Even before the Raising the Bar legislation comes into effect on 15 April 2013, errors in identifying the right applicants for an Australian patent are not fatal. If an Australian patent application is filed by an applicant who is not entitled to the grant of the patent (or an applicant who is entitled to be included is left out), the patent will still be valid as long as all the named applicants acquire entitlement (for example by assignment) or the application is assigned to the correct applicants at any time up to the grant of the patent. The Raising the Bar legislation will also make it possible to correct these types of errors after grant, which is not currently the case. However there are traps abroad for those who rely on Australia’s forgiving laws and don’t make sure they have the right assignments in place.
For example, Europe and Canada only allow an applicant to claim PCT priority if, at the PCT filing date, the applicant or applicants named in the PCT application were entitled to claim priority from the initiating application. This means that the applicants named in the PCT Application must either be identical to, or successors in title to, all of the applicants for the initiating application. Problems with entitlement to priority cannot be cured after the PCT filing date, and will result in loss of priority and possible invalidity. This is particularly relevant to initiating applications filed in the United States, which must be filed in the names of the inventors, even when the inventor is under an obligation (such as under an employment contract) to assign the rights in the invention to another party.
Such entitlement issues were highlighted in Edwards Lifesciences AG v Cook Biotech Inc.  EWHC 1304 (Pat). Cook Biotech Inc.’s UK patent was revoked because two of the three joint inventors were independent contractors who did not assign their rights in respect of the invention to Cook Biotech Inc. until after a PCT application had been filed claiming priority from a US application (but before grant of the UK patent). Priority in a PCT member state can also be lost if an assignment document on which the new applicant relies does not comply with local law.
To safeguard priority, assignments should:
• be in writing;
• be executed prior the PCT filing date (ideally, before filing the initiating application, and reviewed before the PCT filing date for changes to inventorship);
• include the number and title of the priority application;
• specifically state that the rights to claim priority and to be granted a patent anywhere in the world are assigned; and
• be executed by each party in accordance with the law relating to execution of documents in the place where that party executes it.
If you have concerns or queries regarding entitlement or assignments, please contact Phillips Ormonde Fitzpatrick Lawyers.