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Challenging patent entitlement as an eligible person

Following on from our previous articles where we have discussed how patent ownership is distinct from the concept of entitlement and also how entitlement disputes between joint applicants may be resolved under Section 32 of the Patents Act 1990 (“the Act”), the present article provides further information on how eligible persons can apply for a determination on entitlement under Section 36 of the Act.

Applications by eligible persons

Similar to Section 32, discussed in our previous article, Section 36 also permits a determination to be made on an entitlement dispute on whether a person is an eligible person of a patent application, with or without the current Applicant. However, unlike Section 32, Section 36 is not used for when there are two or more joint Applicants. Procedurally, Section 36 is very similar to that of Section 32, in that a request made under this Section must be filed in an approved form (Reg 3.7) and include a notice that outlines the grounds on which the request is made. Evidence may also be included at the time of filing the request and the request can be made anytime up until grant of a patent. Once evidence has been provided, the other party will be provided with a period in which to file responding evidence. Extensions of time may be granted but only under exceptional circumstances (Section 223 of the Act).

Interestingly, a declaration under Sections 32 or 36 can be made by the Commissioner, regardless of whether the application has lapsed or not.

Harris v CSIRO [1993] 26 IPR 469

Harris v CSIRO [1993] 26 IPR 469 is one example case whereby an application was made under Section 36. In brief, individuals, Mr Harris and Mr Dabbs were close friends, Mr Dabbs of whom worked for the Commonwealth Scientific and Industrial Research Organisation (CSIRO). Both individuals were originally each working on developing separate optical devices, until they discussed a proposal for collaboration to develop an improved confocal microscope, which is the subject of the patent application. The arrangements for the collaboration were not formally made, although some non-disclosure agreements were signed. Eventually, CSIRO expressed their intention to file a patent application in their name only, without listing Mr Harris as a joint applicant. On hearing this, Mr Harris proceeded to file two provisional applications for the invention, and later an international PCT application, claiming priority from the provisional applications, as he believed he jointly invented the improved confocal microscope invention. On a similar basis, CSIRO proceeded to file a provisional application, and later a PCT application claiming priority from said provisional application.

The position of the two parties can be summarised as follows:

  • CSIRO contended that Harris was not an entitled person in his two provisional applications and one complete (PCT) application, arguing that CSIRO, through Mr. Dabbs, is the entitled person, Mr. Harris of whom obtained the invention from Mr. Dabbs.
  • On the other hand, Mr. Harris argued that the invention arose form brain-storming sessions between himself and Mr. Dabbs. He further argued in the alternative, that he independently invented the invention upon seeing the display of a conventional confocal microscope. Mr. Harris argued that he was forced into making patent applications in his name only to protect his interests and also because CSIRO had refused to list him as a joint inventor.

The request for a determination of an eligible person under Section 36 was made by CSIRO, on the grounds that Mr. Harris was not an eligible person in respect of the invention.

The questions that were considered in this case included (i) what is the invention of Mr. Dabbs; (ii) what is the invention as disclosed in Mr. Harris’ specifications; and (iii) does one person have a right in the invention of the other, and vice versa.

Ultimately, it was found that Mr. Harris was not an eligible person by himself, by reason of joint inventorship with Mr. Dabbs. This case is of interest for Section 36 matters, since the decision suggests that the more significant question at hand is whether the invention would have occurred without a particular person’s involvement.

There are a number of other cases that discuss Section 36. Pancreas Technologies Pty Ltd v The State of Queensland acting through Queensland Health [2005] APO 1 (5 January 2005) is one example of a case that discussed both Sections 32 and 36. However, there is also Khoury v Sherrard Pty Ltd [2018] APO 20 (19 March 2018), which although a request for determining inventorship was initially filed in that case under Section 32, by error, when it was intended to be filed under Section 36, use of the wrong form was not considered to be detrimental to the flow of proceedings otherwise. 

Key Takeaway

The case of Harris v CSIRO discussed above emphasizes the importance of having formal collaborative agreements in place that outlines who would be the rightful owner of any IP generated from any research and development work carried out. Typically, such formal agreements would avoid or at least reduce the potential of a dispute arising in relation to entitlement and ownership of a patent application, which can get costly quite quickly. The contributions of each party towards developing the inventive concept are also crucial to consider.  Ideally, each party should keep and maintain a good record of any discussions concerning the invention, early in its conception, such that if an inventorship dispute arises in the future, it would be relatively easy for a Hearing Officer to determine inventorship based on these earlier documentations.

Our follow up article will discuss how the grant of a standard patent application can be opposed. In the meantime, if you have any questions in relation to the above article or have other questions concerning patent ownership and/or entitlement, please do not hesitate to contact our team at Michael Buck IP. Our attorneys will be happy to assist.