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3.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A

Date Published

Note: This information applies to requests for determinations filed under sections 35, 36 and 191A and applications made for sections 33, 34, 35, and 36, on or after 15 April 2013.

Relevant Legislation

The Act

Section 15

Who may be granted a patent

Section 22A

Validity not affected by who patent granted to

Section 33

Applications by Opponents

Section 34

Applications by eligible persons arising out of Court proceedings

Section 35

Applications by eligible persons following revocation by the Commissioner

Section 36

Other applications by eligible persons

Section 138

Revocation of patents

Section 191A

Commissioner’s powers to rectify the Register

The Regulations

Reg 3.7

Form of certain applications

Reg 10.7

Rectification of Register

Reg 22.24

Practice and procedure other than for opposition proceedings

Reg 22.8


Schedule 7



Subsection 15(1) of the Act specifies a patent for an invention may only be granted to a person who:  

(a) is the inventor; or

(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or

(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

This raises particular issues where there are disputes about who is the actual inventor, who derives entitlement from them or when, due to an error, a patent is granted to a person who is not entitled or the name of an entitled person is omitted.

Notably section 22A provides that a patent is not invalid merely because it (or a share in the patent) was granted to a person not entitled or was not granted to a person who is entitled.

Consequently the Act provides a number of avenues for matters of entitlement to be resolved and for applications and patents to proceed in the name of the correct parties. These include:

  • requests under section 32 in relations to joint applicants;
  • applications for a declaration (and directions) under section 36;
  • application for a determination under section 35, as a result of the revocation of a patent under section 137 following an offer to surrender;
  • opposition under section 59 to the grant of a standard patent;
  • revocation of a patent by a Court section 138;
  • application for a declaration under section 191A;
  • application for a Court order under section 192.

All but sections 138 and 192 fall within the Commissioner's authority to determine.

Following a determination of entitlement, depending on the finding, a direction can made that the application proceed in the name of the entitled persons or, for a patent, for the Register to be rectified to reflect the correct patentees.  However, the Act also provides in some circumstances for a new application to be filed by an entitled person in some circumstances - see sections 33, 34, 35 and 36.  This may be appropriate where the relevant application has lapsed, or the patent has been revoked, or where parts of an application with different entitlement can be separated out and made the subject of new applications in the name of the relevant entitled person.

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