IP Reform - notice of entitlement for patents
5 Apr 2013
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 comes into full effect on 15 April 2013. Changes to the requirement for filing notices of entitlement will be implemented at the same time. The information below is provided to help you understand the changes.
A patent is granted to the inventor or to a person who derives entitlement to the invention from the inventor. Under the Act and Regulations the applicant for a patent is taken to be a person claiming entitlement (the nominated person).
Unless there is contrary evidence the Commissioner will grant a patent to the applicant but requires them to file an explicit statement asserting their entitlement. Where entitlement is incorrect there are a number of mechanisms under the Act for the ownership of an application or patent to be corrected.
The Commissioner also requires statements of entitlement to be filed in other circumstances, including claiming priority from another application.
Previously notices or statements of entitlement were required to be filed before acceptance of a standard patent application. To streamline the application process, statements of entitlement to grant and to claim priority are required to be included in all requests for examination filed on or after 15 April 2013. This requirement applied to eServices and B2B customers from 23 March 2013.
How will these changes affect you?
If requesting examination by eServices or B2B, a generic statement of entitlement will be generated in the process of making the request. If filing a request by other means it must include a statement of entitlement or will not be considered to be in the approved form and may be treated as not filed. The examination request form includes a generic statement that meets the Commissioner's requirements.
The changes do not affect innovation patents. The required statements must continue to be included in the patent request.
Frequently asked questions
I have already requested examination. How does the change affect me?
If you requested examination before 15 April 2013 and have not filed a notice of entitlement or a request for examination that included an entitlement statement you still have until acceptance to file a notice. This can be the generic statement included in the new examination request form, a statement made using the entitlement form or a notice that is otherwise acceptable to the Commissioner.
What if I discover the applicant is not entitled or there has been a change of applicant after the request for examination is filed?
Because the applicant is taken to be the nominated person you need to ensure that the correct applicant is named. If the applicants are amended you are required to file a new statement or notice of entitlement that applies to them.
Where you become aware after grant that the correct applicants were not named, you can (after 15 April 2013) request that the Commissioner rectify the Patents Register under Section 191A.
If I included a notice of entitlement when I filed the application or have made PCT Rule 4.17(i) and (iii) declarations, do I still need to make a statement of entitlement when requesting examination?
Yes, it is required as part of the approved form for making a request for examination. However if not using eServices or B2B, the Commissioner will accept, in place of the statement an indication that a notice or declaration has been made previously. If this is incorrect, for example, if a declaration has not been made under both PCT Rule 4.17(i) and (iii), the request may be treated as not filed.
When do I need to file a notice of entitlement to rely on a deposit of a micro-organism?
The requirements under regulation 3.1(2) to file a notice and other documents concerning a deposit, orders and declarations under section s 34 and 36 and authorisation to apply for a patent of addition have not changed. These documents, where applicable, are required to be filed before acceptance.
Last Updated: 15/9/2012
