The government has indicated that innovation fosters economic growth and is essential to maintaining a competitive position in international markets. Patents are the preferred mechanism by which the Australian Government and other governments encourage their nationals to protect their innovations. The question of the entitlement was raised in several cases in the Federal Court of Australia where there has been a failure to name all of the inventors on a patent grant (non-joinder) or where persons were mis-named as inventors, who were not and consequently have no interest in a grant (rnis-joinder). In both cases, parties who were not themselves daiming an entitlement to the invention, brought objections based on a number of grounds, including entitlement. The results have been the revocation of the patent in the case on the non-joinder of an inventor and in the case of mis-joinder, the preliminary view of a judge of the Federal Court has been, that the patent would be invalid through lack of entitlement. The result is that competitors are permitted to 'exploit' the invention, as the subject matter is not protected by a patent. The implications are far reaching, For example, where a research team in collaboration with another develops an invention but omits the inventive contribution of even one member of one team or includes a person who has not made an inventive contribution in the patent grant, the patent will be invalid. In these circumstances, the author considers that the result produces a disincentive to innovate. Consideration of this area in other jurisdictions reveals that the U.S. and the U.K. have recognised this as an unsatisfactory state of affairs. As a result, Congress in the U.S. made provision in their Patent Code in the early 1950's, that in the case of error or mistake giving rise to a non-joinder or mis-joinder of inventors, the patent would not be invalid but could be rectified by the Director of Patents and Trade Marks (the 'Director'). In the U.K., the Comptroller has powers to deal with a wide variety of cases involving entitlement to ownership of a patent. The situations include but are not limited to cases where some but not all of the persons entitled to the grant have been granted the patent, i.e. non-joinder, or where a person entitled to be granted a patent, has been granted a patent together with a person who is not entitled, i.e. mis-joinder. The thesis will focus on the non-joinder and mis-joinder of inventors, but the U.K. provision addresses a wider field of parties entitled, whether entitled as inventors or on some other basis. In addition, the U.K. and Germany have made provision restricting the persons who are able to challenge a patent on entitlement grounds. This is restricted to those persons having an interest in the patent, rather than open to any person, as is the case in Australia. The Australian decisions have been determined on historic cases dating back to the 17th century. It is timely to consider amendments which will overcome revocation of patents under Australian law, for what is essentially a matter between the persons interested. These amendments will accordingly encourage innovation, particularly in an environment where intellectual property has taken on greater importance and where the identification of the inventor has become more complex as collaborations in research become more common.
| Identifer | oai:union.ndltd.org:ADTP/265503 |
| Date | January 2007 |
| Creators | Eliades, Dimitrios George |
| Publisher | Queensland University of Technology |
| Source Sets | Australiasian Digital Theses Program |
| Detected Language | English |
| Rights | Copyright Dimitrios George Eliades |
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