A co-owner of a patent cannot assign an interest in the patent without the consent of the other co-owners (section 16(1)). Before the Commissioner will record an assignment from a co-owner, he or she must be reasonably satisfied of their consent. Consent must be a positive act (such as by signing a document), not inferred from a failure to object: see Re Milward-Bason and Burgess (1988) AIPC 90-475. Also, an agreement between the parties which merely repeats the requirements of section 16(1) does not constitute consent.

Assignment in part

A patent may be assigned for a part of the patent area (section 14(2)) or for a limited period of time. If the assignment is for a period of time with a specified date for its conclusion, the Register will record that period. If there is no specified date for the end of the period, the Register will not record the conclusion of the assignment unless the relevant parties makes a request to so record.

There are some difficulties if an assignment is for only some of the claims of a patent. The only case law on this subject is Dunnicliff v Mallet 141 ER 795, where it was said that the nature of the interest of the assignee was a tenancy in common. However, in Walton v Lavater 141 ER 1127, where Erle CJ referred to Dunnicliff as decided "rightly or wrongly" (at page 1136), it seems unlikely that a tenancy in common is in fact created (as that is an equal interest in the whole of the patent). The preferred result is probably that rejected in Dunnicliff: a licence is created by attempting to assign the patent in part. The question is likely to be significant if the ‘assignee’ wishes to assign their interest, or to take infringement action. Recognising these difficulties, in such cases the Register will record the relevant details as an ‘assignment/licence’. Similarly, if only some of the rights of exploitation are assigned (e.g. the right to make, but not the right to sell), then the effect of such an assignment is also probably to create a licence; and in such cases the Register will record the relevant details as an ‘assignment/licence’.

Assignment by a Minor/Infant

It appears to be accepted that an infant or minor (i.e., a person under the age of 18 years) can own intellectual property and assign it: see re D'Ambigou, Andrews v Andrews (1880) 15 Ch D 222 and Chaplin v Lesley Frewin (Publishers) Ltd (1966) Ch 71. However, should the assignment be required to be by way of a deed, this may not be effective as the disposition is voidable by the child when they come of age.

In the case of the Patents Act, the assignment is not required to be by way of a deed, but is merely required to be in writing signed by or on behalf of the assignor and assignee (section 14 of the Act).

The Patents Act provides a system for granting patents by registering prescribed particulars of the patent in the Register (sections 61 and 62). Generally, where there is a system of registration of title it would be expected that once registration has occurred, be it the grant of a patent or an assignment, there would be no power to transfer the interest back in the absence of an order of an appropriate court.

Evidence required

An assignment must be in writing, signed by, or on behalf of the assignor and assignee (section 14(1)). There is no basis to waive this requirement merely because it is not a requirement in the country in which the assignment was executed.

A mere parol agreement (e.g. an oral contract) could not be registered because the Commissioner would not receive it, but a subsequent memorandum in writing between the parties may be capable of registration (In the Matter of Fletcher's Patent 10 RPC 252).

The Commissioner does not necessarily require a copy of an assignment that sets out commercial dealings between the parties. All that is required is a document signed by the assignee and assignor that makes clear that the specified patent has been assigned.

Of course, the assignee can file a copy of a ‘commercial’ deed of assignment as proof. A photocopy is sufficient for this purpose. If the deed is defective, it is possible to file a declaration by all the parties to the assignment as to what they had intended by the deed. It may be possible to obtain information about what the deed should have said (i.e. what the intention of the parties was) from other sources, but it must be sufficient to achieve a reasonable satisfaction of the entitlement of the person (see the file of patent 535211). In Westpac Banking Corp v Dawson (1990) 8 ACLC 681 it was held that an accidental mistake in the name of a party to a contract does not invalidate the contract.

Where the assignee has changed their name between the date of assignment and registration, the Commissioner will require appropriate evidence of the name change sufficient to establish that the assignment is being recorded to the correct person. Documents filed as evidence should be accepted on their face. No substantial investigation is required, and the Commissioner must not go behind the Register to check the entitlement of the recorded patentee. (See George Stack v State of Queensland [1996] FCA 739).

An agreement executed before the grant of a patent may be capable of being registered on the Register, though there may be a great many obstacles to registering such a document (see In the Matter of Parnell's Patent 5 RPC 126, and 27 RPC Comptroller's Ruling E: “an assignment of a patent dated before its grant operates only as an equitable assignment, but notice of the interest of assignment may be entered on the Register”). It appears that an assignment can be registered if it is clear that the patent, when granted, is to be assigned. The document needs to be clear and precise. Note that section 113 is available before grant.