Patent Dealing

Amendment

An application can be made to amend an existing patent specification. In light of the information at hand, it might be necessary to amend the scope of the patent in the event of revocation or threatened revocation.

The amendment may not increase the scope of the subject matter disclosed for the protection conferred by the patent. The amendment is presumed to be retrospective to the date of the grant.

Procedure

The Controller may allow the specification of the patent to be amended, subject to such terms as to advertise the proposed amendment and such other conditions, if any, as he thinks fit.

No such amendment shall be allowed under this power where there are pending before the Court appropriate court or the Controller proceedings in which the validity of the patent has been or may be put in issue. Where court proceedings have commenced, the owner may, at the discretion of the court or Controller, be allowed to amend the specification, subject to such conditions as may be imposed. These may include advertisement and payment of costs of the party challenging the validity.

Where the amendment is advertised, persons may give notice to the court or the controller of their opposition to the amendment. This has to be considered. Procedures apply.

Surrender

The owner of a patent may offer to surrender it to the controller. The controller advertises the offer to persons who may be interested and may give notice of opposition to the proposed surrender. The surrender may be made if the controller is satisfied that it may be properly made.

Revocation

A patent may be revoked in whole or in part. The court may allow the person making the application to apply for a patent to be deemed effective from the date of the original patent application.

An application may be made by a third party to the court to revoke a patent on the basis that the holder is not entitled to it. This may be done only by a person who has obtained a court declaration as to his or her own entitlement. This must be done within two years unless the purported patent holder is aware that he was not entitled to the grant.

Consequences

If a patent is revoked, a licence which depends on it will lapse. Where there is a change of ownership, licences and rights granted beforehand terminate from the date of registration of the new owners. Previous owners and licensees who act in good faith, perform steps, or prepare to use the patent may continue to use it on a nonexclusive basis.

They may request a grant or license from the previous proprietor within two months or a licence within four months of being notified of the court order. The above provisions regarding change of ownership and licensees apply. If the court order changes, the Controller settles the terms of the license in the absence of agreement.

Property Aspects

A patent is a property right and the rules of law dealing with personal property apply to its ownership and transfer. It may be left by will and pass on intestacy. As a property right, it may be asserted against all third parties, subject to the possibility of a valid challenge.

It may be co-owned. Where there are two or more applicants, it is presumed to be co-owned unless otherwise specified.

Although it is not strictly necessary, a patent licence or assignment should be undertaken in writing. Changes in ownership and interest in the patent must be registered in the Patents Office Register. If not registered, a court may not admit them in evidence unless otherwise directed.

Registration also has the practical effect of giving notice to the world in relation to the assignment or licence. Registration is effected by furnishing a certified copy and payment of fees. Assignments by way of security may also require registration in the company’s registration office.

A licence granted by the patent owner does not create proprietary rights. An exclusive licence may create proprietary rights.

Register

Once a patent application is published (eighteen months after the filing date or the earliest priority date), it is entered into the register.

The register includes details of

• the applicant’s name and address,
• the inventor’s name,
• date of publication,
• details of priority claims,
• date of refusal, withdrawing, lapsing if applicable,
• date of parent patent if applicable,
• particulars of patentee,
• particulars of any interest or rights title in the patent.

The patent belongs to the inventor or their successor in title. If it is made by an employee in the course of employment, it usually belongs to the employer.

In common with other registers, trusts may not be noted on the register. Until publication, the information concerned may only be released with the consent of the applicant. Certain information is published at the application stage.