Still Life World Intellectual Property Day

Understanding the intricacies of patent ownership and entitlement

More often than not, patent ownership and entitlement are concepts which may be confusing to many, and whilst they are related they are also distinct from one another. This article series discusses some of the considerations that should be given towards the concept of patent ownership and entitlement, which should help in minimizing or avoiding any costly proceedings that may arise from confusion between the two concepts, consequently protecting valuable business relationships.

Correctly identifying ownership of a patent application is crucial to ensuring that any priority claim is validly made. Whilst in Australia, validity of a patent is not affected by who the patent is granted to (Section 22A), there are provisions in the Australian Patents Act (“the Act”) that state that the Court may, by order, revoke a patent, either in whole or in part, as it relates to a claim, on the grounds that the patentee is not entitled to the patent (Section 138(3)(a)). This is similar in some respects to other countries, such as in the USA, where failure to correctly identify the inventors could lead to invalidation of a patent application.

Central to the topic of entitlement, is Section 15 of the Australian Patents Act, which states the following:

“An “eligible” person may be granted a patent if that person is:

a) An inventor; or

b) Would, on the grant of a patent, be entitled to have that patent assigned to that person; or

c) A person who derives title to the invention from (a) or (b); or

d) The legal representative of a deceased person from (a), (b) or (c).”

    Section 15 therefore categorises and distinguishes between an inventor in (a) and a person who would be entitled to have the patent assigned to them, according to subsection (b). This particular Section of the Act is frequently referred to in cases of entitlement disputes.

    In the Australian Patents Act, a “person” is an individual or an entity, such as a company. Prior to grant of a patent, a “nominated person” (The Applicant) must file a notice of entitlement that details how they derive entitlement to the grant of the patent. Should issues arise in relation to entitlement, the Act provides various options for resolving those issues, such that patent applications and patents can proceed in the name of the correct parties.

    Relevant legislation in the Australian Patents Act

    The sections of the Act that are relevant to entitlement disputes include:

    • Section 32, which concerns disputes between joint applicants;
    • Section 35, which concerns applications for determining the eligible person, following revocation on surrender of a patent under Section 137;
    • Section 36, which concerns filing a declaration that the person is an eligible person and the nominated person is or is not an eligible person;
    • Section 59, which concerns opposition to grant of a standard patent;
    • Section 138, which concerns revocation of a patent by a Court;
    • Section 191A, which relates to the Commissioner’s power for rectifying the Register to properly record a person’s entitlement; and
    • Section 192, which relates to the Court orders for rectifying the Register to properly record a person’s entitlement.

    Both Sections 138 and 192 being determined by a Court.

    Upon resolution of an entitlement dispute and depending on the finding, a direction can then be made for the application to proceed in the name of the entitled person, or in the case of a patent, for the Register to be rectified to reflect the correct patentees.

    If a new patent application is to be filed for the entitled person, this is covered by Sections 33 to 36 of the Patents Act, which enables an eligible person to make a new complete application whilst maintaining the priority date of the other patent application or patent. This is particularly useful when the relevant application has lapsed, or the patent has been revoked or if different parts of an application can be separated out and made the subject of a new patent application, based on differences in entitlement.

    In the present multi-part article series that will follow from this introductory article, we will discuss in some detail each of the relevant sections of the Patents Act that relate to entitlement disputes, together with some recent considerations on patent ownership and how the determination of entitlement in Australia compares with other jurisdictions.

    In the meantime, if you have any questions in relation to the above, please feel free to contact our attorneys at Michael Buck IP. We shall be pleased to answer any of our enquiries related to patent ownership and entitlement.