Amendment to clarify the effect of an entitlement application under s 36(1)(b) of the Patents Act 1990

Issue summary

Disputes as to entitlement may arise before or after the grant of a patent. Prior to grant, it's 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 can't 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's 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.

History

• Policy development 4 September 2017
• Legislative drafting 26 March 2018
• Consultation 16 November 2018 to 21 December 2018
• Legislative drafting 22 December 2018
• Legislation registered 25 March 2019
• Completed 25 March 2019

Comments

The issue was addressed by an amendment in the Intellectual Property Laws Amendment (PCT Translations and Other Measures) Regulations 2019 Schedule 2 Part 3.

The amendment was accorded high priority, as failure to address the issue could lead to loss of rights for applicants who are entitled to them.