A patent may only be granted to the inventor or a person who derives entitlement to the invention from the inventor (sec 15). The applicant for a patent is taken to be a person claiming entitlement, i.e. the nominated person (reg 3.1A). Consequently, unless there is contrary evidence, the Commissioner will grant a patent to the applicant, however requires them to file an explicit statement or notice asserting their entitlement.

The Commissioner also requires a notice of entitlement to be filed in other circumstances, including claiming priority from another application.

For innovation patent applications, statements of entitlement must be included in the patent request.

Requirements

For standard patent applications, a notice (statement) of entitlement to grant and, if appropriate, to claim priority, must be included in the request for examination.

A notice of entitlement can be in a generic form. For example, the requirement is satisfied by a notice in the form:

“I/We, state that the applicant (or each joint applicant) is an actual inventor, or derives title to the invention from an actual inventor(s), or would, on the grant of the patent, be entitled to have the patent assigned to them.

The applicant (or each joint applicant) is an applicant of the application(s) (if any) listed in the patent request or in an applicable declaration under Article 8 of the PCT; or has entitlement from an applicant of the listed application(s), including entitlement to make a request under Section 113 in relation to any original or associated provisional application.”

It may also be made using the entitlement form available on the IP Australia website.

Where the application is a national phase PCT application and the applicant has made the necessary declaration(s) under Rule 4.17, this meets the requirements for filing a notice of entitlement (see 2.20.3.2 Entitlement).

COG will check for compliance and take any appropriate action. This can include treating the request as not having been filed or directing that the request be rectified. COG will not object where the request indicates that a valid notice of entitlement is already on file or PCT Rule 4.17(ii) and (iii) declarations have been made.

Note: Prior to 15 April 2013 there was a requirement for standard patent applications to file a notice of entitlement to grant (reg 3.1(2)(a)) or to claim priority (reg 3.1(2)(b)) before acceptance. In rare circumstances an application filed before this date may have a notice of entitlement on file, in addition to a statement included with the request for examination. Under such circumstances an objection is only required if the facts recorded on the notice of entitlement and on the statement of entitlement do not agree, or are inconsistent with those derived from other documents on file.

No Notice on File at Examination

Where, during examination, it is apparent that a notice of entitlement has not been provided, an objection should be taken. However, no objection applies where the applicant has made the necessary declaration(s) under Rule 4.17 for a PCT application or a statement of entitlement is implicit from the documents on file, for example, where the inventor is also the applicant.

Examiners are to object to the lack of a notice of entitlement, even if this is the only outstanding issue. An objection should also be raised where a notice of entitlement has been provided, but the facts stated in the notice are inconsistent with those derived from other documents on file.

Where a notice of entitlement is filed subsequent to issuing a first report, examiners should issue a further report even if other amendments have not yet been proposed. If the notice provides the required information and does not give rise to any objections, the further report may simply state that a notice of entitlement has now been filed, however the objections raised in the earlier report are still outstanding. If the notice gives rise to additional objections, these should be added to the objections maintained from the previous report.

Where there is no notice of entitlement on the file, but the applicant/attorney has indicated that one has been filed, the applicant/attorney should be requested to either provide a new notice or a copy of the original.

Note: Where a notice or statement of entitlement is not filed as a separate document, but is included in other correspondence, e.g. as a statement in the attorney’s correspondence, this satisfies the requirements for establishing entitlement.

Requirement for New Notice of Entitlement

The applicant may provide a new or amended notice of entitlement at any time up to acceptance and must provide a new notice where facts material to the entitlement of the applicant change, for example, where a new claim to priority is added.

Where amendments involve a change of the applicant, a new notice must be provided, unless the change is supported by evidence of entitlement (e.g. a change under sec 113). For further information on changing the applicant and whether a new notice is required see 2.6.4 Changing the Applicant or Nominated Person.

The new notice is taken to correctly reflect the circumstances at the time the notice was made. If the new notice is inconsistent with facts apparent from the documents on file or otherwise known to examiners, an objection should be raised that the applicant’s entitlement is not clear.

Where an application has been accepted with a notice of entitlement containing facts which are subsequently stated by the applicant or patentee to be incorrect, a notice of entitlement setting out the correct facts may be submitted. The amendment should be accompanied by evidence to establish that an error existed in the original notice, how the error was made, and what are the correct facts. In this situation, the matter is to be referred to the Assistant General Manager (OEP).

Otherwise, a notice of entitlement filed after acceptance will be placed on file and will not be examined by the Commissioner.

Special Considerations

Regulations 3.1(2)(c) to (g) provide for certain other documents to be filed before acceptance, including a notice and other documents concerning the deposit of a micro-organism, orders and declarations under sec 34 and sec 36, and authorisation to apply for a patent of addition. These requirements may be met in a further notice, e.g. provided using the entitlement form available on the IP Australia website, filed before acceptance or all required notices may be combined. A notice may also include a statement required for another provision of the Act or Regulations, for example, a statement that the applicant of a divisional application is entitled under sec 113 to apply. For further information see: