Reasons for an ownership dispute
Ownership disputes occur when there is a challenge as to who is the true owner of a patent application. The challenge can be made by either:
- a person who is listed as a joint applicant, or
- a person who is not listed as an applicant.
These disputes involve questions of who invented the invention that is the subject of the application, and the transfer of the rights of the inventor to other persons.
Some common disputes can be over:
- who is the inventor (or inventors)
- who has acquired rights from the inventor
- both of these matters.
Where someone other than the applicant is found to be the correct owner of the patent application, a range of remedies are available, depending on the type of action that was brought. These include:
- a correction to the name of the applicant - the application is then allowed to proceed as normal
- allowing the true applicant to make a new application while maintaining the priority date of the original application
- refusing the application
- correcting the official Register.
In some cases the Commissioner can make a decision on ownership even if the application has lapsed or been withdrawn.
Time frames for filing an ownership dispute
The time frames and requirements for filing an ownership dispute vary depending on the type of application and the stage it is up to in the application process.
The ownership of an invention can either be disputed in isolation or in conjunction with other opposition proceedings.
When disputing the ownership alone, proceedings can begin at any time before the grant of a patent.
As innovation patents are granted soon after filing, the ownership dispute must be commenced as soon as possible after the application is filed.
It is possible to file an opposition on the grounds that the applicant does not own the invention, where an ownership dispute arises after either:
- a standard patent application has been accepted, but not granted, or
- after an innovation patent has been certified.
In certain cases, it is possible to raise an ownership dispute using both the specific entitlement proceedings as well as opposition proceedings.
It is also possible to correct the Register in relation to granted patents. This action can be filed with the Commissioner or with a Court.
Professional advice for ownership disputes
Dispute proceedings can be extremely complex and you should consider obtaining appropriate professional advice before proceeding.
Evidence, hearing and outcome of patent ownership disputes
When an ownership dispute is raised during an opposition proceeding, it will be treated in the same way as any other grounds of opposition. The normal procedures will apply.
Where the ownership dispute is raised as either a dispute between applicants or a request for a declaration of entitlement, there is a simplified process for filing evidence.
In this process, you will indicate your grounds for making the request.
The Commissioner’s delegate will then decide on the procedure for both parties to provide their evidence. Generally, the evidence must take the form of a declaration, together with any relevant documents.
When all evidence stages have been completed, a hearing will be scheduled for a delegate of the Commissioner to decide the matter.
After the hearing, the delegate will send all parties a copy of the decision and a statement of reasons within three months. 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.
Depending on the type of dispute, the appeal can be to either:
- the Administrative Appeals Tribunal, or
- the Federal Court of Australia.