How to challenge entitlement in Australia.

BY: HEDIE MEKA PhD

Our article on patent entitlement and ownership in Australia briefly outlined how patent ownership is determined under the Australian practice.

This article focusses on the procedures available under the Australian Patents Act 1990 (‘the Act’) to dispute entitlement to a patent application or a granted patent. Such avenues may be useful to restore a patent filed by an entity that was not entitled to the grant of the patent to its rightful owner.

The Commissioner has the power under section 17(1) to give directions to settle disputes between co-owners of a patent as to dealings with the patent or the grant of licences under it.

Section 32 is an avenue for the Commissioner to determine a dispute between any two or more joint applicants in relation to a patent application whether, or in what manner, the application should proceed. The patent application may either be pending or lapsed. This section empowers the Commissioner to make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the applicants alone, or for regulating the manner in which it is to proceed, or both.

Determination of entitlement can also be resolved under sections 33 to 36.

Section 33 is a ground for opposition that the nominated person is not an eligible person as prescribed in section 15 of the Act.

An application under section 34 to file a complete application may be invoked where a court has determined in respect of a patent that a person may be an eligible person either with or instead of the patentee.

If a patent has been revoked by the Commissioner following an offer to surrender by the patentee, a person may apply under section 35 to be an eligible person in relation to the invention, either alone or in combination with the former patentee.

Section 36 is a broad provision wherein entitlement disputes involving one or more third parties relating to a patent application (pending or lapsed) may be determined by the Commissioner.

In light of the Commissioner’s statutory power to make directions or rectify the Register, 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 once an entitlement determination is made. Sections 33 to 36 enable a person who has been determined to be an eligible person to make a new complete application which maintains the priority date of the other application or patent. This is useful when the application has lapsed, or the patent has been revoked.