Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Recording New Particulars in the Register

Date Published

Key Legislation:

Patents Act:

  • s187 Registration of particulars of patents etc.  
  • s193 Inspection of documents  
  • s223 Extensions of time  

Patents Regulations:

Section 187 together with reg 19.1(1)(a) and (b) provide that entitlement or certain interests in a patent can be recorded in the Register.  For that to occur, an application must be made in the approved form, and there must be proof of the entitlement or interest to the reasonable satisfaction of the Commissioner (reg 19.1(2)).

To establish the applicant's particular title to, or interest in, the patent, the following list is illustrative of the kinds of material that may require to be filed:

  • a deed of assignment signed by both the assignee and assignor
  • a deed of sale
  • a letter from the Registrar of a Court, or order of a Court dealing with appointment of receiver, and various supporting evidence in bankruptcy and liquidation actions
  • a court order providing authority for transfer of title
  • an authenticated copy of the grant of Probate, or Letters of Administration (note that the transfer cannot be to "the estate of X")
  • mortgage documents (or a document signed by all relevant parties recording the existence of the mortgage)
  • a licence agreement (or a document signed by all relevant parties recording the existence of, and any restrictions in, the licence)

In order for the Commissioner to be reasonably satisfied, attested copies of all deeds and documents need to be supplied to the Commissioner for retention on the official file.  It will be adequate authentication if the copy carries, or has attached to it, a signed certificate to the effect that it is an accurate, true, or correct copy of the original.  Such a certificate may be given by any person who has compared the copy with the original; it need not be given by a Justice of the Peace, Notary Public, or other official.  Where a document contains commercially sensitive information, a redacted copy of the document can be supplied to the Commissioner.  However, portions relevant to the purpose for which the document is filed cannot be blanked out, because the document would then be incomplete and misleading.

In recording an interest pursuant to reg 19.1, the Commissioner is required to enter "particulars of ....(the entitlement)".  This will require a clear identification of the particular instrument relied upon - e.g. "licence agreement dated ...".  The main function of the Register is to identify the proprietor, and it is less important how they became the proprietor (see Coflexip Stena Offshore Ltd’s Patent [1997] RPC 179 at 193). Consequently, the nature of the instrument need not be identified in detail.

Section 187 specifically mentions particulars for “patents in force”.  The reference to “in force” concerns the time at which the matter requiring recording in the register took place.  That is, the Commissioner will record title to, or interest in, a patent whether or not it is in force - provided that the title or interest arose while the patent was still in force. In circumstances where a patent has ceased and is subject to restoration proceedings under section 223, the Commissioner will not record any change in title or interest that occurred after cessation until after the restoration of the patent.  If the term of a patent has expired, the Commissioner will not record any change in proprietorship occurring after expiry unless and until the term of the patent is extended whether by way of extension of term or re-grant.  See the judgements in:

  • Re Usines de Melle's Patent (1954) 91 CLR 42 and
  • Re Sanofi's Petition for Extension of Term (1981) 51 AOJP 2142.

Any documents filed pursuant to section 187 are available for inspection under section 193.

Amended Reasons

Amended Reason Date Amended
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