7.2.8 Entitlement - Sections 33, 34, 35, 36 and 191A

Also in this Chapter:

• 7.2.1 Oppositions to grant of a standard patent-Section 59 oppositions
• 7.2.2 Opposition to Innovation Patents-Section 101M Oppositions
• 7.2.3 Oppositions to an Extension of Term of a Pharmaceutical Patent (Section 75(1) Oppositions)
• 7.2.4 Oppositions to Request to Amend an Application or Other Filed Document (Section 104(4) Oppositions)
• 7.2.5 Oppositions to Extensions of Time Under Section 223 (Section 223(6) Oppositions
• 7.2.6 Oppositions to Grant of a Licence (Regulation 22.21(4) Oppositions)
• 7.2.7 Disputes Between Applicants and Co-Owners (Directions Under Section17 and Determinations Under Section 32)

Sub-chapters:

• 7.2.8.1 Procedure - Requests for the Commissioner to Make a Determination of Entitlement
• 7.2.8.2 Finalising the Request
• 7.2.8.3 Remedies Where Declaration Made
• 7.2.8.4 Patent Applications under Sections 33 to 36
• 7.2.8.5 Relevant Cases​​​​​​​

Key Legislation:

Patents Act:

• s15 Who may be granted a patent?
• s22A Validity not affected by who patent is granted to  
• s33 Applications by opponents etc.  
• s34 Applications by eligible persons arising out of Court proceedings  
• s35 Applications by eligible persons following revocation by Commissioner  
• s36 Other applications by eligible persons 
• s59 Opposition to grant of standard patent  
• s137 Revocation on surrender of patent
• s138 Revocation of patents
• s191A Commissioner’s powers to rectify the Register
• s192 Orders for rectification of Register 

Patents Regulations:

• ​​​​​​​reg 3.7 Form of certain applications
• reg 10.7 Rectification of Register
• reg 22.8 Costs
• reg 22.24 Practice and procedure other than for opposition proceedings
• Schedule 7 Fees

Note: This information applies to requests for determinations filed under sections 35, 36 and 191A and applications made for sections 33, 34, 35, and 36, on or after 15 April 2013.

In this topic:

Relevant Legislation

The Act

The Regulations

Overview

Relevant Legislation

The Act

The Regulations

Overview

Subsection 15(1) of the Act specifies a patent for an invention may only be granted to a person who:  

(a) is the inventor; or

(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or

(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

This raises particular issues where there are disputes about who is the actual inventor, who derives entitlement from them or when, due to an error, a patent is granted to a person who is not entitled or the name of an entitled person is omitted.

Notably section 22A provides that a patent is not invalid merely because it (or a share in the patent) was granted to a person not entitled or was not granted to a person who is entitled.

Consequently the Act provides a number of avenues for matters of entitlement to be resolved and for applications and patents to proceed in the name of the correct parties. These include:

• requests under section 32 in relations to joint applicants;
• applications for a declaration (and directions) under section 36;
• application for a determination under section 35, as a result of the revocation of a patent under section 137 following an offer to surrender;
• opposition under section 59 to the grant of a standard patent;
• revocation of a patent by a Court section 138;
• application for a declaration under section 191A;
• application for a Court order under section 192.

All but sections 138 and 192 fall within the Commissioner's authority to determine.

Following a determination of entitlement, depending on the finding, a direction can made that the application proceed in the name of the entitled persons or, for a patent, for the Register to be rectified to reflect the correct patentees.  However, the Act also provides in some circumstances for a new application to be filed by an entitled person in some circumstances - see sections 33, 34, 35 and 36.  This may be appropriate where the relevant application has lapsed, or the patent has been revoked, or where parts of an application with different entitlement can be separated out and made the subject of new applications in the name of the relevant entitled person.