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“Hands off my patent!”: Preventing the wrongful grant of a patent to non-entitled Applicants

Our fourth article of the series exploring patent ownership and entitlement, follows on from our previous articles that have discussed how (i) patent ownership is distinct from the concept of entitlement, (ii) how entitlement disputes between joint applicants may be resolved and (iii) how eligible persons can seek to apply for a determination on entitlement under the Patents Act (“the Act”). The present article presents further considerations on what can be done to prevent a patent from proceeding through to grant when the listed Applicant is not entitled to the invention.

Opposing grant of a standard patent

Under Section 59 of the Act, any person can oppose grant of a standard patent if the nominated person (the Applicant) is either (i) not entitled to a grant of a patent for the invention; or (ii) is entitled to a grant of a patent for the invention but only in conjunction with another person, amongst other grounds. For either of those circumstances, a notice of opposition can be filed under Section 59 within 3 months from the day the notice of acceptance is published, but prior to grant of the patent in question. The earliest a person can initiate an action to oppose grant of a standard patent is within 3 months of its publication.

Procedurally, for a Section 59 opposition, this involves filing reasons for the dispute, which starts the clock for providing evidence. The filing of evidence, including any relevant documents must be made in the form of a declaration. Upon completion of the evidentiary stages, a hearing is then scheduled and typically a decision is then issued by the delegate of the Commissioner within 3 months of the hearing date.

An opposition under this Section of the Act can lead to one of several outcomes. For example, the Commissioner may dismiss the opposition, in whole or in part. If someone else other than the Applicant is determined to be the correct owner, then the application can be updated with the Applicant’s name and the application proceeds through to grant, or alternatively the application can be refused. In that case, the true Applicant can then proceed to make a new patent application whilst keeping the priority date of the original application. There could also be a correction of the Official Register.

It is important to note that any decisions made by the Commissioner for oppositions under Section 59, can be appealed to the Federal Court, if desired.

Encoret Limited v Dexterity, Inc [2001] APO 12 (14 March 2001)

One example of a case where Section 59 was utilized includes Encoret Limited v Dexterity, Inc [2001] APO 12 (14 March 2001), in which an opposition was filed under Section 59 together with a request under Section 32, by Dexterity, Inc. In this case, a basic application was filed in Ireland naming individuals Patrick Leahy and Frank Bonadio as Applicants and inventors. Encoret Limited, who had an assignment from Mr Bonadio, filed a PCT application, which entered national phase in Australia. Mr Leahy was initially named as an inventor on the application, but was subsequently removed by Encoret Limited, under PCT Rule 92bis.1, which states the following:

Rule 92bis.1 Recording of Changes by the International Bureau

a) The International Bureau shall, on the request of the Applicant or the receiving Office, record changes in the following indications appearing in the request or demand:

a. Person, name, residence, nationality or address of the Applicant,
b. Person, name or address of the Agent, the common representative or the inventor.

b) The International Bureau shall not record the requested change if the request for recording is received by it after the expiration of 30 months from the priority date.

Encoret subsequently added Mr Alan Reid as an inventor under PCT Rulebis.1. Dexterity, Inc., who is the assignee of Mr Leahy, opposed the application under Section 59(a) of the Act, on the basis that the Applicant is not entitled to the grant of a patent for the invention, since there was no assignment of entitlement to the invention from either Mr Leahy or Mr Bonadio to Encoret Limited. Dexterity, the opponent, also filed a request under Section 32 of the Act, for the Commissioner to determine the person who may proceed with the application, since any findings on the facts relating to the Section 59 opposition would also be applicable to any determination under Section 32.

In determining whether the Applicant was entitled to the grant of the patent, the Hearing Officer referred to Section 15 of the Act. Whilst Mr Leahy was originally named as an inventor on the Irish applications purely for financial reasons to take advantage of tax concessions available in Ireland at the time, it was ultimately found that Mr Leahy was jointly entitled to the invention alongside Mr Bonadio, who had assigned his rights to Encoret Limited. There was at least a commercial collaboration, if not a technical collaboration between Mr Leahy and Mr Bonadio. However, the evidence was found insufficient to determine if Mr Leahy was an inventor, given the absence of any written contractual agreements.

Mr Alan Reid who was added by Encoret as an inventor to the PCT application, rescinded his claim to entitlement. The grounds of opposition under Section 59 were therefore made out in this case, as Encoret Limited alone was not entitled to the invention. The parties were then given 2 months to file written submissions on any proposed determinations under Section 32.

Other cases that involve an opposition under Section 59 of the Act includes UON Pty Ltd v Taranis Power Group Pty Ltd [2020] APO 34 (10 July 2020), where both Sections 36 and 59 were discussed in the context of determining whether or not the requestor (the opponent) is an eligible person. There is also the case of Danny Lee Williams v Richwood Creek Pty Ltd [2009] APO 12 (26 June 2009), which again saw use of Section 59 for opposing grant of a patent on the grounds of entitlement.

In our follow up article, we will discuss the Commissioner’s power to rectify the patent Register, in the event whereby the Applicant name is incorrectly recorded. 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 attorneys at Michael Buck IP.