We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. Authorisation From Parent Application

Date Published

The applicant for a patent of addition, at the time of acceptance, must also be:

  • the applicant for a patent in respect of the main invention (the parent application); or
  • the patentee in respect of the main invention (the parent patent); or
  • have the authorisation of the applicant or patentee above.

If the application purports to be for a patent of addition at the time of examination, but does not meet one of the preceding conditions, an objection should be taken. Note, however, that no objection applies where the application for a patent of addition has been made by an authorised applicant and the ownership of the main invention subsequently changes by devolution or other process of law (sec 81(1)(b)).

If the patent request for the patent of addition is made by a person other than the applicant/patentee of the application/patent in respect of the main invention, then the provisions of reg 3.1(2)(g) apply and a statement of authorisation by the applicant/patentee of the main invention is required.

For statements of authorisation filed before 25 August 2018 there is a requirement that the statement be signed.  The signature on the statement of authorisation must be that of the applicant/patentee in respect of the main invention, as the provisions of sec 213 (which relate to making and signing an application, notice or request) do not extend to the statement of authorisation (see Sir W.G. Armstrong Whitworth and Co.(Engineers) Ltd.'s Application (1969) AOJP 1166). Arguments that the patent attorney acting for the applicant for the patent of addition has been, and still is, authorised to represent the owners of the parent application/patent, are not admissible (see also 2.29.10 Signature Requirements for Received Documents).

Back to top