2.6.4.2 Section 113 Amendments (Assignment, Agreement or Operation of Law)

In this topic:

An amendment that has the effect of changing the applicant and which is requested by the new applicant must proceed under sec 113. The request must be accompanied by documents which establish the facts alleged in the request. Note that the effect of sec 113 is to record the person making the request as the applicant  (or joint applicant as the case may be).  Therefore, a request under sec 113 can only proceed if the evidence demonstrates that the person making the request is an eligible person.

The general assumption is that where a request is made under sec 113, the new applicant is aware of, and accepts responsibility for, any actions initiated by the original applicant in connection with the application for a patent. Accordingly, any applications or requests made by the original applicant before the date of the Commissioner's direction under sec 113(1), will continue to be processed as if they had been made in the name of the new applicant, except where discontinuation of such action has been specifically requested.

Following a Commissioner's direction under sec 113, all future actions, requests and applications must be made in the name of the new applicant.

Joint Applicants

In the case of joint patent applicants, there is no statutory requirement under sec 113(1) for one co-applicant to obtain consent of the other co-applicant(s) when assigning their part interest in an application (in contrast to recording a part-assignment of a patent under sec 16). Therefore, the Commissioner will generally not require a co-applicant's consent to an assignment under sec 113. Any issue that arises as to the progressing of the application may be resolved if necessary under sec 32 (see Commonwealth Scientific and Industrial Research Organisation v Hazlewood et ors 31 IPR 67).

Processing of Request

Requests under sec 113 are processed by COG. If a request is received during examination, or consideration under sec 50, examiners should refer the case to COG for appropriate action. However, where the period for acceptance is about to expire, examiners should immediately contact COG to expedite outstanding requests, in order to issue a further examination report or accept the application (see also 5.16.4.2.7 Acceptance Error Message – Outstanding Amendment Service Request).

If a notice of entitlement was filed before the name change, a new notice is not required because the change under sec 113 will have been supported by documentary evidence.