Section 113 empowers the Commissioner to direct that a patent application proceed in a different name or that a joint applicant be recorded where a person has become entitled, by virtue of assignment or agreement or by operation of law, to the interest of the original applicant or to an undivided share in that patent or in that interest.

Section 113 is as follows:

113. Persons claiming under assignment or agreement:

1. Where, before a patent is granted, a person would, if the patent were then granted, be entitled under an assignment or agreement, or by operation of law, to:

(a) the patent or an interest in it; or

(b) an undivided share in the patent or in such an interest;

the Commissioner may, on a request made by the person in accordance with the regulations, direct that the application proceed in the name of the person, or in the name of the person and the applicant or the other joint applicant or applicants, as the case requires.

2. Where the Commissioner gives a direction:

(a) the person is to be taken to be the applicant, or a joint applicant, as the case requires; and

(b) the patent request is to be taken to have been amended so as to request the grant of a patent to the person, either alone or as a joint patentee, as the case requires.

Note: Before grant of an application, if the applicant has merely changed their name, this can be recorded by way of an amendment to the patent request under sec 104.

For more information see 2.6.4.2 Section 113 Amendments (Assignment, Agreement or Operation of Law).

Requesting a direction under section 113

A request for the Commissioner's direction under sec 113 must be made in accordance with reg 10.14 in the approved form (available on the IP Australia website) and be accompanied by the prescribed fee.

In order for the Commissioner to be satisfied that a sec 113 direction should be made, the requestor must file relevant documents which establish the proposed applicant's entitlement. Similar documents and requirements apply as for recording an interest in the Register of Patents - see 3.10.2.1 Recording New Particulars in the Register, 3.10.2.2.1 Assignment under the heading ‘Evidence required’.

Note: Where a direction is given under sec 113, the person is recorded as both the applicant and nominated person. Thus, although a patent application need not be made by an eligible person (and indeed can be made by an unincorporated body of persons), a person making a sec 113 request must be an eligible person.

Exercise of the Commissioner’s discretion

The Commissioner has a discretion under sec 113 whether to provide a direction as requested.

Before directing the application to proceed in a different name, the Commissioner must be satisfied that the new entitlement has been created. If there is any doubt, more evidence or clarification may be requested.

Lapsed applications

The Commissioner can give a direction under sec 113, if the application has lapsed. The requestor will however need to apply under sec 223 to get the application restored (see 3.11.1 Extensions of Time – Section 223).