5.7.2.3 Changing the applicant or nominated person

Also in this Chapter:

• 5.7.2.1 Form of the Request to Amend the Patent Request
• 5.7.2.2 Non-allowable amendments to a patent request
• 5.7.2.4 Converting the application
• 5.7.2.5 Amendments to the notice of entitlement and other documents

Key Legislation:

Patents Act:

• s16 Co-ownership of patents
• s32 Disputes between applicants etc.  
• s104 Amendments by applicants and patentees  
• s113 Persons claiming under assignment or agreement 

Patents Regulations:

• reg 3.1A Applicant taken to be nominated person​​​​​​​​​​​​​​

On this page

• Overview
• Examination practice:
  • General considerations:
    • Who can request amendment to the applicant name
    • Change of applicant as a result of a merger
  • Changing the applicant under s104
  • Changing the applicant under s113:
    • Joint applicants;
    • Processing of s113;
  • Name on divisional applications
  • Rule 92bis name changes
  • Name on notice of entitlement
• Case Law:
  • Changing the applicant under s113.

Overview

The applicant is the one indicated in the patent request, regardless of any contrary indication in other documents on file.

The applicant name may be changed under s104 (amendments by applicants and patentees) or s113 (persons claiming under assignment or agreement).

Note that under reg 3.1A, the applicant is taken to be the nominated person. Therefore, any amendment to make the nominated person different from the applicant has no effect, as it is not possible to do so. Applicants should be advised of this fact. Conversely, any amendment to the applicant will result in a change to the nominated person.

Examination practice

General considerations

Who can request amendment to the applicant name

An amendment (s104) can only be requested by the applicant, that is, the person currently recorded as the applicant on the patent request. Where there are joint applicants, every applicant must make the request for amendment.

If an amendment request is made by anyone other than the applicant, whether or not it is made jointly with the applicant, it has no legal standing.

A s113 request can only be made by a person who has become entitled to the patent or to an interest in the patent or to an undivided share in the patent or in such an interest.

Change of applicant as a result of a merger

Where a change of applicant occurs as a result of a merger, the applicant name can be amended under either s104 or s113.

Changing the applicant under s104

The applicant can request an amendment to the applicant name at any time (including during examination). The effect of such an amendment is to change the applicant details recorded.

No formal evidence to support the change is required, unless there is some contrary indication of their entitlement to the invention. If evidence is required, it may be in the form of a new notice of entitlement, a declaration, a deed of assignment, or a deed poll.

The applicant will need to provide a new notice of entitlement unless the change is clearly supported by documents already on file (for example, a certificate of marriage). Where the documents on file are complex (for example, a deed of assignment), examiners should request a new notice.

There is no formal requirement to file a new patent request.

Where changes have not been reflected in RIO, follow the procedures outlined in the RIO Manual.

Changing the applicant under s113

Under s113, a person who has become entitled to the patent can request an amendment that has the effect of changing who the applicant is. The request must be accompanied by documents proving that the person making the request is an eligible person. The effect of such an amendment is that the person making the request will be recorded as the new applicant.

The general assumption is that where a request is made under s113, the new applicant is aware of and accepts responsibility for any actions initiated by the original applicant in connection with the patent application. Accordingly, any applications or requests by the original applicant before the date of the Commissioner’s direction under s113(1) will continue to be processed as if they had been made by the new applicant, except where discontinuation of such action has been specifically requested.

Following a Commissioner’s direction under s113, all future actions, requests and applications must be made in the name of the new applicant.

Joint applicants

If there are joint patent applicants, there is no statutory requirement for one co-applicant to obtain consent of the other co-applicant(s) when assigning their part-interest in an application. This contrasts with the process for recording a part-assignment of a patent (see Guidance on co-ownership of patents s16).

Therefore, the Commissioner will generally not require a co-applicant’s consent to a change of applicant under s113.

Processing of s113

Requests under s113 are processed by CEG and therefore should be referred to them.

If the period for acceptance is about to expire, the examiner should immediately contact CEG to expedite outstanding requests, in order to be able to issue a further examination report or accept the application.

Name on divisional applications

A divisional application is filed to divide a patent application (known as the parent application) into two or more applications.

Where a divisional application is filed in a name other than that of the applicant of the parent application, the examiner should raise an objection. In response to this objection, the divisional applicant name may be amended under s104 (requested by the applicant of the parent application) or s113 (requested by persons claiming under assignment or agreement).

Similarly, where there is an application from joint inventors and the invention by one or more of them is divided out from that parent application and made the subject of a divisional application, the applicant name in the parent application can be amended under s104 or s113.

Rule 92bis name changes

Rule 62bis of the PCT allows the applicant to amend certain bibliographic information of the Applicant during the International phase.

If the name of the applicant is amended under Rule 92bis of the PCT, IP Australia will recognise the change without any further action by the applicant.

Rule 92bis name changes are processed by CEG.

Name on notice of entitlement

If there is a change of applicant after the notice of entitlement has been filed, the new applicant will need to file a new notice of entitlement, unless the change is supported by evidence of entitlement (for example, an s113 request).

Case law

Changing the applicant under s113

If there are joint applicants, any issue that arises in progressing the application may be resolved under s32 (Commonwealth Scientific and Industrial Research Organisation v Hazlewood et ors 31 IPR 67).