Rectifying errors on the patent Register: the Commissioner’s power

The present article is our fifth 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”), and (iv) how grant of a patent may be opposed if there is cause to believe that the Applicant listed is not truly entitled to the invention at hand. This article will discuss in some detail, how the Commissioner’s power may be used to rectify errors recorded on the patent Register.

Should there be an error or defect in the patent Register, the Commissioner may rectify the Register under Section 191A of the Act, if the Commissioner is satisfied, on the balance of probabilities that there has been an omission of an entry from the Register, or if an entry has been made in the Register without sufficient cause, or if the entry is wrongly existing in the Register. This provision prevents a patent, or at least a share in the patent, to be granted to a person who is not properly entitled to it. Crucially, rectification of the Register under Section 191A cannot be performed if any relevant proceedings in relation to the patent are pending. Furthermore, it is also important to note that any decisions issued by the Commissioner under Section 191A can be appealed to the Federal Court, if desired.

Naturo Pty Ltd v The Fruit Company Limited [2016] APO 89 (23 December 2016)

The case of Naturo Pty Ltd v The Fruit Company Limited [2016] APO 89 (23 December 2016) is one example of how Section 191A was relied upon to establish inventorship, which concerns an innovation patent for inhibiting the browning of cut fruits and vegetables. Specifically, Naturo Pty Ltd is a company owned by Mr Jeffrey Hastings. He alleged that he was approached by The Fruit Company to see if he would be interested in assisting with the development of value-added avocado products for The Fruit Company. Mr Hastings expressed his interest and during the course of that engagement, developed the invention of the specification in question, to which he considers he is the sole inventor.

The Fruit Company Limited filed an innovation patent, which was a divisional patent based on a standard patent application. The standard patent application lapsed and the innovation patent proceeded to grant. The innovation patent listed Mr Christopher Murphy and Mr Jeffrey Hastings as the inventors, Mr Murphy of whom was the CEO of The Fruit Company. Naturo Pty Ltd made an application under Section 191A seeking rectification of the Register of Patents, in which  it was asserted that Mr Murphy was not an inventor and that Mr Hastings should be named as the sole inventor and patentee of the innovation patent.

Some of the case law referred to by the Hearing Officer included University of Western Australia v Gray [2009] FCAFC 116 and Victoria University of Technology v Wilson [2004] VSC 33. The case of University of Western Australia v Gray was discussed previously in our discussions concerning disputes between joint applicants (Section 32 of the Act). Nonetheless, for convenience we briefly summarize some of the considerations given by the Full Federal Court in that case for assessing entitlement:

  • First, the inventive concept of the invention must be determined based on the claims of the specification;
  • Inventorship should then be determined based on who was the person responsible for deriving the inventive concept, distinguishing this from the person who verified and reduced the invention into practice;
  • Consideration should then be given to any contractual or fiduciary relationships that may give rise to proprietary rights in the invention.

Turning to the case of Victoria University of Technology v Wilson, paragraph [104] has been crucial in clarifying entitlement in situations of employment. Specifically, it is stated in that case:

“…It is an implied term of employment that any invention or discovery made in the course of the employment of the employee in doing that which he is engaged and instructed to do during the time of his employment, and during working hours, and using the materials of his employers, is the property of the employer and not of the employee…..

… the mere existence of the employer/employee relationship will not give the employer ownership of inventions made by the employee during the term of the relationship…..

… unless the contact of employment expressly so provides, or an invention is the product of work which the employee was paid to perform, it is unlikely that any invention made by the employee will be held to belong to the employer.”

The key question according to Victoria University of Technology v Wilson, is therefore to assess whether it was the employee’s job to invent. If not, even if the invention is relevant to the employer’s business and the employee used the employer’s time and resources in developing it, the invention will probably belong to the employee.

Referring back to the case of Naturo Pty Ltd v The Fruit Company, Mr Hastings was successful in providing evidence that he was the sole inventor in respect of the innovation patent and that he was engaged as an independent contractor to use his skills in product and/or technology development in the field, to improve avocado products for commercialization. Mr Murphy never asserted that he contributed in any way to the conception of the invention and furthermore, the patentee did not file evidence to defend against or to challenge Mr Hastings’s assertions. The listing of Mr Murphy as a co-inventor in the Register of Patents was therefore incorrect, and the Register was rectified in pursuant to Section 191A.

In a similar manner to how the Commissioner has the power to rectify the Register, the Court also holds this power under Section 192 of the Act. Our follow up article will therefore discuss the Court’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 team at Michael Buck IP. Our attorneys will be pleased to answer any of your queries.