US Practice

Inventorship Is the First Consideration

Procedurally, a US application for patent must include the name(s) of the inventor(s). This requirement traces its roots back to the United States Constitution, which grants to Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their respective . . . discoveries.”¹ Inventorship is defined as simply the list of individuals in the official documents filed with the application (including those listed on the application data sheet and/or the inventor’s oath or declaration).² To be properly characterized as an inventor, United States patent law requires that the individual have contributed to the “conception” of the invention. “Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.’”³ Further, it is those who, per the facts of a particular situation, made a conceptual contribution to the invention as claimed who are entitled to be inventors on a patent.⁴ This is true even though each joint inventor need not have made a contribution to each and every claim to be properly named as an inventor.⁵ In addition, “[c]o-inventors need not ‘physically work together or at the same time,’ ‘make the same type or amount of contribution,’ or ‘make a contribution to the subject matter of every claim of the patent.’”⁶

The process of identifying an inventor is therefore very fact specific and can change during the course of prosecution of a patent application.

Ownership of (vs. Inventorship in) a Patent and a Patent Application

Inventorship and ownership in a patent and patent application are treated as “separate issues.”⁷ “Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent.”⁸ “For [patent] applications filed on or after September 16, 2012, the original applicant is presumed to be the initial owner of an application for an original patent. For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.”⁹ An owner of a patent or patent application can transfer ownership interests by properly assigning the patent or patent application. “In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application.”¹⁰

The owner of a patent application may in turn transfer certain rights that are less than the entire ownership interest of a patent. “An exclusive license may be granted by the patent owner to a licensee” in which the exclusive licensee can prevent others, including the patent owner, “from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use, set forth in the license agreement.”¹¹

Who Gets to Enforce the Patent?

Under US law, in order to bring a lawsuit for infringement, one of the first requirements is that the plaintiff have standing to sue the alleged infringer (i.e., that the plaintiff is procedurally permitted to bring this lawsuit). The “Patent Act¹² governs standing to sue for [patent] infringement, and it provides that only the patentee and his successors in title are entitled to bring a civil action for infringement.”¹³ Further, “[a] party is a patentee if it holds legal title to the patent, either by issuance or assignment.”¹⁴ However, as held in a 2014 court ruling, even though one may not be the patentee, the right to sue may still be transferred to a licensee if “all rights or all substantial rights” in the patent have been transferred via the license.¹⁵

Consequences of Incorrect Inventorship

As seen above, inventorship plays a critical role in a patent application. This includes identifying the initial owners (and thus the future owners in the chain of title) of the patent or patent application. Incorrectly listing the inventors on a patent application, or even improperly assigning rights (regardless of intent) in a patent or patent application, can lead to potential invalidity of the patent claims and can also change the ownership of a patent.

Inaccurate ownership in a patent can lead to a host of deleterious consequences for those involved, both in and out of a litigation setting. For example, if a patentee should seek to bring an infringement lawsuit, he or she must have standing. As discussed above, only certain parties can assert proper standing in a patent infringement lawsuit, namely, the patentee and/or a licensee with appropriate showing of having been granted all or at least all substantial rights in the patent. In a nonlitigation setting, a party holding itself out as a licensee of patent rights may in fact hold an invalid license if it is discovered that the licensor did not have the right to transfer any of the patent rights to begin with.

A prime example of how errors that may have occurred as part of a series of simple errors in inventorship, assignment documents, and chain of title can make or break attempts to enforce a patent is STC.UNM v. Intel Corp.¹⁶ In STC.UNM, the US Court of Appeals for the Federal Circuit affirmed dismissal of a patent infringement lawsuit for lack of standing because the co-owner “affirmatively retained [the substantive] right by consistently” refusing to join the patent infringement lawsuit.¹⁷ Though steps had been taken to rectify ownership errors during the course of the prosecution of the patent applications at issue, the fact that the plaintiff in STC.UNM was not the 100 percent owner of the patent at issue and could not persuade the patent’s co-owner to join the patent infringement lawsuit thwarted the plaintiff’s attempts to enforce its patent.

Such an example highlights the importance of keeping track of inventorship and ownership in a patent and patent application, along with keeping in mind the fact that one may need cooperation of all co-owners if an infringement suit is on the horizon.

Correcting Inventorship

Correcting inventorship in a patent or patent application filed in the United States is relatively straightforward, especially after the implementation of certain provisions of the America Invents Act (AIA) in 2012.

Before Issuance

Before a patent issues, errors in inventorship can be corrected simply by submitting an updated application data sheet that identifies each inventor by legal name, along with a processing fee.¹⁸ If a change in inventorship is made to add an inventor who was not previously listed in the current patent application, then an inventor’s oath or declaration will be required for the added inventor.¹⁹

In addition, should there be a dispute on inventorship that does not result in amicable resolution, inventorship disputes on patent applications can be resolved by more official means, depending on when the application was filed. For patent applications filed before March 16, 2013, inventorship disputes can be resolved within the US Patent and Trademark Office (USPTO) by way of an interference proceeding. Interferences are relatively uncommon for resolving inventorship disputes, however, in part because inventorship is dependent on the claims, and the claims often change during prosecution.²⁰ Therefore, until a patent issues, there is no certainty as to the inventorship on a patent application. Another reason interference proceedings are not typically used to resolve inventorship disputes is due to their purposes and the facts involved in the proceeding itself: an interference proceeding is more of a “priority contest,” as opposed to an inventorship dispute which can be thought of as an “originality test.”²¹

In contrast, the AIA streamlined inventorship corrections “by creating a derivation proceeding to ensure correct inventorship” on applications filed on or after March 16, 2013.²² As its name suggests, a derivation proceeding sets out to determine whether “an individual named in an earlier application as the inventor or a joint inventor derived such invention from an individual named in the [proceeding] petitioner’s application as the inventor or a joint inventor and, without authorization, the earlier application claiming such invention was filed.”²³ Petitions to initiate derivation proceedings can only be filed within one year from the issue date of the patent that is at issue, or one year from the date of publication of the claim(s) at issue in the patent application.²⁴

After Issuance

Once a patent has issued, the process for correcting inventorship becomes slightly more involved. Corrections to inventorship (whether to add or delete an inventor) are submitted by filing a formal request on behalf of all parties and assignees involved, along with a processing fee.²⁵ The request must be accompanied by a “statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change.”²⁶

Inventorship disputes on issued patents may be settled in court²⁷ or in the USPTO. The exact choice of forum depends on the available evidence, the amount the parties are willing to pay for the proceedings, and even the timing of the initiation of the proceeding. For example, a derivation proceeding may not be appropriate because it may be more than one year from the date on which the patent issued.

Tips and Good Practices

It is crucial to ensure that the inventorship listed on the patent or patent application is accurate at all times. Therefore, some tips practitioners can implement into their practices include the following:

• Conducting regular check-ins with the inventors, especially if the claims are amended;
• Maintaining claim charts tracking the inventorship against the claims, even if they are amended;
• Keeping track of not only the name(s) of the inventor(s) of each claim, but also the circumstances surrounding their contributions; and
• When strategizing ownership of a patent application and any resulting patents, it can be useful to keep ownership in the patent to key parties who are willing and able to bring infringement lawsuits.

Australian Practice

Under Australian law, in order to enforce a patent, one must have proper entitlement to the patent. Ultimate entitlement may be derived in several ways, but the starting point is through inventorship. The consequences of improper (or a lack of) entitlement can be severe. Therefore it is important that inventorship is properly determined at the outset.

Entitlement in General

“Entitlement” is defined as “a right to benefits specified especially by law or contract.”²⁸ When used in the context of patent ownership, it refers to the exclusive rights given by a patent to a patentee.²⁹ This is due to the structure of the Patents Act 1990 (the Act). Under the Act, the exclusive rights provided to the patentee are “personal property and are capable of assignment and of devolution by law.”³⁰ According to the definition section of the Act, “patentee means the person for the time being entered in the Register as the grantee or proprietor of a patent.”³¹ This definition sets up a structure where the registered proprietor is treated “as the owner of the patent subject to any interests in it created by the owner and registered in the Register,” which thereby ensures “some certainty and finality” in regards to a title to a patent.³² Thus, to be able to assert the patent rights, a person must be recorded on the register to be recognized as the patentee. However, it is not enough to be simply recorded as the patentee. The patentee must also have entitlement to the patent (i.e., have an ownership interest in the patent).³³ The nature of a patent as property means that a patentee’s ownership must have a clean chain of title in order to have proper entitlement.³⁴ The consequences of invalid entitlement are set forth below.

Under section 15(1) of the Act, a patent may only be granted to a person who:

(a) is the inventor; or

(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or

(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or

(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).³⁵

Thus, a patent may only be granted to an inventor, or someone who has obtained entitlement from the inventor by conduct, agreement, or assignment. Australian courts have held that “s 15 specifies no formalities as being necessary for the derivation of title to an invention from an inventor or from a person who, on the grant of a patent, would be entitled to have the patent assigned.”³⁶ Accordingly, entitlement may be obtained orally³⁷ or implied through conduct.³⁸

The starting point of any entitlement analysis is with the inventor as that is where entitlement first originates. The entitlement of the inventor is ordinarily straightforward unless there are multiple inventors, or the named inventor is not really a true inventor in relation to the claimed subject matter. Where there are multiple inventors, entitlement may change depending on the contribution (or lack thereof) of individual inventors. The question that must be answered in such a situation is what contribution is necessary before a person may be deemed an “inventor” for purposes of entitlement to the invention.

Determining Entitlement

Under Australian law, determination of entitlement is not based on a claim-by-claim analysis alone. Rather, it is based on a three-step approach, of which inventorship is one of those steps. In particular, the Full Federal Court in Australia has endorsed the following steps to be considered when assessing entitlement (“UWA questions”):

(1) Identify the “inventive concept” of the invention as defined in the claims;

(2) Determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and

(3) Determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.³⁹

Each step is discussed in more detail below. As will become apparent, the second step (determination of inventorship) can be the most difficult to perform.

Identifying the "Inventive Concept"

Australian courts take a holistic approach for determining the inventive concept. According to Australian authorities, the inventive concept is to be ascertained from

the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it.⁴⁰

Determining Inventorship

The Act under section 15(1)(a) provides that a patent may be granted to a person who is the inventor. The Act does not contain a definition for “inventor.” However, there are several cases in Australia that provide guidance as to the determination of an “inventor.”

The Australian Federal Court formulated a number of factors for considering inventorship in the Polwood case, which were subsequently summarized in Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) [No. 3].⁴¹ These “Polwood factors” are set forth below.

First, whether someone is properly described as a joint inventor is not determined by quantitative contribution, but rather, qualitative contribution. The contribution does not have to be equal to the other person’s and the key question is whether there has been a contribution to the invention.

Secondly, in some cases it may be helpful to look to the claims and in some cases evidence may assist. It is important to look at what the invention is said to be. For example, a contribution to the construction of an apparatus may be sufficient where the invention is the apparatus and insufficient where the construction of the apparatus can be done by simply following the instructions in the specification.

Thirdly, the key question is whether the person’s contribution had a material effect on the final invention.

Fourthly, it is sometimes useful to approach the issue by asking who conceived the solution to a problem, but that will not always be so because not all inventions are susceptible to a problem and solution analysis.

Fifthly, rights to an invention are determined by objectively assessing contributions to the invention rather than assessing the inventiveness of respective contributions and if the final concept of the invention would not have come about without a particular person’s involvement, then that person has an entitlement to the invention.

Finally, . . . a person may be considered a joint inventor where they had a general idea of what was required, but someone else was required to put the ideas into effect and did so.⁴²

The first factor (i.e., the “qualitative” factor) focuses on the quality of the contribution rather than the number of contributions.

The second factor (i.e., the “claims” factor) focuses on what is being claimed in order to define the invention. This is a familiar approach in the United States.⁴³ However, where the inventive concept resides in a combination of claimed elements, then “[o]ne must seek to identify who in substance made the combination. Who was responsible for the inventive concept, namely the combination?”⁴⁴

The third factor (i.e., the “material effect” factor) focuses on the materiality of an alleged inventor’s contribution. In particular, “if a person is given part of the information necessary to make an invention, and then applies their own endeavours they will be an inventor if their contribution produces a material effect.”⁴⁵

The fourth factor (i.e., the “conception” factor) looks to who contributed to the conception of the invention. In particular, the Polwood court stated that “[f]or joint inventorship, each inventor must generally contribute to the conception of the invention.”⁴⁶ Additionally, the contribution should be such as to necessarily provide enablement to the invention.⁴⁷

The fifth factor (i.e., the “but for” factor) focuses on whether the invention would have come about but for the alleged inventor’s contribution. When assessing the “but for” factor, “[o]ne must have regard to the invention as a whole, as well as the component parts and the relationship between the participants.”⁴⁸

The sixth factor (i.e., the “knowledge of what is required” factor) echoes the conception factor in that the alleged inventor must have an idea of the problem(s) being solved, rather than following instructions to reduce the invention to practice (e.g., differentiating between the final concept of an invention rather than a preferred working embodiment of the invention).⁴⁹ As an example in the context of the university environment, this means that a research assistant would have to actively contribute to the development of a solution rather than just following someone’s directions to reduce the invention to practice.

Determining Contractual/Fiduciary Relationships

The determination of contractual or fiduciary relationships is fairly straightforward compared to the determination of inventorship. In fact, this question might not be reached if it is determined that an alleged inventor is not an inventor after all.⁵⁰ The determination usually involves assessing any contracts or actions between parties that may give rise to an understanding of ownership.⁵¹

Since the Neobev case in 2014, at least several decisions by the Australian patent office have analyzed inventorship based on the UWA questions and Polwood factors.⁵²

Consequences of Incorrect Entitlement

Where it is demonstrated that an applicant or patentee does not have entitlement to the claimed invention, the application may be refused, or the patent revoked as the case may be.⁵³

In the situation of a pending application for patent, it is a ground of opposition that the nominated person is either: “(i) not entitled to a grant of a patent for the invention; or (ii) entitled to a grant of a patent for the invention but only in conjunction with some other person.”⁵⁴ Once the patent has been granted, the patent may be subject to revocation on the ground “that the patentee is not entitled to the patent.”⁵⁵

Consider, for example, the situation in University of British Columbia v Conor Medsystems, Inc (UBC v Conor Med).⁵⁶ The University of British Columbia (UBC) and Angiotech Pharmaceuticals jointly filed a Patent Cooperation Treaty (PCT) application. UBC had an assignment from two of the five listed inventors. Angiotech had an assignment from the other three listed inventors. At the time national phase was entered in Australia, all the inventors had contributed to the claimed subject matter.

During prosecution of the related US application, certain claims were canceled which changed the inventorship of the US application. Specifically, the cancellation of claims resulted in UBC’s inventors being deleted from the US application. The inventorship of record in the US application was amended to reflect the changed scope of the claims, and the resulting US patent issued to Angiotech as the sole assignee.⁵⁷ Claim amendments corresponding to those of the US application were made to the Australian application so that, in effect, UBC’s inventors were no longer contributors to the claimed subject matter of the Australian application. The patent request in the Australian application was not amended to reflect the changed inventorship. Therefore, UBC and Angiotech remained as co-applicants of the Australian application. A lower federal court revoked the patent based on lack of entitlement.⁵⁸ This decision was subsequently reversed on appeal,⁵⁹ but it highlights the pitfalls presented by lack of entitlement. Since the UBC v Conor Med case, the Act has been amended to reduce the risk of entitlement alone being the basis for revocation.

Correcting Entitlement

Australian law contains a variety of measures for correcting entitlement. These mainly depend on whether the patent has been granted. Prior to passage of the Raising the Bar Act,⁶⁰ the consequences of incorrect entitlement at grant of the patent would have left a patent subject to revocation, as illustrated by the UBC v Conor Med case above. One of the changes implemented by the Raising the Bar Act was in the addition of a new subpart to section 138 (dealing with revocation of patents). Section 138 was amended to include a subpart that a court “must not” make an order to revoke the patent on the ground that the patentee is not entitled to the patent “unless the court is satisfied that, in all the circumstances, it is just and equitable to do so.”⁶¹ The Raising the Bar Act also saw the enactment of new section 191A, which pertains to the commissioner’s power to rectify the register in instances where there is incorrect entitlement. The amendments to the Patents Act were intended so that “revocation is the exception, rather than the rule” for lack of entitlement.⁶²

Correcting Entitlement Prior to Grant

Commissioner’s Power to Rectify the Register (s 191A). As mentioned above, section 191A of the Act is a new section added by the Raising the Bar Act. Applicant(s) may now apply to the commissioner to rectify the register to correct entitlement.

Disputes between Joint Applicants (s 32). Entitlement may need correction due to a dispute between two or more “joint applicants.” Where such a dispute arises, a request under section 32 of the Act may be made for the commissioner to make a determination as to what names the application will proceed.

Application by an Eligible Person (s 36). Sometimes a patent application is made by an applicant who does not have entitlement, or may have entitlement, but in conjunction with one or more other eligible persons. The Act defines an “eligible person” as “a person to whom a patent for the invention may be granted under section 15.”⁶³ An eligible person may include another party not yet named as an applicant. An eligible person may apply for a declaration by the commissioner that the eligible person has an entitlement to the invention disclosed in the subject patent application. Thereafter, the commissioner may allow the application to proceed in the name(s) of the persons declared to be eligible.⁶⁴

Opposition Based on Lack of Entitlement (s 33). After acceptance of the application, there is a three-month opposition period where an opponent may oppose the grant of the patent.⁶⁵ One of the grounds of opposition is that the nominated person is either: “(i) not entitled to a grant of a patent for the invention; or (ii) entitled to a grant of a patent for the invention but only in conjunction with some other person.”⁶⁶ Should the application be successfully opposed under this ground, the applicant may apply to the commissioner under section 33 of the Act to have the patent grant to the “eligible persons” (i.e., the persons properly entitled to the grant of the patent).

Correcting Entitlement after Grant of the Patent

Once the patent has granted, the patent request cannot be amended unless accomplished through court action or administrative action by the commissioner.⁶⁷ Each option is briefly discussed below.

Order by the Court for Rectification of the Register (s 192). Under section 192 of the Act, a person may apply to the court for an order to rectify the register where the person was aggrieved by the omission of an entry from the register; an entry made in the register without sufficient cause, an entry wrongly existing in the register, or an error or defect in an entry in the register.

Declaration by the Court Arising Out of Revocation (s 34). Entitlement may be corrected if, during a court proceeding, the court is satisfied that the patent was granted to an applicant who did not have entitlement from all the inventors, or the patentee was not an eligible person but at least one other person was an “eligible person” (see definition above). Upon obtaining such a declaration, an application may be made under section 34 of the Act for the commissioner to grant a patent for the invention to the persons declared to be eligible persons by the court.

An adverse consequence of using section 34 is that “[t]he ‘rectified grantee’ acquires rights in respect of infringement only prospectively.”⁶⁸ Thus, a remedy for infringement of a new patent granted under section 34 would only lie from the date of the publication of the specification relating to the application for patent under section 34.⁶⁹

Declaration by the Commissioner following Revocation (s 35). A patentee may apply to the commissioner to have the patent revoked. Once the patent is revoked, one or more “eligible persons” in relation to the invention as claimed in the revoked patent may apply for a patent in the name of the eligible persons under section 35 of the Act. The claims of the resulting patent will have the priority date of the claims of the patent revoked.⁷⁰

Preventative Measures

One way in which to lessen the possibility of encountering entitlement issues is to conduct an inventorship determination utilizing the Polwood factors. Once inventorship is determined, assignments should be obtained early.

It is also advisable to ensure that the patent request correctly reflects the inventors, because the Federal Court has revoked more than one patent on the ground that the patent was obtained by “false suggestion or misrepresentation.”⁷¹ It is also a ground of revocation, under section 138(3)(e) of the Act, where an amendment of the patent request “was made by fraud, false suggestion or misrepresentation.” Additionally, the explanatory memorandum behind the Raising the Bar Act notes several situations where revocation is appropriate based on lack of entitlement, such as when none of the persons to whom the patent was granted are correctly entitled to the patent, or if correctly entitled persons have not acted in good faith or have been grossly negligent in permitting the patent to be granted to incorrectly entitled persons.⁷²

The above summarized approaches to inventorship in both the United States and Australia highlight the importance of correctly identifying the inventors in a patent application. Consequences for errors in inventorship can go as far as refusal to grant patent rights or revoking patent rights that may have already been granted. Though there are similarities, patent law in different countries may vary in the finer details behind inventorship determination. Keeping track of inventorship throughout the patenting process, and consulting with local counsel on the standards for inventorship in a particular jurisdiction as needed, and promptly correcting any inventorship errors are therefore critical steps in the patenting process.

Endnotes

1. U.S. Const. art. I, § 8, cl. 8.

2. See, e.g., Christopher A. Rothe, Fixing Inventorship Problems in U.S. Patent Applications and U.S. Patents, RatnerPrestia (Feb. 16, 2014), https://www.ratnerprestia.com/2014/02/16/fixing-inventorship-problems-in-u-s-patent-applications-and-u-s-patents.

3. U.S. Pat. & Trademark Office, Manual of Patent Examining Procedures (MPEP) § 2138.04 (9th ed. Rev. 7, July 2015) (quoting Townsend v. Smith, 36 F.2d 292, 295 (C.C.P.A. 1930)).

4. See 35 U.S.C. § 116(a).

5. See id.

6. Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1349 (Fed. Cir. 2016) (quoting 35 U.S.C. § 116).

7. See id. at 1350 (quoting Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993)).

8. MPEP, supra note 3, § 301 (citing 35 U.S.C. § 154(a)(1)).

9. Id. (citation omitted).

10. Id.

11. Id.

12. 35 U.S.C. §§ 1–376.

13. Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1342 (Fed. Cir. 2014).

14. Id.

15. Id.

16. 754 F.3d 940 (Fed. Cir. 2014).

17. Id. at 946.

18. See 37 C.F.R. § 1.48(a).

19. See id. § 1.48(b).

20. See Ian Y. Liu & Leslie A. McDonell, AIA Breathes Life into Inventorship Correction in PTO, BNA’s Pat. Trademark & Copyright J., Nov. 1, 2013, http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=12c99bf6-30bc-4d6b-8956-e07b2fec420c.

21. Id. (citing Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993)).

22. Id.

23. 35 U.S.C. § 135(a)(1).

24. Id. § 135(a)(2).

25. See 37 C.F.R. § 1.324(a).

26. See id. § 1.324(b) (emphasis added).

27. See, e.g., Vapor Point LLC v. Moorhead, 832 F.3d 1343 (Fed. Cir. 2016) (“[S]ection 256 . . . explicitly authorizes judicial resolution of co-inventorship contests over issued patents.” (quoting MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1570 (Fed. Cir. 1989))).

28. Entitlement, Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/entitlement) (last visited July 25, 2017).

29. See generally Patents Act 1990 (Cth) s 13 (Austl.).

30. Patents Act 1990 (Cth) s 13(2).

31. Patents Act 1990 (Cth) sch 1.

32. Stack v Brisbane City Council [1999] FCA 1279, ¶ 38 (Austl.).

33. See, e.g., Patents Act 1990 (Cth) s 138(3)(a).

34. See Stack v Brisbane City Council [1999] FCA 1279, ¶ 52.

35. Patents Act 1990 (Cth) s 15(1).

36. Univ of BC v Conor Medsystems, Inc (UBC v Conor Med) [2006] FCAFC 154, ¶ 37 (Austl.).

37. Speedy Gantry Hire Pty Ltd & Anor v Preston Erection Pty Ltd (1998) 40 IPR 543, 550 (Austl.).

38. Id.; UBC v Conor Med [2006] FCAFC 154, ¶ 37.

39. Univ of W Austl v Gray (UWA) [2009] FCAFC 116, ¶ 253 (Austl.).

40. Polwood Pty Ltd v Foxworth Pty Ltd (Polwood) [2008] FCAFC 9, ¶ 61 (Austl.).

41. [2014] FCA 4, ¶ 108 (Austl.).

42. Id. (citations omitted).

43. See, e.g., 35 U.S.C. §§ 115, 116; 37 C.F.R. § 1.63(a)(4).

44. Henry Bros (Magherafelt) Ltd v Ministry of Defence [1997] RPC 693, 706 (quoted with approval in Gen Transp Equip Pty Ltd v. Tytec Logistics Pty Ltd [2015] APO 91) (Austl.).

45. Merk Co v Sherman [2007] APO 9, ¶ 28 (Austl.).

46. Polwood [2008] FCAFC 9, ¶ 48 (quoting Shum v. Intel Corp., 499 F.3d 1272 (Fed. Cir. 2007)).

47. Univ of Southhampton’s Applications [2006] RPC 21, ¶ 39 (“In the context of entitlement to a patent a mere, non-enabling idea, is probably not enough to give the patent for it to solely the devisor. Those who contribute enough information by way of necessary enablement to make the idea patentable would count as ‘actual devisors’, having turned what was ‘airy-fairy’ into that which is practical.”) (referred to in Polwood [2008] FCAFC 9, ¶ 44) (Austl.).

48. JMVB Enters Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474, ¶ 132 (Austl.).

49. See Falkenhagen v Polemate Pty Ltd [1995] APO 32 (Austl.).

50. See, e.g., Oakmoore Pty Ltd v ARB Corp Ltd [2015] APO 66 (Austl.).

51. See, e.g., Gen Transp Equip Pty Ltd v. Tytec Logistics Pty Ltd [2015] APO 91, ¶¶ 60–65.

52. See, e.g., Oakmoore Pty Ltd v ARB Corp Ltd [2015] APO 66; Gen Transp Equip Pty Ltd v Tytec Logistics Pty Ltd [2015] APO 91.

53. Patents Act 1990 (Cth) ss 59(a), 138(3)(a).

54. Patents Act 1990 (Cth) s 59(a).

55. Patents Act 1990 (Cth) s 138(3)(a).

56. UBC v Conor Med [2006] FCAFC 154.

57. Id. ¶ 2.

58. Conor Medsystems, Inc v Univ of BC [No. 2] (Conor Med v UBC) [2006] FCA 32 (Austl.).

59. UBC v Conor Med [2006] FCAFC 154.

60. Intellectual Property Laws Amendment (Raising the Bar) Act 2012, No. 35 (Austl.).

61. Patents Act 1990 (Cth) s 138(4).

62. Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) item 75.

63. Patents Act 1990 (Cth) sch 1.

64. Patents Act 1990 (Cth) s 36(3A).

65. Patents Regulations 1991 (Cth) s 6.2(1).

66. Patents Act 1990 (Cth) s 59(a).

67. Patents Regulations 1991 (Cth) s 10.3(9).

68. GS Tech Pty Ltd v Elster Metering Pty Ltd [2008] FCA 17, ¶ 79.

69. Id.

70. Patents Act 1990 (Cth) s 35(1B).

71. See, e.g., Conor Med v UBC [2006] FCA 32, ¶ 20; JMVB Enters Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474, ¶¶ 136, 150 (“An incorrect statement to the Commissioner as to the identity of the inventor of a patent application which is later granted will make the patent susceptible to revocation on the ground of false suggestion or misrepresentation.” (citations omitted)).

72. Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) item 75.