Australia Enhances Capability to Rectify Patent Register


A decision of the Australian Federal Court in February 2014 provides a prompt for a reminder about changes last year regarding rectification of the Register of Patents (“Register”).  On 15 April 2013, the Raising the Bar Act1 (RTB) introduced major reforms to the Australian patent system, including patent procedure changes, as well as raising patentability criteria and patent specification requirements.  Amongst other things, a new administrative mechanism to rectify the Register is provided that may prove to be more cost effective and useful than the existing judicial mechanism.  A patentee seeking to correct incorrect/omitted inventorship and/or ownership of a granted patent could find this advantageous.

Many common discrepancies in a patent application, such as errors and omissions in inventorship and/or ownership details, can usually be corrected before grant of a patent in a straight-forward manner as a pre-grant administrative action at the Australian Patent Office.  However, before the RTB reforms, correcting such discrepancies in a granted patent could be more difficult.  A person seeking to rectify specified errors and omissions in the Register2 could ordinarily only do so by applying3 to a relevant court.  The court can make any order the court thinks fit for the rectification of the Register, as well as decide any question which it is necessary or expedient to decide in connection with the rectification of the Register.

Such an application for rectification of the Register was recently considered by the Australian Federal Court in Neobev v Bacchus Distillery4.  In this litigation, two rectification applications were made to the court, one to record the sole inventor and another to record a beneficial owner as a legal co-owner.  The court made an order to rectify the Register to record the sole inventor, but refused to record the beneficial owner as a co-owner.  The court, however, made a declaration that the beneficial owner is a beneficial co-owner of the patent in dispute and that the legal owner held the ownership of the patent on trust for the legal owner and the beneficial owner as co-owners in equity. Until last year, the courts were ordinarily the only forum for correcting such errors or omissions in inventorship/ownership details.This is an onerous and expensive way to rectify such discrepancies in the Register, especially in non-contentious cases.

Under the RTB reforms, a new administrative mechanism for rectifying the Register is available in many circumstances.  The Commissioner of Patents now has a discretionary power to rectify the Register.5 The Commissioner can do so if the Commissioner is satisfied, on the balance of probabilities, of specified errors or omissions in the Register: the omission of an entry from the Register; an entry made in the Register without sufficient cause; an entry wrongly existing in the Register; or an error or defect in an entry in the Register.  This would include errors and omissions in inventorship and/or ownership details.  Before rectifying the Register, the Commissioner of Patents must give relevant persons a reasonable opportunity to be heard.  The Commissioner cannot rectify the Register while relevant legal proceedings are pending in relation to the patent.  An appeal to the Federal Court of Australia is available against a decision to rectify, or not rectify, the Register.  Amongst other things, the Commissioner in making a decision to rectify the Register, or not, will consider the error or omission, the purpose of the rectification, delays in making the rectification, consequences of making the rectification, and whether there has been a disclosure of all relevant matters.  In appropriate circumstances, especially non-contentious ones, this new power of the Commissioner to rectify the Register will provide a simple and more cost effective mechanism to correct errors and omissions in inventorship and/or ownership details than was previously available.

Intellectual Property Laws Amendment (Raising the Bar) Act 2012

2Section 192 (1), Patents Act 1990: the omission of an entry from the Register; an entry made in the Register without sufficient cause; an entry wrongly existing in the Register; or an error or defect in an entry in the Register.
3Section 192, Patents Act 1990.
4Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) (No 4) [2014] FCA 21.
5Section 191A, Patents Act 1990.

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