Patents Act · 2023 Revised Edition · Part · Right to Apply for and Obtain Patent
20. Determination before grant of questions about entitlement to patents etc.
Official textFrom Attorney General's Chambers, unchanged
At any time before a patent has been granted for an invention —
patent
“patent” means a patent under this Act and includes a patent in force by virtue of section 114(4);
any person may refer to the Registrar the question whether he is entitled to be granted (alone or with any other persons) a patent
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for that invention or has or would have any right in or under any patent so granted or any application for such a patent; or
any of two or more co-proprietors of an application for a patent for that invention may so refer the question whether any right in or under application should be transferred or granted to any other person, and the Registrar shall determine the question and may make such order as he thinks fit to give effect to the determination.
Where a person refers a question relating to an invention under subsection (1)(a) to the Registrar after an application for a patent for the invention has been filed and before a patent is granted in pursuance of the application, then, unless the application is refused or withdrawn before the reference is disposed of by the Registrar, the Registrar may, without prejudice to the generality of subsection (1) and subject to subsection (6) —
order that the application shall proceed in the name of that person, either solely or jointly with that of any other applicant or any specified applicant;
where the reference was made by two or more persons, order that the application shall proceed in all their names jointly;
refuse to grant a patent in pursuance of the application or order the application to be amended so as to exclude any of the matter in respect of which the question was referred; or
make an order transferring or granting any licence or other right in or under the application and give directions to any person for carrying out the provisions of any such order.
Where a question is referred to the Registrar under subsection (1)(a) and —
Registrar
“Registrar” means the Registrar of Patents and includes any Deputy Registrar of Patents holding office under this Act;
the Registrar orders an application for a patent for the invention to which the question relates to be so amended;
any such application is refused under subsection (2)(c)
before the Registrar has disposed of the reference (whether the reference was made before or after the publication of the application); or
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any such application is refused under any other provision of this Act or is withdrawn before the Registrar has disposed of the reference, but after the publication of the application, the Registrar may order that any person by whom the reference was made, may, within the prescribed period make a new application for a patent for the whole or part of any matter comprised in the earlier application or, as the case may be, for all or any of the matter excluded from the earlier application, subject in either case to section 81, and in either case that, if such a new application is made, it shall be treated as having been filed on the date of filing the earlier application.
Where a person refers a question under subsection (1)(b)
relating to an application, any order under subsection (1) may contain directions to any person for transferring or granting any right in or under the application.
right
“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;
If any person to whom directions have been given under subsection (2)(d) or (4) fails to do anything necessary for carrying out any such directions within 14 days after the date of the directions, the Registrar may, on application made to him by any person in whose favour or on whose reference the directions were given, authorise him to do that thing on behalf of the person to whom the directions were given.
Where on a reference under this section it is alleged that, by virtue of any transaction, instrument or event relating to an invention or an application for a patent, any person other than the inventor or the applicant for the patent has become entitled to be granted (whether alone or with any other persons) a patent for the invention or has or would have any right in or under any patent so granted or any application for any such patent, an order shall not be made under subsection (2)(a), (b) or (d) on the reference unless notice of the reference is given to the applicant and any such person, except any of them who is a party to the reference.
inventor
“inventor”, in relation to an invention, means the actual deviser of the invention and “joint inventor” shall be construed accordingly;
If it appears to the Registrar on a reference of a question under this section that the question involves matters which would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court’s jurisdiction to determine any such question and make a declaration, the court shall have jurisdiction to do so.
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No direction shall be given under this section so as to affect the mutual rights or obligations of trustees or of the personal representatives of deceased persons, or their rights or obligations as such.
Terms defined in s 2
date of filing
Defined · s 2“date of filing”, in relation to — (a) an application for a patent made under this Act, means the date of filing that application by virtue of section 26; and (b) any other application, means the date which, under the law of the country where the application was made or in accordance with the terms of a treaty or convention to which that country is a party, is to be treated as the date of filing that application in that country or is equivalent to the date of filing an application in that country (whatever the outcome of the application);
inventor
Defined · s 2“inventor”, in relation to an invention, means the actual deviser of the invention and “joint inventor” shall be construed accordingly;
patent
Defined · s 2“patent” means a patent under this Act and includes a patent in force by virtue of section 114(4);
Registrar
Defined · s 2“Registrar” means the Registrar of Patents and includes any Deputy Registrar of Patents holding office under this Act;
right
Defined · s 2“right”, in relation to any patent or application, includes an interest in the patent or application and, without prejudice to the foregoing, any reference to a right in a patent includes a reference to a share in the patent;
Part
Applications for Patents
Part
Procedure for Grant of Patent
Part
Provisions as to Patents After Grant
Part
Property in Patents and Applications for Patents and Registration
Part
Employees’ Inventions
Part
Contracts as to Patented Products
Part
Licences of Right and Compulsory Licences
Part
Use of Patented Inventions for Services of Government
Part
Infringement of Patents
Part
Revocation of Patents and Validity Proceedings
Part
Amendments of Patents and Applications
Part
International Applications for Patents
Part
Legal Proceedings
Part
Offences
Part
Patent Agents
Part