Patent Assignment in Australia and Transfer of Ownership

Whether you are acquiring new technology, divesting non-core intellectual property assets, restructuring a corporate group, or implementing a broader commercialization strategy, a patent assignment must be executed with precision and legal rigor. In Australia, patent ownership is a statutory right, and any defect in the transfer process can expose parties to disputes, invalidate enforcement rights, or result in the unintended loss of valuable commercial assets. An improperly handled assignment can therefore carry significant legal, commercial, and financial consequences.

What is a Patent Assignment?

A patent assignment is the formal and complete transfer of proprietary ownership in a patent from the existing owner i.e., the assignor, to another party known as the assignee. The assignment must transfer the entirety of the assignor’s legal and beneficial interest, leaving the assignor with no residual proprietary rights in the patent, unless expressly reserved.

The statutory framework governing patent assignments in Australia is set out in the Patents Act 1990 (Cth). This framework is prescriptive and must be strictly complied with to ensure that ownership passes validly and is capable of enforcement.

Formal Requirements for a Valid Assignment

The fundamental requirement for a valid patent assignment is set put in Section 14 of the Patents Act 1990 (Cth). The provision mandates that an assignment must be in writing and signed by, or on behalf of, the assignor and the assignee.

This is a strict, non-negotiable requirement. An oral agreement, an informal understanding, or a “handshake deal” holds no legal effect for the purposes of transferring patent ownership, either as between the parties or in the eyes of IP Australia.

As recognized in In the Matter of Fletcher’s Patent (10 RPC 252), while a subsequent written memorandum might formalize an earlier oral agreement, it is the written document itself that constitutes the legally operative act of assignment. Without it, no proprietary interest passes.

The purpose of this formal requirement is to create certainty. A written assignment provides a clear, unambiguous record of the transfer, which is vital for the assignee to enforce their rights against infringers, grant licenses or security interests, and deal with the patent as a commercial asset, including sale or valuation. It is crucial to draft a Deed of Assignment which is clear, comprehensive, and fully compliant with the Act, thereby eliminating ambiguity and reducing the risk of future title disputes.

Why is Registration of the Assignment critical?

Execution of a Deed of Assignment is a necessary first step, but it is not the end of the process. For a transfer of ownership to have full legal and practical effect, it must be recorded on the Australian Register of Patents maintained by IP Australia. While the assignment is legally effective inter partes once executed, registration is what makes the assignment effective against third parties and confers standing on the assignee in key legal contexts.

Recording the assignment with IP Australia provides public notice of ownership public notice of ownership, which is essential in enforcement and due diligence contexts. Further, recording the assignment enables the assignee to commence infringement proceedings in their own name, and prevents the assignor from improperly dealing with the patent, such as purporting to reassign or encumber it.

Failure to record the assignment can materially undermine the commercial utility of the patent, particularly in litigation, licensing, or investment transactions.

Technical Aspects of Patent Assignments

Although the concept of assignment appears straightforward, Australian patent law recognises a number of complex ownership scenarios that require careful handling.

Assignment by a Co-owner

When a patent is jointly owned by multiple parties, the principle of shared ownership introduces a critical hurdle since statutory restrictions apply. Under Section 16(1) of the Patents Act 1990 (Cth), a co-owner cannot assign their interest in the patent without the consent of all other co-owners. Consent must be affirmative and unequivocal.

As outlined in Re Milward-Bason and Burgess (1988) AIPC 90-475, mere silence or failing to object is not sufficient. The consent must be clearly documented, for instance, by having all co-owners sign the Deed of Assignment or a separate, clearly worded consent document.

Failure to obtain valid consent can render the entire assignment ineffective, exposing the parties to serious title defects.

Partial Assignments

The Patents Act 1990 (Cth) permits limited forms of partial assignments. Under Section 14(2) of the Patents Act 1990 (Cth), a patent may be assigned for only a part of the patent area (e.g., for a specific state or territory).

However, attempts to assign a patent in other partial ways can create significant legal ambiguity. For instance, other forms of partial assignment, particularly those relating to claims or modes of exploitation, are legally complex and often misunderstood.

The most complex scenario is an attempt to assign only some claims of a patent. While Dunnicliff v Mallet 141 ER 795 suggested that such an arrangement could give rise to a tenancy in common, this view was later questioned in Walton v Lavater 141 ER 1127. The more likely interpretation is that such arrangements are more properly characterized as licenses rather than true assignments.

This distinction is crucial, as a licensee typically has different (and often fewer) rights than an owner, particularly concerning the ability to sue for infringement or to further assign their interest.

Recognizing this ambiguity, when faced with an agreement that purports to assign only specific claims or limited rights of exploitation (e.g., the right to manufacture but not to sell), the Australian Patent Office will often record the interest as an “assignment/license”, reflecting their hybrid nature. It is advisable to carefully structure these transactions to ensure the legal form aligns with the intended commercial outcome, whether that be a genuine transfer of ownership or a carefully defined license.

Assignments Involving Minors

While less common, Australian paten law permits minors (persons under 18 years of age) to own and assign intellectual property, as recognized in cases like Chaplin v Lesley Frewin (Publishers) Ltd (1966) Ch 71.

However, if the assignment is executed by a deed, it may be voidable by the minor upon reaching the age of majority. The Patents Act 1990 (Cth) requires only that the assignment be “in writing,” not necessarily a formal deed. This distinction can be critical in transactions involving minors.

Once an assignment is recorded on the Register, it is generally considered final reversal is generally only possible by court order, making upfront structuring and advice essential.

Evidence and Documentation for Recordal

The statutory basis for recording a change in ownership or other interests (like mortgages or licenses) in a patent is found in Section 187 of the Patents Act 1990 (Cth) and Regulation 19.1 of the Patents Regulations 1991. These provisions require an application to be made in the approved form and supported by evidence of the entitlement or interest to the “reasonable satisfaction of the Commissioner.”

Accepted evidence may include:

• A deed of assignment executed by all relevant parties.
• Court orders or a letter from a Court Registrar.
• An authenticated copy of a Grant of Probate or Letters of Administration.
• Mortgage documents or a license agreement.

An attested copy of the relevant document is generally sufficient, accompanied by a signed certificate stating it is a true and accurate copy of the original. If a document contains commercially sensitive information, a redacted copy can be filed, provided the portions essential to proving the transfer of interest are not redacted.

The Register will then be updated to record the particulars of the instrument, such as “assignment dated…” As noted in Coflexip Stena Offshore Ltd’s Patent [1997] RPC 179, the function of the Register is to identify the current proprietor, not to provide a full chain-of-title narrative. Parties should also be aware that under Section 193 of the Patents Act 1990 (Cth), any document filed as proof of title are open to public inspection.

Timing and Patent Status Considerations

The timing of an assignment and the status of the patent are critical factors that can affect the validity and recordal of the transfer.

Pre-Grant Assignments

It is common to assign rights of an invention before a patent is granted. This is known as an equitable assignment. It is a binding agreement that the patent, once granted, will belong to the assignee.

For recordal purposes, the assignment must be precise, unequivocal, and clearly directed to the future patent rights. Pre-grant assignments are commonly used in R&D collaborations, funding arrangements, and corporate transactions, and must be carefully drafted to avoid uncertainty.

Assignments of Patents “In Force”

Section 187 of the Patents Act 1990 (Cth) refers to recording interests in “patents in force.” This means the transaction (e.g., the signing of the assignment deed) must have occurred while the patent was in force. An interest can still be recorded after the patent has ceased, provided the interest itself arose before the cessation.

However, where a patent has ceased and is awaiting restoration, or has expired and is subject to an application for an extension of term, the Commissioner will not record any change in ownership that occurred after the cessation or expiry until the patent has been successfully restored or extended. This principle is supported by key judgements such as Re Usines de Melle’s Patent (1954) 91 CLR 42 and Re Sanofi’s Petition for Extension of Term (1981) 51 AOJP 2142.

How Can We Assist?

Patent assignments demand both technical legal expertise and commercial insight. Our firm provides a comprehensive, end-to-end patent assignment service, including: strategic structuring advice; due diligence and title analysis; drafting and negotiating robust assignment instruments; and managing recordal with IP Australia.

We regularly advise on complex co-ownership structures, pre-grant assignments, cross-border transactions, and portfolio transfers, ensuring that every assignment is legally effective, commercially aligned, and fully compliant with Australian law.

Contact us today for a free consultation.