2.6.3.5 Section 15(1)(b) - Service Agreements

Date Published

Subsection 15(1)(b) is intended primarily to cover service agreements under which employers may be entitled to have the rights to inventions made by employees assigned to them.

The notice need not specifically mention sec 15(1)(b), nor use its precise wording. A statement to the effect that:

"the applicant would, on the grant of the patent, be entitled to have the patent assigned to them."

will suffice.

The following statements are also acceptable:

  • "The inventors are employees of the nominated person and the invention was made in the course of their normal duties."
  • "The nominated person is an employer of the inventors and the invention belongs to the former by virtue of sec 39 of the United Kingdom Patents Act 1977."

Note:  Section 39 of the 1977 UK Act specifies the circumstances under UK law that must exist for an employer to derive entitlement to an invention made by an employee. Where such circumstances exist, they would entitle the employer to the grant of a patent in Australia.

Where the applicant specifies that entitlement is by virtue of sec 15(1)(b), examiners need not ask for any further information or require documentary evidence in support.

In applications made by the C.S.I.R.O., a reference to sec 54(1) of the Science and Industry Research Act (1949) is acceptable as evidence of an entitlement under sec 15(1)(b).