Recent changes to the Patents Regulations 1991 (effective for applications for which examination was requested on or after 15 April 2013) have removed the requirement to lodge a Notice of Entitlement for Australian patent applications prior to acceptance (except for applications that rely on a micro-organism deposit for enablement). Instead, it is now necessary to lodge a Statement of Entitlement when requesting examination.
The intent of this legislative change is set out in the Explanatory Memorandum accompanying the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, which states with reference to the amendments to the Patents Regulations 1991: "Item 8 – paragraphs 3.1 (2) (a) and (b) - This item removes the notice of entitlement from those documents that need only be required before acceptance. The intent is that a statement of entitlement is then included as a mandatory requirement for a request for examination of a patent application, as part of the 'approved form' requirement in existing subregulation 3.15(2)."
The approved text for the Statement of Entitlement (which is generic and covers most derivations of entitlement) is as follows:
The applicant (or each joint applicant):
- is an actual inventor, or
- derives title to the invention from an actual inventor(s); or
- would, on the grant of the patent, be entitled to have the patent assigned to them.
The applicant (or each joint applicant):
- is an applicant of the application(s) (if any) listed in the patent request, or in an applicable declaration under Article 8 of the PCT; or
- has entitlement from an applicant of the listed application(s), including entitlement to make a request under Section 113 in relation to any original or associated provisional application.
Please note that a Notice of Entitlement is still required for applications for which examination was requested before 15 April 2013. However, IP Australia has advised that the generic statement above will suffice (previously it was necessary to specify the derivation of entitlement in more detail in a Notice of Entitlement).
Of relevance to the issue of entitlement, changes to the Patents Act 1990 now make it possible to request that the Commissioner rectify the Patents Register should it become apparent after grant that the correct patentees/inventors are not named. New Section 191A removes the need to (a) apply to a court for an order for rectification of the Register under Section 192 or (b) surrender the patent under Section 137 and lodge an Application to Commissioner for Declaration of an Eligible Person under Section 35.
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