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. Relevant Cases

Date Published

Key Legislation:

Patents Act:

  • s17 Directions to co-owners  
  • s32 Disputes between applicants etc.
  • s36 Other applications by eligible persons  
  • s153 Effect of order  
  • s154 Jurisdiction of Federal Court  

Related Chapters:

Note: This information applies to requests made before, on or after 15 April 2013.  

The following cases may be relevant to section 32. For cases relevant to section 36 see 7.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A

  • a person claiming to be a joint applicant:

Moriarty v Collins 26 IPR 21

Magee v. Farrell (1985) AIPC 90-296 (Note - decided under reg 76(3) and section 34(4) of the 1952 Act; a different outcome might be expected under section 32 of the 1990 Act)

MainRain Pty Ltd and Sunny Daze Trading Pty Ltd v Trentman Pty Ltd  [2015] APO 42 – the first Office decision to issue on a request made on or after 15 April 2013 – one of the requestors was not a joint applicant and so was excluded under the provisions of section 32 as a party to the proceedings.

  • a joint applicant refusing to sign a notice of entitlement:

Application by Willems, Fritz, et al 21 IPR 569

Stephenson v Donner 24 IPR 108, (1992) AIPC 90-888

  • a person requesting the application proceed in their name only:

Carroll v Harper 1 IPR 537 - where one party did not fulfil its contractual obligations

Tribe v Ranken 1 IPR 561 - where application erroneously include the name of a second person.

Milward-Bason and Burgess (1988) AIPC 90-475 - involving breach of agreement, unauthorised assignment, and non-cooperation and inaction in instigating infringement actions and marketing.

The following decisions may also be relevant to section 32 actions are:

  • Novocretes Ltd.'s Application 43 RPC 171
  • Lanfranconi's Applications 53 RPC 317
  • R&S Trailers Ltd.'s Application 60 RPC 7

The only Office decision relevant to section 17(1) is re Applications by Millward-Bason and Burgess (1988) AIPC 90-475 (which was dealt with under the equivalent provisions of the Patents Act 1952). In that case it was disclosed that the applicants had applied for four patents, one had been granted and the other three applications were additional to and further to the granted patent.  Concurrent applications under sections 63 and 154 [1952 Act, equivalent to sections 32 and 17 of the 1990 Act] were made by M-B relating to the pending applications and the granted patent respectively.

Evidence was adduced by M-B relating to breaches of an agreement between the parties, assignment by B without M-B's consent, non-co-operation and inaction by B in their instigating infringement actions and marketing the invention, and reluctance by B to share costs.

The following matters were decided (with reference to the provisions of the 1952 Act):

  • B's assignment was not in accordance with section 153(3), was therefore invalid and could not be registered under section 21
  • Section 153(2) was applicable to M-B's attempts at marketing the invention
  • B's obstruction of actions against an alleged infringer was not a matter relevant to sections 153 and 154, since infringement actions are dealt with by the Courts according to Part XIII of the Act.

Re section 154(1), M-B's application did not specify the nature of directions sought from the Commissioner, and because the Commissioner's powers under this section are limited, only one direction as such was made.  The Deed of Letters Patent had been returned to the Patent Office by a firm of attorneys, and because of B's lack of interest in the progress and development of the patent, and the probability that M-B would be primarily involved in any future dealings, the Commissioner's delegate directed that the Deed be placed in the possession of M-B.

Amended Reasons

Amended Reason Date Amended
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