How Patent Ownership and Entitlement in Australia Compare to the US & Europe
The present article is the final in our series on patent ownership and entitlement. You may recall that some of the topics that have been discussed to date include the following: (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, (vi) how the Court may rectify errors recorded on the patent Register, (vii) how the name of the Applicant can be changed, and (viii) inventorship considerations in light of technological advancements. We conclude our article series with a discussion on how entitlement in Australia compares with other jurisdictions, specifically focusing the US and Europe. We also present a summary of some key considerations from across this article series.
Australia in comparison to the US and European stance on entitlement
Firstly, the process for determining inventorship in Europe is very similar to that in Australia. Thus, we will not be discussing the European procedures in this section.
More interestingly, the US has a “first to invent” patent system, which requires identification of the inventor and also establishment of a date for the invention. Unlike in Australia, in the US, analysis of inventiveness is performed on a claim-by-claim basis, where each feature or limitation of the claimed invention is considered (feature-by-feature). Given the difference in the approaches used for determining inventorship in Australia and in the US, there is a possibility that a person named as an inventor in Australia, on the grounds that they contributed towards conception of the underlying inventive concept, may not be so named as an inventor is the US, if their contribution is not specifically claimed in the specification.
Key considerations related to patent ownership and entitlement
Based on the discussions provided across our article series, it is apparent that the concepts of entitlement and inventorship are intricately linked issues, since both these issues are often heard and discussed together.
In each of the exemplified cases across our series, entitlement was determined by reference to Section 15 of the Act, which requires that entitlement arises either by being the inventor or through a legal right vested in the party by the inventor. Patent rights therefore originate in inventorship and the legally correct inventors must be identified as the source of these rights. Subsequent ownership of the invention, for example, by assignment, comes only from the legal transfer of title that is traced to the inventor.
Some important lessons to be learnt from these entitlement disputes include the need for parties to regularly review and keep note of all inventorship and ownership claims prior to filing a claim of entitlement to a patent application. Once a patent application has been filed, due diligence must be kept up, since prosecution of the patent family could see changes in inventorship, as the claims may undergo various amendments, including claim deletions.
We recognize the difficulties associated with ownership disputes. Thus, we generally recommend to all our clients to resolve any potential ownership disputes early on in the patent process, which would be beneficial in avoiding some of the higher expenses associated with for example, an opposition arising at a much later stage of the patent application procedure, or when the patent proceeds to grant. Needless to say we also strongly encourage all our clients to keep detailed records throughout their product development, particularly during the early stages of conception and for individuals to store these in a safe place so as to prevent loss of any potential evidence, should there be a future need to consult these documents in the future.
If you would like further information on any of the above or have questions concerning patent ownership and/or entitlement in general, please do not hesitate to contact our Patents team at Michael Buck IP. First initial consultations (generally up to 45 minutes) are free.
