7.11.1.13 Person Concerned: Change of Ownership

Date Published

Usually the applicant or patentee of record makes the application under section 223. However, occasionally there is a change of owner of the patent or application that has not been registered or recorded before the section 223 application is made.  In such cases, processing of the application will be conditional upon the filing of a request to record the transfer of interest from the applicant or patentee of record.

In the case of an application, the Commissioner may give a direction under section 113, even if the application has lapsed - see 7.3 Directions. Similarly, a transfer can be recorded on the Register even if the patent has ceased.

In all circumstances, the applicant for an extension of time will need to establish that any error or omission, circumstances beyond control or despite due care involved the person concerned at the relevant time. In the case of an assignment that was made after the patent/application ceased or lapsed, the relevant error or omission or circumstances beyond control must necessarily be associated with the actions of the patentee/applicant of record, and the evidence in support of the extension must be on that basis.

In The University of Newcastle Research Associates Limited [2001] APO 64, the equitable owner took an assignment after the owner of record had made a deliberate decision not to proceed with national phase entry.  As a consequence, the equitable owner was unable to satisfy the requirements of section 223.

On the other hand, where an assignment was made before the patent/application ceased or lapsed, the relevant error or omission or circumstances beyond control are those of the assignee. Of course, in order to overcome the type of issues that arose in Reilly v Commissioner of Patents 36 IPR 314 (where a trustee in bankruptcy was not registered as the patentee), the assignee of a patent/application will need to explain in their section 223 application any failure to record the assignment at an earlier date (see Litton Bionetics, Inc [2002] APO 15). If there was a deliberate intention not to record an assignment, it is unlikely that the Commissioner's discretion would be exercised favourably.