In this practice guideline
Other disputes between parties – Patents Act 2013
The Patents Act 2013 provides scope for parties to make requests or to resolve disputes relating to patents and patent applications, which may not fall within the parameters of an opposition (to grant, amendment after acceptance or restoration) or revocation proceeding.
Other types of disputes include:
- disputes between co-owners of a patent;
- disputes between employees and employers in relation to a granted patent or application; and
- disputes between other parties in relation to patent applications.
A party may also make a request or claim to be mentioned as an inventor.
1. Disputes between co-owners
A “co-owner” is a person who is a patentee of a patent along with other persons who are patentees of the same patent.
Should a dispute arise between co-owners, one or more of the co-owners may request directions from the Commissioner relating to: 1
- the sale or lease of the patent or any interest in it;
- the grant of licences relating to the patent; or
- the exercising of an owner’s exclusive right under the patent.
Applications under section 26
A request for directions must include a statement setting out the facts relied on by the co-owner and the directions they seek. 2
The request must be served on all other co-owners.
No fee payment is required to file an application under section 26.
Process Overview
While the Commissioner can specify the procedural steps of the dispute 3 the below process will generally be followed:
- After a patent has been granted the applicant files their application under section 26 and their statement of case.
- Within 2 months the other party files their counter-statement.
- Within 2 months the applicant files evidence in support of their case.
- Within 2 months the other party files evidence in support of their case.
- Within 1 month the applicant files evidence strictly in reply to the other party’s evidence.
- Once the evidential stages are complete, the Commissioner asks the parties how they wish to be heard and confirms the hearing date and venue.
- Following the hearing or any other way the parties elected to be heard, the Commissioner issues their directions.
The rights of a co-owner
Where a patent is owned by two or more persons each owner is entitled to an equal undivided share in the patent. 4
A co-owner of a patent is entitled to exercise their exclusive rights to use that patent without seeking consent from the other owner(s). 5 However, this right does not extend to the grant of licences or assignment of the shares of a patent without consent first being obtained from the other co-owner(s). 6 These rights and conditions may be removed by the co-owner’s if they agree to the contrary. 7
Directions of the Commissioner
The Commissioner’s directions will be issued to all co-owners.
If the notified co-owner fails to carry out the directions within 14 days of receipt of the notification, upon request, the Commissioner may direct that another person fulfil the directions on behalf of the co-owner in default. 8
2. Disputes between employees and employers
Disputes between employees and employers relating to the ownership of an invention or granted patent may be determined by the Commissioner. Proceedings of this nature can be filed by either the employee or the employer.
Application under section 28
When filing a request for a determination under section 28, the applicant must include the following information: 9
- The name and address of the other party to the dispute;
- The applicant’s signature; and
- A statement of case setting out the facts relied on by the applicant and the relief sought.
No fee payment is required to file an application under section 28.
Process overview
Regulation 49, Patents Regulations 2014
- At any time before or after a patent has been granted the applicant files their application under section 28 and their statement of case.
- Within 2 months the other party files their counter-statement.
- Within 2 months the applicant files evidence in support of their case.
- Within 2 months the other party files evidence in support of their case.
- Within 1 month the applicant files evidence strictly in reply to the other party’s evidence.
- Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard and confirms the hearing date and venue.
- Following the hearing or any other way the parties elected to be heard, the Commissioner issues a formal written decision.
A party aggrieved by the decision of the Commissioner may request a review by the Employment Relations Authority within 20 working days of the decision being issued. 10
Consequence of not filing a counterstatement
If the other party fails to file a counterstatement by the specified deadline, the applicant has two months from that lapsed deadline to file evidence in support of their request. 11 The Commissioner may proceed to determine the request on the evidence filed. 12
Commissioner may decline to hear a dispute
The Commissioner may decline to hear the dispute if they consider that the matter would be more properly determined by the Employment Relations Authority.
3. Disputes between interested parties
Interested parties may seek directions from the Commissioner as to whether, or in what manner, a patent application should proceed.
The Commissioner may give directions to enable the patent application to proceed in the name of one or more of the parties alone and/or for regulating the manner in which the application is to proceed.
Applications under section 131
Requests under section 131(1) must include: 13
- The name and address of each interested party; and
- A statement setting out the facts relied on; and
- The directions sought.
No fee payment is required to file an application under section 131.
Process overview
Once a request for directions has been filed, the Commissioner can specify any further directions in terms of the subsequent procedure of the dispute. 14 However, the procedure will generally progress as follows:
- Prior to a patent application being granted an interested party files their application under section 131 and their statement of case.
- Within 2 months the other party files their counter-statement.
- Within 2 months the interested party files evidence in support of their case.
- Within 2 months the other party files evidence in support of their case.
- Within 1 month the interested party files evidence strictly in reply to the other party’s evidence.
- Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard and confirms the hearing date and venue.
- Following the hearing or any other way the parties elected to be heard, the Commissioner issues their directions.
Any procedure set down will take into account that all interested parties must be given a reasonable opportunity to be heard. This includes parties who may not currently be an interested party in the proceeding. 15
4. Requests or claims regarding inventorship
Sections 189 to 193 of Patents Act 2013
A person may request or claim that they are the inventor of an invention or part of an invention for which a patent application has been made. 16
Requests or claims under section 190
A request or claim under section 190 must be made within 2 months of the complete specification being made open to public inspection. 17 A one month extension of time to this timeframe may be granted if the extension request is received by the Office before the aforementioned 2 month deadline. 18
A request or claim under section 190(1) must include the full name and address of the inventor, as well as a statement setting out the facts relied on. 19
If successful, a party will be mentioned as an inventor under the granted patent application, complete specification and the patents register. 20
No fee payment is required to file a request or claim under section 190.
Process Overview
Upon a request or claim as to inventorship being made the Commissioner must give the requesting party (the “applicant”) and any person to whom a notice of claim has been given, a reasonable opportunity to be heard. 21 The following process will generally be set down by the Office:
- Within 2 months of the complete specification of a patent application being made open to public inspection the applicant files a request or claim of inventorship and their statement of case.
- Within 2 months the other party files their counter-statement.
- Within 2 months the applicant files evidence in support of their case.
- Within 2 months the other party files evidence in support of their case.
- Within 1 month the applicant party files evidence strictly in reply to the other party’s evidence.
- Once the evidential stages are complete the Commissioner asks the parties how they wish to be heard and confirms the hearing date and venue.
- Following the hearing or any other way the parties elected to be heard, the Commissioner issues their directions.
Commissioner may decline considering request or claim
The Commissioner may decline to consider a request or claim under section 190 if it is considered that the request or claim, if proved in the case of an opposition under section 92(1)(b) where a nominated person is not entitled to a patent, would entitle the requestor to relief under Subpart 9 of Part 3 of the Act.
Footnotes
- 11 Regulation 49(8)
- 21 Section 192(2)
- 20 Sections 189(2)(a)-(c)
- 19 Regulations 126(1)(a)-(b)
- 18 Sections 190(2)(b) and 190(3)
- 17 Section 190(2)(a)
- 16 Section 190(1)
- 15 Section 131(3)
- 14 Regulation 123(3)
- 13 Regulations 123(1)(a) and (b)
- 12 Regulation 49(9)
- 1 Section 26(2)
- 10 Section 30(2)(a)
- 9 Regulation 49
- 8 Section 26(3)
- 7 Section 24(4)
- 6 Section 24(3)
- 5 Section 24(2)
- 4 Section 24(1)
- 3 Regulation 47(3)
- 2 Regulation 47(1)