Entitlement in Australia and New Zealand
The correct legal entitlement of an applicant to apply for, or be granted a patent, is a cornerstone of the patent system in all major jurisdictions. Incorrect entitlement can invalidate a granted patent. Some jurisdictions have a “right to apply” requirement whereas others have a “right to grant” requirement. We now provide a summary of the position in Australia and New Zealand and discuss several proposed changes to the relevant entitlement provisions in these jurisdictions.
Australia is a “right to grant” jurisdiction. In other words, any person may apply for a patent however the requirement for correct entitlement occurs at grant, such that only the correctly entitled person or persons can be granted a patent. The Australian Patents Act states that a patent for an invention can only be granted to a person who (a) is the inventor; (b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; (c) derives title to the invention from the inventor or a person entitled to have the patent assigned to them; or (d) is the legal representative of a deceased person falling in the previous categories (a), (b) or (c).
Getting entitlement correct at grant is critical as incorrect entitlement is a ground of invalidity and under the current law it is difficult to correct. Changes to the Australian Patents Act coming into force on 15 April 2013 do not change the types of person(s) that can be granted a patent but are intended to make, in circumstances which are currently unclear, the consequences of incorrect entitlement less severe.
The current regulations require that a notice (commonly called a notice of entitlement) stating the applicant’s entitlement to the grant of the patent and entitlement to claim priority to the priority application(s) be filed before acceptance. New draft regulations which are proposed to come into force on 15 April 2013, will now require that the notice of entitlement be lodged at the time of filing an application (e.g. at the time of entering national phase of a PCT application).
One of the policy reasons behind this change is to force applicants to disclose their entitlement earlier in the patenting process, thereby allowing third parties with legitimate concerns regarding entitlement to resolve ownership issues. Whether the earlier filing of a notice of entitlement results in ownership disputes being settled earlier in prosecution of applications remains to be seen.
Contrary to the Australian Patents Act which defines a “right to grant” approach, the current New Zealand Patents Act defines the entitlement requirement as a “right to apply”. The current provision states that an application for a patent for an invention may be made by any of the following persons; (a) by any person claiming to be the true and first inventor of the invention; (b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application – and may be made by that person either alone or jointly with any other person.
On a strict reading, the current provision defines a “right to apply” where at least one applicant is an inventor or at least one applicant derives title from an inventor by assignment. On the basis of this reading, the right of an employer to apply for a patent obtained by virtue of an inventor being an employee may not sufficiently entitle the employer unless there is some type of assignment in place transferring the rights from the employee to the employer.
Incorrect entitlement of the person who applied for the patent is a ground of revocation.
The new New Zealand Patents Act, should it be enacted, will change New Zealand from a “right to apply” to a “right to grant” jurisdiction, making it more like Australia. In fact, the Patents Bill, relating to the new Act, currently being debated before the New Zealand parliament expressly refers to the provision of the Australian Patents Act that confers the “right to grant” suggesting that the intention is to bring the New Zealand entitlement requirements more into line with those in Australia.