Disputes as to entitlement may arise before or after the grant of a patent. Prior to grant, it is possible to refer questions as to entitlement to the Commissioner of Patents ('Commissioner') under s 36(1)(b) of the Patents Act 1990 (Cth). A s 36 application to challenge entitlement to a patent often delays acceptance of the application. While entitlement to the application is unclear it cannot be accepted by the Patents office. Relevantly, Reg 13.4(1)(f) of the Patents Regulations 1991 states that where a declaration is made under s 36 a further period of 3 months is provided for acceptance of the application from the date of the declaration.
If a s 36 application is found to be unsuccessful it is unclear whether s 36 allows a declaration by the Commissioner to be made that enlivens the extension period under Reg 13.4(1)(f). Consequently, an applicant through no fault of their own may find their patent application has not been accepted within the prescribed period and as a consequence has lapsed.
The proposed amendment will close this loophole and clarify that the extension referred to in the regulations may be granted whether or not the s 36 application is successful.
Policy development 04-Sept-2017
Legislative drafting 26-Mar-2018
High priority, as failure to address this issue could lead to loss of rights for applicants who are entitled to them.
Exposure draft is anticipated when legislative drafting is complete, currently aiming for winter 2018.