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In respect of a patent application, under section 36 (s36) of the Patents Act 1990, an applicant (the s36 applicant) may seek a declaration from the Commissioner of Patents that the person nominated for grant of the patent (the named patent applicant), is either not an eligible person or not the only eligible person.

In other words, s36 applicants can request a declaration that they are correctly the sole patent applicant or a co-applicant. 

Although IP Australia does not frequently rule on these grounds, two recent decisions have considered the eligibility for grant of a patent with respect to applications pursuant to s36.

One eligible person

In Vuly Pty Ltd v Wei Yang [2020] APO 13, a Delegate of the Commissioner of Patents considered whether the person nominated for grant of a patent was an eligible person and entitled to grant of the patent.

The application was the third application on the matter: the first and second applications were declined by the delegate, because the filed evidence was flawed. As discussed at [52] to [64], it appears the evidence intended to be filed was not filed. The delegate seemed to accept some responsibility on behalf of the patent office and its platform for electronic submission of evidence and decided that the third application was not subject to “double jeopardy” because there was new evidence in suit. In fact, the named patent applicant’s own evidence assisted the delegate at [58] in coming to a conclusion.

At [87], the delegate concluded that the application in question was based on information communicated to the named patent applicant during his employment by the s36 applicant, with the patent application filed after the named patent applicant ceased employment with the s36 applicant. Further, the delegate concluded at [88] that the named patent applicant was not an inventor of the subject matter claimed in the application. The delegate held at [90] that the s36 applicant, rather than the named patent applicant, was the sole eligible person in respect of the patent application and therefore the correct patent applicant.

Two eligible persons

John Antony v NewSouth Innovations Pty Limited [2019] APO 41 was decided 28 August 2019, but only published 10 March 2020. This decision considered:

(i) whether a named inventor was correctly named as an inventor, and if correctly named as an inventor,

(ii) whether the inventor was entitled to grant of a patent in conjunction with the named patent applicant.

The delegate held at [66] that John Antony was correctly named as an inventor on the application, and at [68] that he was under no obligation to assign rights in the invention to the named patent applicant. Consequently, at [69] the delegate declared that John Antony was an eligible person with respect to the patent application, i.e. he was an inventor and a co-applicant in conjunction with the named patent applicant.

What can we learn? 

These decisions serve as a reminder that in instances where the generation of intellectual property within a project is expected, likely or even possible:

  • project owners (usually employers) should ensure robust intellectual property policies are in place and disseminated to all project team members
  • key project team members (e.g. employees, collaborators and contractors), should keep accurate records of their project contribution to ascertain and/or substantiate their standing as an inventor and potentially as a patent applicant or co-applicant
  • project owners should control and/or record the distribution of information to substantiate their standing as a patent applicant and to preclude others from relying on this information to assert themselves as a patent applicant
  • patent attorneys should ensure that the evidence filed for any matter is the evidence they intended to file, and patent applicants should closely examine what has been filed.

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