2.18.4 Requirement that Inventors be the Same

The pre-existing patent or patent application must have the same inventor as the standard application or innovation patent being examined, regardless of whether the respective applicants/nominated persons/patentees (as the case may be), are the same.

An objection should also be raised if two specifications claim the same invention and each has a common inventor, but where one or both of the specifications also has other inventors.

For example:

• specification 1 has inventors A and B; and
• specification 2 has inventors A and C;

or

• specification 3 has inventors A and B; and
• specification 4 has inventor A.

In addition, examiners are to question the statements in the patent requests and/or notices of entitlement which set out the inventors' names. In the examples above, there is doubt as to whether the patent requests/notices of entitlement are accurate, since where the invention claimed in two specifications is the same, the inventors would also be expected to be the same.

Equally, the patent request/notice of entitlement should be questioned if two specifications claim the same invention and the applicant/nominated person is the same, but there are no common inventors. In this case, examiners should include a note in their report advising the applicant that if the inventors are in fact the same, an objection under sec 64(2) or sec 101B may apply.

Where a standard application is a divisional application of a pre-existing parent patent, but the inventor(s) of the divisional application have not been stated in the patent request or notice of entitlement, the inventor(s) should be assumed to be the same as those of the parent for the purpose of any sec 64(2) considerations.