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. Effect of Registration or Non-Registration

Date Published

Key Legislation:

Patents Act:

  • s15 Who may be granted a patent?  
  • s22A Validity not affected by who patent is granted to  
  • s189 Power of patentee to deal with patent  
  • s195 Evidence--the Register  

Registered interests

The Register does not provide a system of title by registration.  Rather the Register is a system of registration of interests of which the Commissioner has been notified; upon the receipt of evidence sufficient to satisfy the Commissioner of the interest that is to be registered, that interest must be entered in the Register.  Evidence is not sufficient if it is considered to be incomplete or misleading to the public.

A patentee may deal with the patent, subject only to the rights appearing on the Register (section 189).  However, the Register is not definitive proof of ownership of rights. Rather, as is specified by section 195(1), the Register is prima facie evidence of any particulars registered in it in (section 195(1)).

In Stack v Brisbane City Council [1999] FCA 1279 the court stated:

"38  The underlying policy of the Act is to deal with ownership of a patent by registration of the original grant and by registration of any subsequent dealings in or with the patent in the Register.  The scheme is to treat the registered proprietor as the owner of the patent subject to any interests in it created by the owner and registered in the Register and thereby to ensure some certainty and finality as regards title to patents: Stack v the State of Queensland (1996) 68 FCR 247 at 251-2 citing with approval Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 at 133. Registration in the Register, while prima facie evidence of any particulars registered in it (s 195) and prima facie evidence of entitlement to ownership of the patent says nothing as to the validity of the patent.

39  Disputes as to ownership of patents and interests held in or over them are to be resolved primarily, but not exclusively, in proceedings for rectification of the Register between the rival claimants to the property interests; s 192.  Such proceedings assume the continued existence of the patent, with patent rights being held by those properly entered in the Register."

Note: The Register does not record caveats.  Further, there is no procedure for notifying interested parties as a condition precedent to the registration of an interest.

Unregistered interests

It follows from section 189 that an unregistered interest may be defeated by a legitimate dealing with the patent.  This provision was discussed in Using Intellectual Property as a Security Australian Intellectual Property Journal Vol 7, page 135, Aug 1996, where it was argued:

“... s.189(1) is also relevant to conflicts between two unregistered interests.  Under s.189(1), the holder of a subsequently arising interest is entitled to deal with the patent as the “absolute owner” of the patent.  Although absolute owner is not defined, it presumably means free of prior interests (unless, of course, they are registered).  In consequence, the subsequently created interest will always prevail over the prior unregistered interest, even if the subsequent interest does not itself ever get registered.  The result is a curious perversion of the usual priority rules.  Under s.189(1), priorities between successive unregistered interests in patents are resolved in favour of the last to be created interest.  As a result the only way to prevent an interest in a patent being defeated by a subsequent interest, registered or unregistered, is to register the interest promptly after creation.”

It may thus be seen that the failure to record an assignment (or any other registrable matter) is at the assignee’s peril.  The only remedy available to a person who fails to record their interest, if that interest is affected by the subsequent registration of another interest, is to take action before the courts to establish that they indeed have an equitable interest, and seek to have the Register rectified.  The Commissioner is unable to otherwise take any action to record the earlier interest.

Other issues resulting from non-registration are:

  • a document which has not been registered is not admissible in any proceedings in proof of the title to a patent or to an interest in a patent unless the court or tribunal otherwise directs or the proceedings are for an order for rectification or to enforce an equity (section 196).  A court has the power to admit an unregistered instrument (Martin Engineering Co v Matflo Engineering Pty Ltd (1987) AIPC 90-430)
  • situations can arise where an equitable owner wishes to take infringement proceedings.  As the right to take action for infringement belongs solely to the registered proprietor of the patent, the equitable owner cannot bring the action in their name. However they can bring the action in the name of the registered owner if they provide the registered owner with appropriate indemnities (Stack v Brisbane City Council (No 2) 35 IPR 296.)
  • unregistered equities may be enforced against the patentee except to the prejudice of a bona fide purchaser for value without notice (section 189(3)).

Entitlement of Later Registered Patentee

The entitlement of an assignee is determined by reference to the eligibility of the original grantee under section 15.  Any subsequent holder of the title to the patent stands in the shoes of the person from whom title was acquired by assignment or by devolution of law.  No holder in the chain of title obtains a better entitlement to the patent than the immediate predecessor in the chain and ultimately of the original grantee.  If at the time of filing the applicant had full entitlement to the invention, any assignments that occur after filing and before grant can be recorded at any time - including after grant.  Note that a patent is not invalid merely because it was granted to a person who was not entitled, or was not granted to a person who was entitled (section 22A).

Assignment of a Patent when there is a Registered Interest

It will sometimes happen that a patentee will assign a patent in respect of which there is a registered interest, such as a licence or a mortgage.  Provided the evidence of the assignment is sufficient to satisfy the Commissioner of the entitlement of the assignee, the assignment is to be recorded.

Amended Reasons

Amended Reason Date Amended
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