2.26.1.1 Trafficking in Inventions, Trafficking Exemptions

In this topic:

Except for the circumstances specified in sec 182(3), employees in the Patent Office are prohibited from engaging in any transactions involving an invention or a patent. As all staff employed in IP Australia under a duty statement are employed in the Patent Office (as well as the Trade Marks Office and the Designs Office), the prohibition is not limited to patent examiners or to staff directly processing patent applications. “Employee” is defined in schedule 1 and accordingly the terms of employment are immaterial.  Therefore, the prohibition applies irrespective of whether a person is employed on a salary basis or otherwise.

In the context of sec 182, the term "patent" is not confined to the definition in schedule 1, but also includes a foreign patent. However, the "invention" referred to in sec 182 is to be understood in terms of the definition specified in that schedule.

Prohibition

The prohibition under sec 182 is of a broad nature and covers transactions including:

• acquisition for the purpose of manufacture;

• acquisition for licensing to others to manufacture, acquisition in order to exclude competition to a family business, investment;

• brokering the transfer of an invention between companies; and

• acting as an intermediary for the transfer of a patent between companies, etc.

There is no allowance for waiving the provision, or for relaxing its interpretation other than those of sec 182(3) (see below). Any transaction by a staff member involving an invention or patent and outside the circumstances specified in sec 182(3) is void. Furthermore, such a transaction is an offence with a penalty.

It may be assumed that sec 182 includes activity that is in some way controlled or directed by a staff member. Thus, the use of a family company or trust (for example), where the employee has a controlling interest, is likely to be in breach of sec 182. Staff members involved in such arrangements will need to obtain their own legal advice about their position.

Note: Section 182 is limited to actions by the Commissioner, Deputy Commissioner, or an employee. It is not a prohibition on activities before a person is employed in such a capacity, nor after such employment has terminated. Thus, the acquisition of a patent before becoming an employee is valid. However, any sale, assignment or transfer of such a patent during the term of employment would constitute an un-permitted trafficking in the invention.

Exemptions

An inventor, or a person to whom an invention is bequeathed, is exempt from the above restriction. It therefore follows that under the Patents Act, staff are free to apply for patents, to assign, sell or licence such patents, and to dispose of inventions, provided they are the inventors or have been bequeathed the invention. However, other restrictions may arise by way of the Public Service Act, for an employee wanting to deal with such an invention.