Patent ownership disputes
When someone challenges the ownership of a provisional or standard patent application, the dispute is handled in accordance with the Patents Act 1990 provisional and standard patent applications.
The Commissioner of Patents makes a decision about ownership. This can be made even if the application lapses or is withdrawn.
Common reasons for a dispute
Patent ownership disputes can be:
- Between applicants named in the patent
- About ownership
- About registration:
- When a patent isn't properly recorded in the Register of Patents
- The register can be corrected for granted patents by filing an action with the commissioner or with a court.
When can a dispute be filed?
Timeframes for filing vary, depending on the type of application and its stage in the application process.
For a standard patent, proceedings can start anytime after an application has been accepted but before the patent is granted.
How the process works
- A request that explains the reasons for the dispute is submitted through online services and the procedure for providing evidence is set
- Evidence is filed. It needs to:
- Be submitted by an approved method
- Take the form of a declaration and include any relevant documents
- When the evidence stage has ended, a hearing will be scheduled for a delegate of the Commissioner to decide the matter
- The hearing is held. Notification of the decision and a statement of reasons is sent to all parties within three months of the hearing.
What happens next
If we find that the patent applicant is the true owner of the patent, the dispute will fail and no further action is taken against the applicant.
Where it's decided that someone else other than the applicant is the correct owner, we might:
- Update the application with the new applicant's name and the application proceeds
- Refuse the application
- Have the true applicant make a new patent application that keeps the original application priority date
- Correct the official register.
Costs will generally be awarded as part of the decision.
Let's look at the case of Mindhu and Jeremy, flatmates who also work together at the same IT company. Mindhu tells Jeremy about a new device he's working on that helps wheelchair users access supermarket shelves more easily.
Jeremy realises Mindhu's invention is groundbreaking. He steals the idea and submits an application for a patent.
Mindhu finds out and decides to take action. He files a patent ownership dispute against Jeremy's patent application. In his dispute, he includes documentation that proves he's the true owner of the idea.
In the end, Mindhu's dispute is successful and the register is updated to show him as the rightful owner.
Design right ownership disputes
Design right disputes are handled in accordance with the Designs Act 2003.
Anyone can dispute:
- The rightful owner of a design
- If the person who applied for the design was entitled to claim ownership.
The Registrar of Designs resolves most ownership disputes by reviewing evidence and conducting a hearing.
When we receive an ownership dispute request, the current right owner is given the opportunity to participate. The dispute process goes ahead even if the owner doesn't want to participate.
There are three types of ownership disputes:
- Change of ownership before registration
- Who was entitled to register a design that's been registered
- Whether or how a design application should proceed. This might be where:
- Joint applicants can't agree on whether or how to go ahead with the application
- Someone else asserts that they're entitled to apply for the design, either alone or as a joint applicant.
How the process works
- Someone submits a formal request for resolution of a dispute and fees are paid by all participants
- Parties are given an opportunity to file evidence and submissions
- A hearing date is set and all participants are notified about the next steps
- A hearing is held
- Evidence and submissions are considered and a decision is made (generally within three months of the hearing)
- Relevant parties are notified about the decision.
What happens next
- Costs may be awarded against anyone involved in the proceedings, enforceable as a debt
- The register is updated.
Note that either party can withdraw from proceedings at any time before the decision is made. Even if a party withdraws, in some circumstances it's possible to seek and obtain an award of costs.
Jen developed designs for a set of interlocking parts to form a new shape for a sea wall.
At the time, Jen was working as an independent contractor for a land developer and she accidentally left her designs on site. The developer found Jen's drawings and filed an application to protect the design. We accepted his application and registered the designs in the developer's name.
Several years later, Jen discovered what had happened and decided to take action. She filed a design ownership dispute against the developer's application. She included documentation that proved that she was the true owner of the idea.
After both sides filed evidence, we held a hearing. We decided that Jen should have been listed as the sole owner of the designs.
We revoked registration of the designs, awarded costs to Jen and allowed her to file them in her own name.
What happens if someone disagrees with the decision
Either party may:
- File a notice of appeal in the Federal Court or the Federal Circuit and Family Court of Australia within 21 days of the decision. You'll need to let us know if you've filed a notice of appeal within five days of filing it with the court.
- Seek a review of a decision by applying to the Administrative Appeals Tribunal (AAT) within 28 days of the decision.