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Applying to Change the Name of the Applicant or the Nominated Person

The present article is our seventh in the series discussing patent ownership and entitlement, following on from our previous topics of discussion concerning: (i) how patent ownership is distinct from the concept of entitlement, (ii) how entitlement disputes between joint applicants may be resolved, (iii) how eligible persons can seek to apply for a determination on entitlement under the Patents Act (“the Act”), (iv) how grant of a patent may be opposed if the Applicant listed is not truly entitled to the invention at hand, (v) how the Commissioner’s power may be used to rectify errors recorded on the patent Register, and (vi) how the Court may also rectify errors wrongfully recorded on the patent Register.  

Although much of the discussions so far in relation to entitlement involves some kind of dispute, there are also provisions in the Patents Act that permit amendments to be made to the Applicant name, without the need for involvement from the Commissioner of Patents or from the Courts. The present article provides some insight into how this can be done under the Act.

Multiple sections of the Australian Patents Act allow for a request to change the name of a patent applicant at any time.
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Changing the Patent Applicant Name Under Section 104

Specifically, Section 104 of the Act allows applicants to request amendments to the Applicant name at any time. No formal evidence to support the change is required, unless there is some contrary indication of their entitlement to the invention, in which case evidence may be required in the form of a new notice of entitlement, a declaration, a deed of assignment or a deed poll.

Changing the Patent Applicant Name Under Section 113

In addition, Section 113 also permits changes to the Applicant name for persons claiming under assignment or agreement. For joint applicants, there is no statutory requirement for one co-applicant to obtain consent from the other co-applicant(s) when amending the Applicant name under Section 113, which contrasts with the process for recording a part-assignment of a patent, under Section 16.

Regulation 3.1A

With reference to the Patent Regulations, it is important to note that Regulation 3.1A states that the Applicant is taken to be the nominated person. Thus, any amendment to change the nominated person to be different from the Applicant has no effect. Conversely, any amendment to the Applicant will result in a change to the nominated person. 

Divisional Applications

In terms of divisional applications, where a divisional application is filed in a name other than that of the Applicant of the patent application, an objection is normally raised by the Examiner to amend the divisional Applicant name under Sections 104 or 113. Both these Sections of the Act may also be used where there is an application from joint inventors and the invention by one or more of them, is divided out from that parent application and made the subject of a divisional application.

Next in this Series

This article concludes our discussions on how patent ownership and entitlement issues are navigated under the different provisions covered under the Patents Act. Our next article will explore some other intriguing considerations that are relevant to determining inventorship.

Got questions about patent ownership and entitlement in Australia? The team at MBIP are happy to help. Contact us to have a patent attorney get in contact with you to discuss your situation