During examination we need to consider the legal status (class) of the applicant – that is, whether they are a ‘nominated person’ and/or ‘eligible person’ and whether they are a ‘legal person’.

This is relevant to examination because only certain people/entities can be legally granted a patent.

Nominated persons and eligible persons

The Patents Act defines the terms ‘nominated person’ and ‘eligible person’ as follows:

Nominated person means "the person identified in a patent request to whom the patent is to be granted." This is normally the applicant; and
Eligible person means "...a person to whom a patent for the invention may be granted...". This can be:
- the inventor;
- a person who would be entitled to have the patent assigned to them;
- a person who derives title from the inventor or from the assignee/owner of the patent; or
- the legal representative of a deceased person.

A 'nominated person' on the patent request may not necessarily be an 'eligible person'.

Requirement to be a legal person

For a patent to be granted, the nominated person must be both an eligible person and a legal person. The term ‘legal person’ is not expressly defined in the Patents Act but is defined in the Acts Interpretations Act 1901. At present a ‘legal person’ can be:

an individual (sometimes called a ‘natural person’);
a body politic (for example, the Commonwealth of Australia, a foreign government, a university); or
a corporate entity (for example, a company incorporated under the laws of an Australian state).

For a more comprehensive (but not exhaustive) list of types of legal persons see Annex A – Examples of legal persons.

An examiner should not raise an objection that a person is not a legal person unless the case is very clear – that is, if the applicant belongs to a class of entities that are not considered to be legal persons.

Note that a patent is not invalid merely because it was granted to a person who is not entitled or not granted to a person who is entitled (s22A).

Status of specific types of entities

Foreign entities

Many types of foreign entities are recognised as legal persons and can be granted a patent. Annex A lists them by country.

There are other foreign entities whose standing as legal persons is uncertain under Australian law. For a list of these entities see Annex B – Examples of organisations of uncertain status as legal persons.

No objection should be taken in relation to the status of such bodies as legal persons.

Corporate entities in liquidation

A body corporate (for example, a company) in liquidation can be granted a patent. The liquidator may do anything required or permitted by the Act in the name of and on behalf of the body corporate, but the property remains in the name of the company until it is distributed to creditors.

Two or more corporate entities

Two or more corporate entities may jointly be granted a patent in the same way as 2 or more individuals.

Trusts, firms, and partnerships

Trusts, firms, partnerships and business names are not legal persons and therefore cannot be granted a patent.

A trust can usually be identified by its name (for example, "The AB Family Trust"). However, companies may have the word "Trust" or "Trustee" as a part of their name (for example, “Perpetual Trustee Australia Ltd”) and remain legal persons.

Firms, partnerships and business names are usually identified by the absence of the words ‘Co.’ or ‘Pty Ltd’ in their name, (for example, Davies & Collison). A partnership can also be indicated by the qualification "trading as", for example, A and B, trading as C. (In this regard, see R v The Commissioner of Patents; Ex parte Weiss 61 CLR 240 at page 251).

If there is any uncertainty about whether a trust, firm or partnership is a legal person, the trustee of the trust (without reference to the trust), or the personal names of the partners of the firm or partnership (without reference to the name of the firm or partnership) can be recorded as the applicant.

If the applicant states that they are applying as the trustee of another person, for example, ‘X as a trustee for Y’, Customer Experience Group (CEG) will record the applicant’s name but not the qualification ‘as a trustee for Y’. This is because a person cannot include qualifications in their entitlement to a patent. Where the applicant information has not been corrected in this way, examiners should contact CEG.

Incapable persons

An application for a patent can be made or granted in the name of an ‘incapable person’ – that is, someone who is incapable of doing anything required or permitted by the Act, either because they are a minor (under 18) or because of disability (reg 22.17).

Moreover, it appears accepted that a child can own intellectual property (see re D'Angibou, Andrews v Andrews (1880) 15 Ch D 228 and Chaplin v Lesley Frewin (publishers) Ltd (1966) Ch 71).

Furthermore, an infant or child is able to assign the rights in intellectual property, provided the assignment is not required by way of deed, as appears to be the case under the Act. If a deed is required, then the infant or child would most likely be unable to make the assignment, as the disposition is probably voidable by the child when they come of age. Although the Act provides for a scheme of registration of patents and the issue of a patent deed from the Commissioner, once registration has occurred (be it the grant of a patent or an assignment), there would be no power on the part of the Commissioner to transfer the issue back in the absence of an order of an appropriate court.

Deceased applicant or dissolved corporate entity

A patent can be granted to a deceased person or a defunct company.

If the applicant dies before the patent is granted, the patent may be granted to that person’s legal representative (s15(1)(d)). In this situation the legal representative must file evidence setting out their right to the patent.

Alternatively, if an individual applicant dies or a body corporate applicant ceases to exist before the patent is granted, the application can proceed in their name. A person with legal rights to the patent may then provide suitable evidence of their right and their name is then substituted as the patentee (s215(3)). The same principle applies when one of a number of applicants dies intestate (that is, without a will).

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	02 Jun 2023

5.4.1 Who can file and who can be granted a patent

Also in this Chapter:

Key Legislation:

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Overview

Nominated person, eligible person, legal person – the difference