Ownership of both patents and patent applications may be, and often is, transferred between parties. Section 187 of the Patents Act requires details of assignments or other changes in ownership to be recorded on the Register of Patents. While no explicit penalty is imposed on parties who fail to record changes in ownership or entitlement, it is important for new owners to have the Register updated.
Perhaps the most significant reason for updating the Register is that only the registered owner (or an exclusive licensee of the registered owner) can commence infringement proceedings. A person who may be the beneficial owner of a patent cannot commence infringement proceedings if their name is not the name recorded on the Register.
However, this is not the only reason why timely recordal of a change in ownership is important.
At the time of transfer of ownership or entitlement, there may be an increased risk of circumstances occurring which result in an application or patent lapsing. For example, the new owner may be unaware of a critical deadline or may misunderstand the requirements to meet such a deadline, including entering the national phase, paying a renewal fee, obtaining acceptance and the like.
Subsection 223(2) of the Patents Act 1990 provides a limited means by which an extension of time may be obtainable to extend such a deadline:
Where, because of:
(a)an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned; a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.(Emphasis Added)
As can be seen, the provisions of subsection 223(2) relate to “the person concerned”. The person concerned is the person in whose name the relevant act was required to be taken,1 i.e., the patentee or applicant recorded on the Australian Register of Patents. Evidence accompanying a request for an extension of time is required to establish occurrence of an error or omission, or circumstances beyond control, on the part of the person concerned (or their agent) at the relevant time.
In The University of Newcastle Research Associates Limited,2 an inventor was not considered to be the “person concerned” in relation to letting a national phase entry deadline pass without action, as an assignment from the owner of record to the inventor was not executed until after the deadline. Accordingly, if beneficial ownership is transferred after lapsing of a patent or application, the extension request should be made by the transferor and the evidence should relate to an error or omission on the part of the transferor.
On the other hand, if a transfer of beneficial ownership is recorded in the Register of Patents prior to lapsing of a patent or an application, the extension request should be made by the transferee and the evidence should relate to an error or omission on the part of the transferee.
It is therefore highly desirable to maintain current ownership on the Register of Patents as failure to do so may in some circumstances result in costly delays, or indeed, a loss of rights.