5.4.2 Statement of entitlement

Date Published 09 Oct 2023

Also in this Chapter:

Sub-chapters:

5.4.2.1 Annex A - Examples of Declarations under Rule 4.17

Key Legislation:

Patents Act:

s15 Who may be granted a patent
s113 Persons claiming under assignment or agreement

Regulations under the PCT:

Rule 4.17 Declarations Relating to National Requirements
Rule 92bis Recording of Changes by the International Bureau

Administrative Instructions under the PCT:

s422 Notifications Concerning Changes Recorded under Rule 92bis.1
s422bis: Objections Concerning Changes in the Person of the Applicant Recorded under Rule 92bis.1(a)

Science and Industry Research Act:

s54 Inventions etc. by officers

PCT Receiving Office Guidelines:

para 310-311 Changes Concerning the Applicant, Inventor, Agent or Common Representative

Related Chapters:

5.7.2.3 Changing the applicant or nominated person

Overview

A statement of entitlement is a statement by the applicant that they are the actual inventor or derives (or would derive) entitlement to the invention from the inventor (s15).

For standard patent applications, a statement of entitlement must be included with a request for examination.

This section looks at basic requirements of statements of entitlement, including:

who can make them;
their effect; and
how they are dealt with during examination.

Prior to 15 April 2013, the Statement of Entitlement was referred to as the Notice of Entitlement.

Note that in rare circumstances, an application filed before 15 April 2013 may have both a notice of entitlement and a statement of entitlement. 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.

Requirement to file a statement of entitlement

All standard patent applications must include a statement/notice of entitlement to grant and, if appropriate, to claim priority, along with the request for examination.

Before examination, CEG will check that a statement of entitlement has been provided. If it has not, CEG may either treat the request as not having been filed or direct the applicant to supply the statement.

When the examiner starts the examination, they only need to check that there is a statement of entitlement or that the applicant has responded appropriately to CEG’s request for the statement. In most cases, the request for examination will automatically include a statement of entitlement through a check box option provided via eServices.

For national phase PCT applications, declaration(s) under Rule 4.17 indicated on the front page of the pamphlet meet the requirements for filing a statement of entitlement, and so no separate statement is required. The applicant does not have to file a copy of the declaration with us and these declarations are not routinely placed on file. However, if required, the examiner can download a copy of the declaration from Patentscope. If the declaration is not available on Patentscope, the examiner can ask CEG to obtain a copy from the IB.

No Statement on File at Examination

Where, during examination, it is apparent that a Statement 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 or has been included in other correspondence, e.g. as a statement in the attorney’s correspondence.

If the above exceptions do not apply, 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.

No Statement on File and Rule 4.17 Declarations are deficient

Where there is no notice of entitlement on file and there is a deficiency in the Rule 4.17 declaration(s), examiners should include an objection that the entitlement of the applicant is not clear and explain why. It is not sufficient to merely object that there is no notice of entitlement on file.

In practice:

If no priority is claimed and a declaration under Rule 4.17(ii) nominating Australia is present, then the notice of entitlement requirements are met.
If priority is claimed:

a. If declarations under Rule 4.17(ii) and Rule 4.17(iii) nominating Australia are both present, then the notice of entitlement requirements are met.

b. If a declaration under Rule 4.17(ii) nominating Australia is present, but a declaration under Rule 4.17(iii) is not present, then a statement of entitlement to claim priority is required.

For example, if there is a US basic and the applicant in the PCT application is not the inventor (i.e. it is a company that is the assignee of the basic applicant), the applicant will need to establish entitlement to claim priority. This can be done by a declaration under Rule 4.17(iii). If there is no declaration under Rule 4.17(iii), an objection should be taken that the applicant has not stated its entitlement to claim priority from the basic document. See also PERP code [B5].

Additionally, if the name of the inventor(s) is not included in the PCT Request or another document on file, and a declaration under Rule 4.17(i) (relating to the identity of the inventor) has not been made, an objection should be raised that the entitlement of the applicant is not clear.

Statements/notices of entitlement

Who can make the statement/notice of entitlement?

The statement can be made by the applicant, a person authorised by the applicant, or the patent attorney of the applicant.

If there are joint applicants, one applicant may make the statement on behalf of the others, the applicants may make a joint statement, or separate statements.

The statement of entitlement does not need to be signed and dated.

Employer–employee agreements

Employers may claim entitlement to inventions produced by their employees. Normally the transfer of title will be covered by a service agreement or other such instrument of law (s15(1)(b)).

For example, s54(1) of the Science and Industry Research Act 1949 stipulates that any invention or improvement of any process, apparatus or machine made by an employee of CSIRO in the course of their duties is the property of CSIRO. Any reference by CSIRO to s54(1) is generally sufficient to establish entitlement.

If the applicant states that their entitlement is through this type of agreement, we do not need to ask for additional supporting evidence. However, if there is information on file that seems to contradict this statement, the examiner may request further information from the applicant regarding their entitlement.

Form of the statement/notice of entitlement

The statement can be in a generic form. The entitlement form available on the IP Australia website can also be used to generate the standard required text

The standard text simply reads:

"I/We state:

that the applicant (or each joint applicant)
- is an actual inventor or
- derives title to the invention from the actual inventor(s) or
- would be entitled to have the patent assigned to them when it is granted
that 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 s 113 in relation to any original or associated provisional application."

Explicit statements of devolution, for example, that the actual inventor has assigned entitlement to the applicant, are not required. However, if such a statement is provided, then the applicant may need to provide additional information to demonstrate the transfer of title.

Application number in Statement of Entitlement

A statement of entitlement must be associated with the relevant application, for example, by the applicant including the relevant application number on the statement. A link between the statement and the relevant application may also be apparent, from the statement itself, from documents filed with the statement or from other documents on file.

If the statement is filed with an application, the mere association of the statement with the application documents is sufficient and examiners should not object to the absence of an application number in these circumstances.

Changes to statements/notices of entitlement

When a new statement of entitlement is required

The applicant may provide a new or amended notice of entitlement at any time up to acceptance.

A new statement must be provided where:

facts material to the entitlement of the applicant change;
there was an error in the original statement; or
applicant details change during the international phase.

Change of significant facts

The applicant normally needs to provide a new statement of entitlement where facts material to their entitlement change.

For example, a new statement might be needed where there has been:

a change in priority details – for example, a new priority document has been added;
a change in applicant details – for example, name or ownership; or
an assignment of the application.

In the case of a change of applicant, a new statement of entitlement may not strictly be required if the change is supported by evidence of entitlement (for example, a change under s113).

The new statement should correctly reflect the circumstances at the time it was made. If the new statement is inconsistent with facts in the documents on file or otherwise known to the examiner, the examiner should raise an objection that the applicant’s entitlement is not clear.

Error in the original statement

If the applicant or patentee realises after their application has been accepted that their statement of entitlement contains an error, they may submit an amended statement of entitlement. They should provide evidence to establish that there was an error in the original statement, how the error was made, and what the correct facts are. In this situation the matter is to be referred to the Assistant General Manager (Oppositions).

Rule 92bis changes during international phase

If the applicant has made PCT Rule 4.17 declarations and their details change during the international phase (under Rule 92bis), they will need to submit a new notice of entitlement unless there is appropriate documentary evidence that supports their right to make the change (noting sections 422 and 422bis of the PCT Administrative Instructions and paragraphs 310 and 311 of the PCT Receiving Office Guidelines).

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	02 Jun 2023