7.2.8.3 Remedies Where Declaration Made

Also in this Chapter:

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

Key Legislation:

Patents Act:

• s32 Disputes between applicants etc.  
• 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  
• s191A Commissioner's power to rectify register  

Related Chapters:

• 7.2.8.4 Patent Applications under Sections 33 to 36

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

Where a declaration of entitlement is made it will be that a person currently recorded as an applicant or patentee is not entitled or that a person not recorded as a patentee or applicant is entitled.  The Act provides several remedies to ensure that as a consequence of the declaration the correct entitlement is recorded in relation to an application or patent.

• Under section 32 or section 36 the Commissioner may direct that the application proceed in the name of all persons found entitled or may, subject to submissions made by the parties, make another direction that resolves the matter. This might, for example, allow the application to proceed only in the name of the original applicant if disputed subject matter is deleted.
• Under section 191A the Commissioner may rectify the Register to name as patentees the persons found to be entitled to a share in the patent.
• Sections 33 to 36 enable a person who has been determined to be an eligible person to make a complete application which maintains the priority date of the other application or patent (See 7.2.8.4 Patent Applications under Sections 33 to 36).