Last updated: 
3 April 2014

The ownership of an invention can be disputed in opposition proceedings, as well as in specific entitlement proceedings. The latter may be started at any time before the grant of a patent.

An overview of patent ownership disputes

A patent ownership dispute can take several forms:

  • a dispute between applicants, where the Commissioner of Patents decides if an application is to continue in the name of either one or more of the applicants, or indicates how else the application is to continue.
  • a dispute filed by one or more persons stating they are the owners of the patent application, where the Commissioner decides whether the applicant or the other persons (or both) are the owners.
  • an opposition by a person who does not own the invention, stating that the applicant also does not own it and that a patent cannot be granted to that person.
  • a dispute filed by one or more persons stating that their entitlement to a patent is not properly recorded in the Register of Patents.

Where someone other than the applicant is found to be the correct owner of the patent application, there are a few possible outcomes. The application may be refused, the other person may be named as the applicant, or the right applicant(s) may make a new patent application that maintains the priority date of the other application.

The Commissioner may make a decision on ownership even if the application lapses or is withdrawn.

Which patent applications can be the subject of an ownership dispute?

Ownership disputes can be started using the specific entitlement proceedings in the Patents Act 1990 (and not as a ground in opposition proceedings) for provisional and standard patent applications. Disputes regarding innovation patents can also use the same provisions, but as these patents are granted soon after filing, the ownership dispute must be commenced shortly after the application is filed.

Where an ownership dispute arises after a standard patent application has been accepted, but not granted, or after an innovation patent has been certified, a person may be able to file an opposition on the grounds that the applicant or patentee does not own the invention.

In certain cases, it is possible to raise an ownership dispute using both the specific entitlement proceedings as well as opposition proceedings.

For granted patents, ownership disputes may be handled by the Courts.

Commencing a patent ownership dispute

The time frames and requirements for filing an ownership dispute vary according to the specific provisions of the legislation under which the dispute is raised.

Dispute proceedings can be complex and you should consider obtaining appropriate professional advice before proceeding.

Evidence, hearing and outcome of patent ownership disputes

Ownership disputes raised in oppositions are treated in the same way as other grounds of opposition and the normal procedures apply.

Other ownership disputes are raised as either a dispute between applicants or a request for a declaration of entitlement and have a simplified process for filing evidence. In this process, after you indicate your grounds for making the request, the procedure for both parties to provide their evidence will be decided by the Commissioner's delegate.

Generally, the evidence must be filed by a means approved by the Commissioner and must take the form of a declaration, together with 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 delegate will send a notice of the decision and a statement of reasons to all parties within 3 months of the hearing. This will include a decision on any application for an award of costs.

Seeking an appeal or review of the hearing decision

Any party involved in the dispute may file an appeal or seek judicial review of any decision made by the delegate.

Where an appeal is to be filed will depend on the specific provision of the legislation under which the dispute is raised. In the case of a dispute between applicants, an application for review of the decision may be made to the Administrative Appeals Tribunal.

In other cases, an appeal or an application for review must be made to the Federal Court of Australia.

Seek professional advice for an ownership dispute

The process of contesting ownership is potentially complex and costly and any mistake could lead to the opposing party gaining an advantage.

If you become involved in an ownership dispute, you might consider contacting a patent attorney or solicitor experienced in intellectual property law.