8906. GEMS Staff Suggestion Scheme

1. Introduction. The GEMS Staff Suggestion Scheme aims to encourage and reward
ideas from all parts of the MOD and Armed Forces to improve the way the Department
conducts its business. The scheme is open to all staff, Service and civilian, and replaces
previous technical and non-technical schemes.

2. How to Make a Suggestion. Further details of the GEMS Staff Suggestion Scheme,
together with an example of the form on which suggestions are to be submitted, can be
found in DINS.

3. Contacts. Further information about the Scheme can be obtained from the following
address:

STOP(N) Tel: 936 (012258) 84502

Ships Support Agency Fax: 936 (012258) 83548
Room 71
B Block
Foxhill
Bath BA1 5AB

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8907. Awards from the Herbert Lott Naval Trust Fund

1. Through the generosity of a private donor a fund has been established which is known
as the Herbert Lott Naval Trust Fund. This fund enables the Department to make awards
to such officers and ratings of the naval and marine forces of Her Majesty, whether on the
active or reserve strength, as shall show marked efficiency or who shall contribute in signal
degree to the improvement of the appliances of the naval or marine forces of Her Majesty.
The inventions and technical suggestions element of this fund, the HLNITF, is
administered by CNSA and funds are allocated to Type Commanders (FOSF, FOSM,
FONA and CGRM) to enable local awards to be made. The same submission procedure
as for exgratia awards should be followed and applications forwarded through the
appropriate chain of command for consideration. Applications from personnel serving in
other areas should be forwarded with appropriate supporting documentation direct to:
CNSA/AN210, MOD (PE) Abbey Wood #96. An award under the HLNITF will not prejudice
further awards being made from other MOD award schemes.

8908. Technical Suggestions from Members of the Public

1. Members of the public, both in the United Kingdom and abroad, frequently submit
ideas or suggestions relating to proposed or existing Service equipment or to
manufacturing or other techniques for its improvement. These reach the Ministry of
Defence in a variety of ways, but it is important that they should all be centrally recorded
in order that, in considering a proposal, any previous submissions by the same proposer,
or similar proposals by others, may be taken into account.

2. All communications relating to such proposals, including requests for interviews,

should be referred direct to the Defence Diversification Agency under the DDA Connect
Scheme, together with any appropriate comments, and no correspondence (other than a
formal acknowledgement) should be entered into with the proposer. Further details can be
found at www.dda.gov.uk.

8909 - 8920. Unallocated

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