If you want to amend a patent, you will need to notify IP Australia. So what counts when you amend a patent? Some common patent amendments include:

  • Changing your name or address;
  • If the ownership of the patent changes when you grant a licence to someone; or
  • If there are any mistakes that have been recorded.

Also, this information needs to be kept up to date. For instance, if you do not have a patent attorney, IP Australia will send you a notification when it is time to pay the renewal fee for your patent. If you have not updated your address, you will not receive the notification, and the onus is on you.

Assignments

As mentioned above, the granting of a licence is information that needs to be conveyed to IP Australia. Similarly, where you are assigning the ownership of the patent (or even the patent application), you will need to notify IP Australia.

The change in ownership could come about by a direct transfer of interest from one party to another, or a merger between parties such that a new entity owns the patent.

How to notify IP Australia

IP Australia will need to know all the details of the change of ownership. Depending on the nature of the change of ownership, you will need to supply a copy of the document that effected the transfer i.e. deed of assignment, merger document or a sale agreement.

You need to make sure that the document includes details of:

  • the name of the current owner;
  • the name of the new owner;
  • the date of execution of the assignment;
  • the patent number (or application number);
  • signatures of both or all necessary parties; and
  • changing the name of a patent applicant

If you have transferred ownership to someone, you can change the name of the patent applicant by contacting IP Australia and asking them to amend a patent request so that it has the name of the new applicant.

Alternatively, the new applicant can contact IP Australia and ask them to change the current applicant’s name to their own. IP Australia may require proof of ownership documents to be filed i.e. the deed of assignment.

Mistake in record of name

If your name is recorded incorrectly and you have been granted a patent, there are two situations where you can ask IP Australia to change the name. The first is if the name was recorded incorrectly because of a clerical error, and the second is if there is an obvious mistake in the name.

If you believe that a clerical error was made, you will need to provide evidence and explain the facts to show that a clerical error was the reason for the incorrect record. These are mistakes that are made in the writing or copying of the name; where a different name was written to the one that was intended to be written.

If you are unable to prove that the reason for the error was clerical, it is unlikely that it will be changed. If this is the case, the next step is to take the matter to court and get an order requiring the change to be made.

Conclusion

To amend a patent is not always such a simple process. As such, it is important to keep the details of your patent updated. Check carefully for mistakes and take the right steps to correct them. If you are unsure of what you need to do, it is helpful to chat with an intellectual property professional who can guide you through the process.

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Dhanu Eliezer
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