patent assignment australia

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May 24, 2024 by Claire Darby

UNDERSTANDING INTELLECTUAL PROPERTY ASSIGNMENT IN AUSTRALIA

In the dynamic landscape of business and creativity, intellectual property ( IP ) stands as a critical asset for individuals and organisations alike. In Australia, the assignment of intellectual property rights is a significant legal process that allows the transfer of these rights from one party to another.

LEGAL FRAMEWORK

• The Patents Act 1990 (Cth) governs the protection of inventions.
• The Trade Marks Act 1995 (Cth) covers the protection of brand names, logos, and other identifiers.
• The Copyright Act 1968 (Cth) deals with the protection of literary, artistic, musical, and dramatic works.
• The Designs Act 2003 (Cth) protects the visual design of objects.
• The Fair Work Act 2009 (Cth) is an employment law that ensures that IP clauses comply with general employment standards and contractual fairness.

These statutes provide the foundation for the assignment of IP rights, ensuring that the transfer process is legally recognised and enforceable.

TYPES OF IP ASSIGNMENT

Patent, trade mark, design and copyright.

Assignment of patents involves the transfer of rights to an invention. The assignment must be in writing and signed by both parties. It is essential to record the assignment with IP Australia to maintain legal enforceability.

Similarly, transferring a trade mark (involves assigning the rights to use the brand name or logo) and the assignment of a design must be documented in writing, and the new owner should register the assignment with IP Australia.

Assignment of copyright can be more complex due to the variety of works covered. The assignment of copyright must also be in writing, specifying the work and the rights being transferred. As there is no formal requirement to register the assignment with a governmental body, it is advisable to keep detailed records.

IP ASSIGNMENT TO EMPLOYERS

From employees.

Trade secrets that protect confidential business information can be protected via employment agreements and/or confidentiality agreements.

Employment agreements should explicitly state that any IP created by the employee (for example, copyright-protected writings or inventions) in the course of their employment (work-related IP) belongs to the employer. Moreover, clearly outlining the scope of employment to include all potential IP-generating activities helps avoid disputes over what is considered within the realm of employment duties.

Employers should develop a comprehensive IP policy with detailed processes for disclosure, protection, and assignment of IP that all employees are required to acknowledge and understand.

In Australia, moral rights (rights to attribution and integrity) are personal rights held by creators. Employees can agree to waive these rights in favour of the employer in writing.

FROM CONTRACTORS

Contractor agreements (including any other similar agreements such as service agreements or collaboration agreements) are to explicitly ensure that clear terms assign all IP created during the engagement (such as designs, software codes or R&D) to the employer and should cover both the existing IP used in the creation of new work and any new IP developed. It should also unambiguously outline how any pre-existing IP the contractor brings into the project will be treated (usually through licensing).

Include warranty clauses that the contractor has the right to assign the IP and indemnity clauses protecting the employer against any claims of IP infringement. Before entering contractor agreements, employers must conduct thorough due diligence to ensure that contractors do not have pre-existing obligations that conflict with the assignment of IP.

Moreover, contractor agreements should include clauses that require contractors to provide necessary assistance in perfecting the employer’s rights to the IP, such as signing additional documents or providing necessary information post-contract.

ESSENTIAL CONSIDERATIONS

A written agreement is paramount in any IP assignment, which, if executed, will irrevocably and permanently transfer the ownership of the IP rights. Both parties should conduct thorough due diligence before finalising the assignment. This involves verifying the validity and scope of the IP rights, ensuring that there are no existing encumbrances or disputes, and confirming that the assignor has the authority to transfer the rights.

For patents, trade marks, and designs, registering the assignment with IP Australia is crucial. This step not only formalises the transfer but also provides public notice of the change in ownership, which can be vital in protecting the new owner’s rights against potential infringement.

IP assignments can have significant tax implications. Both parties should seek tax expert advice to understand the potential tax liabilities and benefits, including any applicable stamp duties or capital gains taxes. For example, the transfer of goodwill (business asset), namely, dutiable property is a dutiable transaction under the Duties Act 2009 (NSW).

RETAIN IP LAWYER

Seek advice from legal professionals specialising in IP law to draft and review assignment deeds, employment agreements, contractor agreements, policies, and other legal documents, including confidentiality agreements. This helps ensure a clear, legally binding record of the assignment and duty of confidentiality, as well as compliance with current laws and best practices.

Please contact The IP House Lawyers, which has assisted and advised clients in their trade mark assignments for over 20 years.

For any further information or queries on the above content, please contact us.

Jean Kallmyr | Lawyer, The IP House Lawyers | t: 0435 799 831 | e: [email protected]

Key Contact

Claire Darby | Managing Director/Lawyer, The IP House Lawyers | t: 0412 998 951 | e: [email protected]

The information and contents of this publication do not constitute any legal or financial advice. This publication is intended only for reference purposes for The IP House Lawyers’ clients and prospective clients.

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BY: HEDIE MEKA PhD

The Australian Patents Act 1990 (‘the Act’) uses the terms “applicant”, “nominated person”, “eligible person”, “entitlement”, and “patentee” in broad reference throughout the Act to refer to patent ownership or rights that flow therefrom. This overlap in language can be confusing and this article briefly sets out the intertwined concepts of inventorship, ownership, and entitlement under the Act.

Entitlement to the grant of a patent is set out under section 15 of the Act, which states that a patent may only be granted to:

(i) an inventor; or (ii) a person who would, on the grant of a patent, be entitled to have the patent assigned to them; or (iii) derives titled from (i) or (ii); or (iv) a legal representative of a deceased person mentioned in (i), (ii), or (iii).

Put simply, a patent may be granted to the inventor of an invention or a party who derives title to the invention from the inventor.

An eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.

The patent request that accompanies the patent application sets out the person/s nominated for the grant of the patent. Nominated person is defined in the Act as the person identified in a patent request as the person to whom the patent is to be granted. That is, the nominated person is the person claiming entitlement to the patent. The applicant as set out in the patent request is taken to be the nominated person for the grant of the patent.

Before acceptance of a patent, the nominated person must file a Notice of Entitlement asserting their entitlement to the grant of the patent pursuant to (i) to (iv) under section 15 (above).

Since section 15 prescribes who may be granted a patent, at acceptance, the applicant (who then becomes the patentee) must be a person eligible to be granted a patent, and who is entitled or can claim entitlement to the patent. Despite the prescriptive wording of section 15, the Act explicitly states under section 22A that a patent is not invalid merely because it was granted to a person who is not entitled to it or not granted to a person who is entitled to it.

Since the ownership rights to a patent flow from an inventor, determining inventorship is the crux of entitlement. Australian authorities have formulated an extensive framework for consideration of the contribution to inventorship. Two cases are pivotal to the law on inventorship/entitlement: University of Western Australia v Gray University of Western Australia v Gray (No 20) [2008] FCA 498 (“UWA”; issue undisturbed on appeal), and Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 (“Polwood”).

Justice French in UWA applied the following steps for determining entitlement:

• identify the “inventive concept” of the invention as defined by the claims;
• 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
• determine how any contractual or fiduciary relationships give rise to proprietary rights in the invention.

French J also drew upon foreign authorities in this determination, and in particular propositions set out in the US Court of Appeals in Burroughs Wellcome Co v Barr Laboratories Inc [1994] USCAFED 1225; (1994) 40 F 3d 1223 (Burroughs Wellcome) which are reproduced below:

• Conception is the touchstone of inventorship, the completion of the mental part of inventions.
• Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
• An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
• It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.

Under both Burroughs Wellcome and Australian law, “invention” is defined “by reference to completion in concept which distinguishes the invention from its verification and reduction to practice.”

Polwood fleshes out the consideration for determining inventorship:

“The entitlement to the grant of a patent as the inventor is not determined by quantitative contribution. The role of joint inventors does not have to be equal; it is qualitative rather than quantitative. It may involve joint contribution or independent contributions. The issue is whether the contribution was to the invention. What constitutes the invention can be determined from the particular patent specification which includes the claims. In some cases, evidence can assist. In some cases, the reduction of a concept to a working apparatus by a person may not be part of the invention, in other cases it may be. For example, the construction of an apparatus may involve no more than carrying out the instructions in the specification. This would not normally entitle that person to joint inventorship. On the other hand, joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed. One criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention. It may be that an invention is made as part of a collaborative effort. In those circumstances, it would ordinarily follow that the collaborators are joint inventors of the product of the collaboration. …. To ascertain the inventor for the purposes of entitlement to the grant of the patent it is therefore necessary to determine the contributions to the invention described in the patent application. The claims may assist in that determination, bearing in mind that the claims may be to less than the totality of the invention. It may also be appropriate to investigate the contributions to the inventive steps giving rise to the invention.”

The Full Court pointed out in Polwood that when considering inventorship, “what one is normally looking for is “the heart” of the invention. There may be more than one “heart” but each claim is not to be considered as a separate “heart” on its own.” Moreover, the reduction to practice of an inventive concept may or may not require an invention or inventive step. If not, reduction to practice does not demonstrate inventorship.

In disputes regarding entitlement to the grant of a patent, the Australian Patent Office applies the principles set out in UWA with the approach taken in Polwood.

In a nutshell, the law regarding inventorship in Australia is that a putative inventor or putative joint inventor must have made a material contribution to the invention. An aid to assessing whether a contribution is a material contribution to conception of the invention is the “but for” test as set out in J MVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474 :

“Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a particular person’s involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants…”.

Written by: Hedie Meka PhD

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• Part 1 Introduction, Quality
• 1. Introduction
• 2. Quality Management at IP Australia
• 3. Monitoring and Measuring Quality at IP Australia
• 4. Examination Quality Standards
• 5. Practice Change Procedure
• Part 2 General Filing Requirements
• Relevant Legislation
• 1. How a document is filed
• 2. Filing of Documents - requirements as to form
• 3. Non-compliance with filing requirements
• 4. Filing Process (excluding filing of applications for registration)
• Part 3 Filing Requirements for a Trade Mark Application
• 1. Who may apply?
• 2. Form of the application
• 3. Information required in the application
• 4. When is an application taken to have been filed?
• 5. The reason for having minimum filing requirements
• 6. The minimum filing requirements
• 7. Consequences of non compliance with minimum filing requirements
• 8. Other filing requirements
• 10. Process procedures for non payment or underpayment of the appropriate fee
• 11. Process procedures for the filing of a trade mark application
• Part 4 Fees
• 1. Fees - general
• 2. Circumstances in which fees are refunded or waived
• 3. Procedures for dealing with "fee" correspondence
• 4. Underpayments
• 5. Refunds and or waivers
• 6. No fee paid
• 7. Electronic transfers
• 8. Disputed credit card payments/Dishonoured cheques
• Part 5 Data Capture and Indexing
• 1. Background
• 2. Data Capture
• 3. Indexing and Re-scanning
• Glossary of Image Descriptors
• List of Top Level Terms
• Word Constituents
• Device Constituents
• 4. Regulated signs
• Part 6 Expedited Examination
• 1. Expedited Examination
• 2. Expedited Examination Process
• Part 7 Withdrawal of Applications, Notices and Requests
• 1. Withdrawal of an application, notice or request
• 2. Who can withdraw an application, notice or request?
• 3. Procedure for withdrawal of an application, notice or request
• 4. Procedure for withdrawal of an application to register a trade mark
• Part 8 Amalgamation (Linking) of Trade Marks
• 1. Amalgamation of applications for Registration (Transitional)
• 2. Amalgamation (Linking) of Trade Marks under the Trade Marks Amendment Act 2006
• Part 9 Amendments and Changes to Name and Address
• 2. Amendment of an application for a registration of a trade mark - general information
• 3. Amendment before particulars of an application are published (Section 64)
• 4. Amendment after particulars of an application have been published (Sections 63, 65 and 65A)
• 5. Amendments to other documents
• 6. Amendments after registration
• 7. Changes of name, address and address for service
• 8. Process for amendments under subsection 63(1)
• Part 10 Details of Formality Requirements
• Introduction
• 1. Formality requirements - Name
• 2. Formality requirements - Identity
• 3. Representation of the Trade Mark - General
• 4. Translation/transliteration of Non-English words and non-Roman characters
• 5. Specification of goods and/or services
• 6. Address for service
• 7. Signature
• 8. Complying with formality requirements
• Annex A1 - Abbreviations of types of companies recognised as bodies corporate
• Annex A2 - Identity of the applicant
• Part 11 Convention Applications
• 1. Applications in Australia (convention applications) where the applicant claims a right of priority
• 2. Making a claim for priority
• 3. Examination of applications claiming convention priority
• 4. Convention documents
• 5. Cases where multiple priority dates apply
• 6. Recording the claim
• 7. Effect on registration of a claim for priority based on an earlier application
• Part 12 Divisional Applications
• 1. Divisional applications - general
• 2. Why file a divisional application?
• 3. Conditions for a valid divisional application filed on or after 27 March 2007
• 4. In whose name may a divisional application be filed?
• 5. Convention claims and divisional applications
• 6. Can a divisional application be based on a parent application which is itself a divisional application? What is the filing date in this situation?
• 7. Can the divisional details be deleted from a valid divisional application?
• 8. Divisional applications and late citations - additional fifteen months
• 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012
• Annex A1 Divisional Checklist
• Part 13 Application to Register a Series of Trade Marks
• 1. Series of Trade Marks - Act
• 2. Material Particulars
• 3. Provisions of Paragraphs 51(1)(a),(b) and (c)
• 4. Applying Requirements for Material Particulars and Provisions of Paragraphs 51(1)(a), (b) and (c)
• 5. Restrict to Accord
• 6. Examples of Valid Series Trade Marks
• 7. Examples of Invalid Series Trade Marks
• 8. Divisional Applications from Series
• 9. Linking of Series Applications
• 10. Colour Endorsements
• Part 14 Classification of Goods and Services
• 1. The purpose of classification
• 2. The classification system
• 3. Requirement for a clear specification and for correct classification
• 4. Classification procedures in examination
• 5. Principles of classification and finding the correct class for specific items
• 6. Wording of the specification
• 7. Interpretation of specifications
• 8. International Convention Documents
• Annex A1 - History of the classification system
• Annex A2 - Principles of classification
• Annex A3 - Registered words which are not acceptable in specifications of goods and services
• Annex A4 - Searching the NICE classification
• Annex A5 - Using the Trade Marks Classification Search
• Annex A6 - Cross search classes - pre-June 2000
• Annex A7 - Cross search classes - June 2000 to December 2001
• Annex A8 - Cross search classes from 1 January 2002
• Annex A9 - Cross search classes from November 2005
• Annex A10 - Cross search classes from March 2007
• Annex A11 - Cross search classes from January 2012
• Annex A12 - Cross search classes from January 2015
• Annex A13 - List of terms too broad for classification
• Part 15 General Provision for Extensions of Time
• 1. When the general provision applies
• 2. When the general provision does not apply
• 3. Circumstances in which the Registrar must extend time
• 4. Grounds on which the Registrar may grant an extension of time
• 5. Form of the application
• 6. Extensions of time of more than three months
• 7. Review of the Registrar's decision
• Part 16 Time Limits for Acceptance of an Application for Registration
• 1. What are the time limits for acceptance of an application to register a trade mark?
• 2. Response to an examination report received within four (or less) weeks of lapsing date
• Part 17 Deferment of Acceptance
• 1. Deferment of Acceptance - introduction
• 2. Circumstances under which deferments will be granted
• 3. Period of deferment
• 4. The deferment process where the applicant has requested deferment
• 5. The deferment process where the Registrar may grant deferment on his or her own initiative
• 6. Termination of deferment
• 7. Transitional practice
• Annex A1 - Deferment of acceptance date - Grounds and time limits
• Part 18 Finalisation of Application for Registration
• 2. Accepting an application for registration
• 3. Rejection of an application for registration
• Part 19A Use of a Trade Mark
• 1. Use of a trade mark generally
• 2. Use 'as a trade mark'
• 3. Use 'in the course of trade'
• 4. Australian Use
• 5. Use 'in relation to goods or services'
• 6. Use by the trade mark owner, predecessor in title or an authorised user
• 7. Use of a trade mark with additions or alterations
• 8. Use of multiple trade marks
• Part 19B Rights Given by Registration of a Trade Mark
• 1. The trade mark as property
• 2. What rights are given by trade mark registration?
• 3. Rights of an authorised user of a registered trade mark
• 4. The right to take infringement action
• 5. Loss of exclusive rights
• Part 20 Definition of a Trade Mark and Presumption of Registrability
• 1. Definition of a trade mark
• 2. Background to definition of a trade mark
• 3. Definition of sign
• 4. Presumption of registrability
• 5. Grounds for rejection and the presumption of registrability
• Part 21 Non-traditional Signs
• 1. Non-traditional signs
• 2. Representing non-traditional signs
• 3. Shape (three-dimensional) trade marks
• 4. Colour and coloured trade marks
• 5. "Sensory" trade marks - sounds and scents
• 6. Sound (auditory) trade marks
• 7. Scent trade marks
• 8. Composite trade marks - combinations of shapes, colours, words etc
• 9. Moving images, holograms and gestures
• 10. Other kinds of non-traditional signs
• Part 22 Section 41 - Capable of Distinguishing
• 1. Registrability under section 41 of the Trade Marks Act 1995
• 2. Presumption of registrability
• 3. Inherent adaptation to distinguish
• 4. Trade marks considered sufficiently inherently capable of distinguishing
• 5. Trade marks that have limited inherent capacity to distinguish but are not prima facie capable of distinguishing
• 6. Trade marks having no inherent adaptation to distinguish
• 7. Examination
• Registrability of Various Kinds of Signs
• 10. Phonetic equivalents, misspellings and combinations of known words
• 11. Words in Languages other than English
• 12. Slogans, phrases and multiple words
• 13. Common formats for trade marks
• 14. New terminology and "fashionable" words
• 15. Geographical names
• 16. Surnames
• 17. Name of a person
• 18. Summary of examination practice in relation to names
• 19. Corporate names
• 20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works
• 21. Titles of other books or media
• 22. Numerals
• 23. Combinations of letters and numerals
• 24. Trade marks for pharmaceutical or veterinary substances
• 25. Devices
• 26. Composite trade marks
• 27. Trade marks that include plant varietal name
• Annex A1 Section 41 prior to Raising the Bar
• Annex A2 Flowchart of "Capable of Distinguishing"
• Part 23 Overcoming Grounds for Rejection under Section 41 - including Evidence of Use
• 2. Submissions in rebuttal, amendments and informal information
• 3. Evidence of use - general requirements
• 4. Examining evidence - general
• 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish
• 6. Endorsements for applications overcoming section 41 grounds for rejection
• Annex A1 - Information for applicants on the preparation and presentation of a declaration including model layout
• Annex A2 - Model layout for statutory declaration/affidavit
• Annex A3 - Model layout for supporting statutory declaration
• Annex A4 - How to supply evidence of use of a Trade Mark under subsection 41(5) - for trade marks with a filing date prior to 15 April 2013
• Annex A5 - How to supply evidence for use of a Trade Mark under subsection 41(6) - for trade marks with a filing date prior to 15 April 2013
• Annex A6 - How to supply evidence of use of a trade mark under subsection 41(4) - for trade marks with a filing date on or after 15 April 2013
• Annex A7 - How to supply evidence of use of a trade mark under subsection 41(3) - for trade marks with a filing date on or after 15 April 2013
• Part 24 Disclaimers
• 1. What is a disclaimer?
• 2. Request for a voluntary disclaimer
• 3. Effect of a disclaimer on registration
• 4. Effect of a disclaimer on examination
• 5. Amendment of disclaimers
• 6. Revocation of disclaimers
• Part 26 Section 44 and Regulation 4.15A - Conflict with Other Signs
• 1. Introduction to section 44 and regulation 4.15A
• 2. Presumption of registrability and the application of section 44
• 3. Cross Class Search List
• 4. Similarity of goods and services
• 5. Similarity of trade marks
• 6. Factors to consider when comparing trade marks
• 7. Trade marks with the same priority/filing date
• 8. Assignment of applications and registrations
• 9. Grounds for rejection when the citation is in its renewal period
• Annex A1 - Citing multiple names
• Part 27 Overcoming Grounds for Rejection under Section 44
• 3. Amending the goods and/or services of the applicant's specification
• 4. Negotiation with owner/s of conflicting trade mark/s
• 5. Filing evidence of honest concurrent use, prior use or other circumstances
• 6. Removal of the conflicting trade mark
• 7. Dividing the application
• Annex A1 - An example of a letter of consent
• 2. Legal submissions
• Part 28 Honest Concurrent Use, Prior Use or Other Circumstances
• 2. Honest concurrent use - paragraph 44(3)(a)
• 3. Examining evidence of honest concurrent use - the five criteria
• 4. Other circumstances - paragraph 44(3)(b)
• 5. Conditions and limitations to applications proceeding under subsection 44(3)
• 6. Prior use - subsection 44(4)
• 7. Examining evidence of prior use
• 8. Endorsements where the provisions of subsection 44(3) or 44(4) and/or reg 4.15A are applied
• Annex A1 - Information sheet for trade mark applicants - Evidence of honest and concurrent, prior use or other circumstances
• Part 29 Section 43 - Trade Marks likely to Deceive or Cause Confusion
• 1. Trade marks likely to deceive or cause confusion
• 2. Connotation
• 3. Deception and confusion as a result of a connotation within a trade mark
• 4. Descriptions of goods/services
• 5. International Non-Proprietary Names and INN Stems
• 6. Names of Persons
• 7. Phonewords and Phone Numbers
• 8. Internet Domain Names
• 9. Geographical References
• 10. Claims to Indigenous Origin
• Annex A1 - Table of INN stems
• Part 30 Signs that are Scandalous and Use Contrary to Law
• 2. Scandalous signs
• 3. Use contrary to law
• Annex A1 - Examples of Legislation which may trigger the provisions of section 42(b)
• Annex A2 - Official notice re copyright in the Aboriginal Flag
• Annex A3 - Defence force prohibited terms and emblems
• Annex A4 - Major Sporting Events protected words
• Part 31 Prescribed and Prohibited Signs
• 1. Prohibited signs - subsection 39(1)
• 2. Prescribed signs - subsection 39(2)
• 3. When does a ground for rejection exist under subsection 39(2)?
• 4. Practice regarding the signs prescribed under subsection 39(2) appearing in subreg 4.15
• 5. Other information relevant to examining trade marks that contain a prohibited and prescribed sign
• Part 32A Examination of Trade Marks for Plants (in Class 31)
• 2. Examination of Plant Trade Marks
• 2.1 Section 42: Contrary to Law
• 2.2 Section 39: Prescribed Signs
• 2.3 Section 41: Capacity to Distinguish
• 2.4 Section 43: Deception and Confusion
• 2.5 Section 44: Comparison of Trade Marks
• 2.6 Non-Roman characters (NRC) and transliterations in class 31 plant examination
• Annex 1 - Applicable Section of the PBR Act
• Annex 2 - Applicable Sections of the UPOV Convention
• Annex 3 - Applicable Sections of the ICNCP
• Annex 4 - An Example of a PBR Letter of Consent
• Annex 5 - Case Law Summaries
• Annex 6 - How to Supply Evidence of Use of a Trade Mark for Plants and/or Plant Material
• Part 32B Examination of Trade Marks for Wines (in Class 33)
• 2. Examination of Wine Trade Marks
• 2.2 Section 43: Deception and Confusion
• 2.4 Section 44: Comparison of Trade Marks
• 3. Protected Terms in Specifications of Goods
• Part 33 Collective Trade Marks
• 1. What is a collective trademark?
• 2. Application of Act
• 3. Application for registration
• 4. Limitation on rights given by registered collective trade marks
• 5. Assignment or transmission of collective trade marks
• 6. Infringement of collective trade marks
• Part 34 Defensive Trade Marks
• 1. Australian trade marks law and defensive trade marks
• 2. Requirements for the filing of a defensive trade mark
• 3. Section of the Act NOT applying to defensive trade marks
• 4. Registrability of defensive trade marks
• 5. Grounds for rejection under Division 2 of Part 4 of the Act
• 6. Grounds for rejecting a defensive application under section 187
• 7. Evidence required for defensive applications
• 8. Rights given by defensive registration
• 9. Grounds for opposing a defensive registration
• 10. Cancellation of defensive trade marks
• Part 35 Certification Trade Marks
• 1. What is a certification trade mark?
• 2. Certification trade marks and geographical indications (GIs)
• 3. Sections of the Act NOT applying to certification trade marks
• 4. The registrability of certification trade marks
• 5. Rights given by, and rules governing the use of, certification trade marks
• 6. Assessment by the Australian Competition and Consumer Commission (ACCC)
• 7. Opposition to the registration of a certification trade mark
• 8. Variation of rules
• 9. Assignment of registered certification trade marks
• 10. Assignment of unregistered certification trade marks
• 11. Transmission of certification trade marks
• 12. Rectification of the Register and variation of rules by order of the court
• Annex A1 - Certification Trade Marks flow chart
• Part 38 Revocation of Acceptance
• 1. What is revocation of acceptance?
• 2. Reasons for revocation
• 3. Revocation process
• Part 39 Registration of a Trade Mark
• 1. Overview of registration
• 2. Particulars of registration
• 3. Format of Certificate of registration
• 5. Date and term of registration
• 6. Registration fees
• 7. Registration process
• 8. Notification of Protection process for International Registrations Designating Australia
• Annex A1 - Certificate of Registration
• Part 40 Renewal of Registration
• 1. What is renewal?
• 2. Timing for renewal
• 3. Late renewal
• 4. Failure to renew
• Part 41 Cancellation of Registration
• 1. What is the effect of cancelling a registration?
• 2. Why is a registration cancelled?
• 3. Cancellation process
• Part 42 Rectification of the Register
• 1. What is rectification?
• 2. What part does the Registrar play in rectification actions brought by a person aggrieved?
• 3. Rectification procedures
• Annex A1 - Flow chart of rectification procedure
• Part 43 Assignment and Transmission
• 1. What is assignment and transmission?
• 2. Timing for assignment
• 3. Application to record assignment etc
• 4. Process for assigning all goods and/or services (full assignment)
• 5. Process for assigning only some goods and/or services (partial assignment)
• 6. Process for assignment of certification trade marks
• 7. Transmission of certification trade marks
• Part 44 Claim of Interest or Rights in a Trade Mark
• 2. Effect of recording the claim
• 3. When can the interest be recorded?
• 4. Recording the claim
• 5. Amending the record of a claim
• 6. Cancelling the record of a claim
• Part 45 Copies of Documents
• 1. Documents copied by the Office
• 2. Types of copies requested
• Annex A1 - Flow chart of production of copies/certified copies
• Part 46 Grounds for Opposition to Registration or Protection
• References used in this part
• 1. What is opposition to registration or protection?
• 2. The Registrar’s role in an opposition
• 3. When registration or protection can be opposed
• 4. Grounds for opposition to registration of national trade marks
• 5. Grounds for opposition to protection of international trade marks
• Part 47 Procedures for Opposing Registration or Protection
• 1. Filing a notice of opposition
• 2. Request to amend a notice of intention to oppose or a statement of grounds and particulars
• 3. Filing a notice of intention to defend
• 4. Opposition may proceed in the name of another person
• 5. Making Convention documents available to opponent
• Part 48 Removal of a Trade Mark from the Register for Non-use
• Relevant legislation
• 1. What if a trade mark is not used?
• 2. Application for removal/cessation of protection for non-use
• 3. Opposition to a non-use application
• 4. Application for extension of time to oppose the non-use application where the trade mark is already removed
• 5. Grounds on which a non-use application may be made
• 6. Burden on opponent to establish use of a trade mark
• 7. Authorised use by another person
• 8. Use by an assignee
• 9. Localised use of trade mark
• 10. Circumstances that were an obstacle to the use of a trade mark
• 11. Where there is no evidence in support of the opposition
• 12. Registrar's discretion in deciding an opposed non-use application
• 13. Registrar to comply with order of court
• 14. Right of appeal
• 15. Certificate - Use of a trade mark
• Part 49 Non-use Procedures
• 1. Application for removal or cessation of protection of a trade mark for non-use
• 2. Opposition to non-use application
• 3. Amendment to notice of intention to oppose or statement of grounds and particulars
• 4. Notice of intention to defend
• 5. Opposition may proceed in the name of another person
• 6. Opposition proceedings
• Part 51 General Opposition Proceedings
• 1. Evidence
• 2. Extension of the period for filing evidence
• 3. Cooling-Off Period
• 4. Suspensions
• 5. Hearing of the opposition
• 6. Dismissal or discontinuance of proceedings
• 7. Award of costs
• 8. Rights of appeal
• 9. Period in which a trade mark can be registered/protected
• 10. Guidelines for Revocation of Acceptance of Opposed trade marks
• 10.1 Revocation of Acceptance of Opposed matters Flowchart
• 11. Unilateral Communications with Hearing Officers
• Part 52 Hearings, Decisions, Reasons and Appeals
• References used in this Part
• 1. What is a decision?
• 2. What is a hearing?
• 3. Is a hearing always necessary?
• 4. Role and powers of the Registrar in hearings
• 5. Rights of appeal from decisions of the Registrar
• 6. Appeals from decisions of the Federal Court etc.
• 7. Implementation of decisions
• 8. Service of documents on the Registrar
• Part 54 Subpoenas, Summonses and Production of Documents
• 1. Subpoenas
• 2. Summonsing a witness
• 3. Production of documents
• Annex A1 - Consequences of mishandling a subpoena
• Annex A2 - Format of a summons to witness
• Annex A3 - Format of notice requiring production
• Part 55 Costs
• 1. Legislative Basis
• 2. Award of costs
• 3. Applications for an award of costs
• 4. Determination of the amount of costs
• 5. Full costs where certificate of use of a trade mark provided to removal applicant
• 6. Costs recovery
• 7. Security for costs
• Annex A1 - Taxing of costs in "multiple" oppositions relying on same evidence
• Part 60 The Madrid Protocol
• 2. International Applications
• 2.1 General Description
• 2.2 International Application Form
• 2.3 Data Entry
• 2.4 Certifying Process
• 2.5 Fees for International Applications
• 2.6 Renewal
• 3. The Basic Application or Basic Registration (Basic Trade Mark)
• 4. International Registrations that have Designated Australia
• 4.1 General Description
• 4.2 Record of International Registrations
• 4.3 Filing/Data Capture/Allocation of Australian Trade Mark Number
• 4.4 Indexing
• 4.5 Expedite
• 4.6 Classification of Goods and Services
• 4.7 Examination of an IRDA
• 4.8 Reporting on an IRDA
• 4.9 Provisional Refusal
• 4.10 Amendments
• 4.11 Deferment of Acceptance
• 4.12 Extension of Time
• 4.13 Final Decision on Provisional Refusal Based on Examination
• 4.14 Acceptance
• 4.15 Revocation of Acceptance
• 4.16 Extension of Time to File Notice of Opposition to Protection
• 4.17 Opposition to Protection
• 4.18 Protection
• 4.19 Cessation or Limitation of Protection
• 4.20 Cessation of Protection because of Non-Use
• 4.21 Opposition to Cessation of Protection because of Non-Use
• 4.22 Renewal
• 4.23 Claim to Interest in, or Right in Respect of a Trade Mark
• 4.24 Change in Ownership of an International Registration
• 4.25 Transformation
• 4.26 Replacement
• 4.27 Customs
• Part 61 Availability of Documents
• 1. Availability of Documents
• 2. Accessing Documents
• 3. Documents to be made Available for Public Inspection (API)
• 4. Information that the Registrar of Trade Marks will Not Accept in Confidence
• 5. Confidential Information in Correspondence
• 6. Policy in relation to TM Headstart
• Part 62 Revocation of Registration
• 1. What is revocation of registration?
• 2. Prerequisites to revocation of registration
• 3. Factors to be taken into account before deciding whether revocation of registration is reasonable
• 4. Circumstances under which registration may be revoked
• 5. Mandatory revocation
• 6. Right of appeal: revocation of registration
• 7. Extension of time
• 8. Amendment or cessation of protection by Registrar of Protected International Trade Marks (PITMs)
• 9. Registrar must notify Customs if protection of a PITM is revoked
• 10. Right of appeal: cessation of protection

43.3. Application to record assignment etc

The application to record assignment may be made by the assignee or by the assignor (subsections 107(1) and 109(1) ). Similarly, an application to record transmission may be made by the person transmitting the trade mark or the person to whom it has been transmitted. The application must be in an approved form. It must be accompanied by any prescribed document ( reg. 10.1 ), and be filed in accordance with the Regulations ( subsections 107(2) and 109(2) ).

3.1 Form of application

The application to record assignment or transmission must be in an approved form and should include the following details:

the application or registration number of the trade mark which has been assigned

the name and address of the assignee or the person to whom the trade mark has been transmitted

the address for service of the assignee or the person to whom the trade mark has been transmitted, or

if the assignor or the person transmitting the trade mark makes the application to record the assignment, the address and address for service of that person,

a list of the goods or services to be assigned or transmitted along with a list of the goods or services to remain on the original trade mark if a partial assignment or an indication from the applicant that all the goods and/or services are to be assigned or transmitted if a full assignment. a prescribed document establishing title to the trade mark (see 3.2 ).

There is no fee prescribed for applying to record assignment or transmission. The application and supporting documents may be filed through the online services page or post and should conform with the general filing requirements (regs 21.1 , 21.2 and 21.3 and Schedule 7 ). It is no longer necessary for the application form for assignment to be dated and signed, however the documentary evidence in relation to the assignment, such as a Letter of Assignment or other transfer document must be signed. 

3.2 Prescribed Documents

A prescribed document that must accompany every application is a document that establishes title to the trade mark(s) ( reg. 10.1 ).  It may consist of a:

• deed of assignment;
• merger document;
• sale document;
• simple letter of assignment;
• probate document in the case of a deceased owner, or death certificate and copy of last will and testament;
• legislative instrument of transmission;
• declaration.

The prescribed document must include the following information:

• The name and address of the assignee (new owner)
• The name/signature and position of the assignor (current owner).  If more than one owner, signatures for all co-owners are required.  An agreement or consent from co-owners must be provided if they are not part of the assignment.
• The trade mark number(s) to be assigned.
• Clearly state that it is a full or partial assignment.
• If a partial assignment, clearly show what is staying and what is to be assigned.

3.3 Transmission on death of joint owner

When two or more persons have jointly applied for registration of a trade mark in terms of section 28 of the Act, and the trade mark proceeds to registration, they are registered as joint owners of the trade mark as per subsection 69(3). Unless they have agreed otherwise, joint owners hold their interests as "tenants in common". Therefore, subject to any agreement to the contrary, when one joint owner dies the interest of that person in the trade mark passes to his or her estate.

In accordance with subsection 109(1) the beneficiary of the deceased owner's interest must apply to record the transmission. The proof of title that must accompany the application may be probate of the will (if available) or a copy of the death certificate and last will and testament.

Should the beneficiary assign his or her right to the remaining joint owner(s), an application to record the assignment would be required in addition to the evidence of transmission and the assignment.

Note : If the application to record the transmission is made only in the name of the beneficiary and without an indication of the consent of the other joint owner(s), the other owner(s) will be advised and given 14 days notice of the intention to record the transmission.

3.4 Consent of the ACCC to assignment of a certification trade mark

If the trade mark being assigned is a registered certification trade mark, the owner must, before assigning the trade mark, seek the permission of the Australian Competition and Consumer Commission (ACCC). This also applies to a certification trade mark that is the subject of an application for registration that has been sent to the ACCC under subsection 174.

Documentary evidence of this permission ( reg. 10.1 ) is also a prescribed document for the purposes of paragraphs 107(2)(b) and 109(2)(b) . (See section 6 for details of the process for recording assignment of certification trade marks).

• Part 35 Certification Trade Marks - 9. Assignment of registered certification trade marks 10. Assignment of unregistered certification trade marks

Amended Reasons

Assignment Agreements

An IP Assignment Agreement is a document sells or assigns an asset to a third party. There are generally similar to licensing agreements except that Assignor is selling their entire rights to the IP to another party. These documents are necessary to move the ownership of a patent or trade mark to another person. 

In these documents, the ownership is actually moved to a new party.

Often Assignment Agreements are integrated into employment contracts or consulting agreements. Alder IP can work with you develop a suitable assignment agreement for your needs.We are particularly experienced with patent, know-how and trademark assignment agreements. For assignment agreements to be valid in Australia, they must be in writing and recorded with IP Australia (in the case of registered rights such as designs, trade marks or patents).

Most Assignment Agreements include Consideration. Consideration is a legal term that essentially allows both parties to receive something out of the trade. The minimum Consideration can in some cases be as little as one dollar.

Patent Assignment: Everything You Need to Know

A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on January 01, 2024

Updated November 5, 2020:

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

Assignment of Rights - Patent Issued: This is for patents that have already been issued.

Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.

Exclusive Rights

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process . They simply assume exclusive rights to intellectual property.

Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .

Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Not Filing a Proprietary Information Agreement

Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Frequently Asked Questions

Where Do I Record a Patent Assignment?

If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.

I Can't Get a Signature from the Inventor. What Happens Now?

First, it needs to be officially established that:

• Whoever is pursuing the application has the right to do so.
• The inventor cannot be reached.

In order to establish this, the patent office will need a copy of the following:

• the employee agreement
• the assignment
• other evidence of the rights

After that, the patent office will continue as if the signature has been obtained, even though it hasn't.

If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:

• Do I Have to File a Patent Assignment if the Owner's Name Changed?

No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.

What if I Make a Mistake on My Patent Assignment?

You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.

How Much Does a Patent Assignment Cost?

The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.

Should I Hire a Lawyer?

Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Shee t

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

If you need help with patent assignments, you can post your question or concern on UpCounsel's marketplace . UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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1800 820 083

Deed of Assignment: Transferring Ownership Of Your IP

Are you a business owner looking to securely transfer ownership of your valuable intellectual assets? In the world of intellectual property (IP), its vital to know what a deed of assignment is and how its used.

On this page, we’ll discuss the definition of a deed of assignment of IP, explore the key benefits of having one drafted, and talk about its essential legal requirements.

Need a tailored deed of assignment drafted?

Contact Progressive Legal for expert IP legal advice.

What is a deed of assignment of IP?

A deed of assignment, often referred to as a rights agreement or IP transfer agreement, is a contractual agreement used to transfer ownership of specific intellectual property from one party to another. This is a permanent transfer and the assignor won’t have any more rights to its intellectual property.

At Progressive Legal, we emphasise the importance of legal advice in drafting the deed to safeguard your business interests.

What’s the difference between IP assignment and IP licensing?

Understanding the nuanced difference between IP Assignment and IP Licensing is crucial for business owners navigating the intellectual property sphere. While IP Licensing allows temporary usage while maintaining ownership, IP Assignment signifies an irrevocable and permanent transfer of IP.

Who are the key parties to a deed of assignment?

In this legal transaction, the party transferring the intellectual property interest is known as the assignor, while the recipient assumes the role of the assignee. This straightforward process ensures clarity and accountability throughout the assignment.

What is the scope of transferable assets in a deed of assignment of IP?

The deed of assignment is a flexible legal instrument, enabling the transfer of diverse intellectual property assets such as domain name rights , trademark rights , patent rights , inventions, business names, copyrights , and source code.

Click here for more insights into deeds of assignment of trade marks.

What are the benefits of a deed of assignment?

Clear ownership.

Eliminate ambiguity regarding intellectual property ownership through a transparent and unequivocal transfer process.

Permanent Transfer

Unlike temporary licensing, a deed of assignment ensures a lasting and irrevocable transfer, providing long-term security for the assignee.

Risk Mitigation

Clearly defining the scope of transferred assets helps mitigate the risk of disputes over ownership, protecting both the assignor and the assignee.

Enhanced Value

A well-drafted deed enhances the business’s value by solidifying ownership of key intellectual assets, making it more attractive to investors or potential buyers.

Legal Protection

The deed provides a legally binding framework, offering protection to both parties and reducing the likelihood of legal challenges related to intellectual property ownership.

What are the key legal requirements of a deed of assignment?

Proper identification of parties.

Clearly identify the assignor and assignee to avoid any confusion about the entities involved in the transfer.

Detailed Description of Intellectual Property

Provide a comprehensive description of the intellectual property being transferred to eliminate any room for ambiguity.

Consideration Clause

Clearly state the consideration or payment for the transfer of intellectual property to make the agreement legally binding.

Warranty of Ownership

The assignor should warrant that they are the rightful owner of the intellectual property being transferred, providing assurances to the assignee.

Legal Formalities

Ensure that the deed of assignment complies with all legal formalities, including the requirements of relevant intellectual property laws , to uphold its validity.

Non-Compete Clause (if applicable)

Include a non-compete clause if necessary, specifying any limitations on the assignor’s ability to compete in the same industry after the transfer.

Using a deed of assignment of IP when dealing with 3rd parties

Understanding intellectual property (IP) rights in transactions with third parties is crucial for protecting your interests. Often, businesses encounter issues when it turns out that third parties retain ownership of all IP they create, despite having been paid by your business. This can include anything from copyrights and trade marks to trade secrets and logos.

The legal norm dictates that unless a contract explicitly states that all IP created during the engagement is to be assigned to your company, the third party holds the ownership.

This means that without the proper wording under the Copyright Act , your business might only obtain a limited license to use the IP, not full ownership. This can severely limit your ability to enforce any IP rights if infringements occur.

The importance of a deed of assignment of IP

A Deed of Assignment of IP ensures any IP created is legally transferred to your business. It is essential, especially when dealing with outsourced tasks such as branding or graphic design. Imagine engaging a design agency that ceases to exist five years later. Without a proper IP assignment, enforcing your rights against copycats could become a legal nightmare.

Moreover, issues often arise when businesses transition from sole proprietorships to corporate entities or during the acquisition of another business. Unfortunately, even contracts drafted by top-tier firms can sometimes neglect thorough IP provisions. The consequences of such oversight can be costly and complex, leading to potential legal battles or loss of valuable IP.

The importance of reviewing your contracts

Therefore, it’s vital to review your contracts meticulously. Ensure that a Deed of Assignment of IP is part of your standard legal framework when engaging with any third party. This not only secures your IP assets but also aids in maintaining clean and clear records.

Such diligence ensures that if the day comes to sell your business, all your IP assets are well-documented and indisputably yours, clearing the path for a smoother transaction.

How much does a deed of assignment of IP cost?

At Progressive Legal, transparency in legal matters is paramount. Our fixed fee for a tailored Deed of Assignment of IP is $750 + GST .

Why choose Progressive Legal for your deed of assignment?

With our expertise in IP law, we ensure that your deed of assignment is meticulously drafted to meet your specific needs. Our commitment to transparency and a fixed fee structure sets us apart, offering you a seamless experience in navigating the complexities of intellectual property transactions.

Key Takeaways

A deed of assignment facilitates the smooth transfer of intellectual property and fortifies the foundation of your enterprise. As your dedicated legal partners, our IP lawyers at Progressive Legal ensures that this critical process is not only legally sound but also strategically aligned with your business goals.

Take the first step towards securing your intellectual assets. Contact Progressive Legal today for expert guidance on Deed of Assignment and safeguard the valuable foundation of your business.

Contact us by giving us a call on 1800 820 083 or request our advice today.  

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Patent in Australia

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International Country Code:

• Patent fees

Fees associated with filing patent applications in Australia as well as other patent fees are available in the fee calculator .

• Term for filing a patent application in Australia

The term for filing an application for an Australian patent claiming conventional priority is 12 months from the priority date. The restoration of this term is possible in case the failure to meet the deadline was due to error, omission or circumstances beyond the control of the person concerned or situations where in spite of an applicant taking due care, the required action still could not have been carried out. There is no fixed term for the deadline of restoration, but restoration must be sought without delay as soon as the failure to file the application in time has been detected.

• Filing requirements in Australia

The official language of an Australian patent application is English. If an application is filed in a language other than English, it is highly recommended to submit an English translation at the time of filing. However, late filing of an English translation is possible within two months from the notification by the Commissioner.

To obtain the filing date in Australia, an application must contain at least: - a request to grant a patent; - applicant’s details; - information that appears to be a description; - payment of the filing fee.

A certified copy of the Priority Document is only required on request of the Australian Patent Office or a third party.

Currently, Australian legislation does not require filing a Power of Attorney when filing a patent application.

An Assignment Deed from the inventor to the applicant is only required if requested by the Australian Patent Office

• Examination of an Australian patent application

Patent applications in Australia undergo formal and substantive examinations. Examination of a patent application in Australia must be requested within two months from issuance of an invitation to request examination or within five years of the filing date, whichever comes earlier. It is possible to request accelerated examination under PPH .

• Novelty grace period

An Australian patent application may be filed within 12 months after the disclosure made publicly available by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee, if: - the invention was shown, used or published at a recognised exhibition; - the information as to the invention was read before learned society or published by or on behalf of learned society; - the information has been made publicly available because the invention was worked in public; - the working of the invention was for the purposes of a reasonable trial of the invention.

Furthermore, if any information became publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee, it does not disprove the novelty of the invention in Australia.

• Grant, validity term and patent maintenance fees

Official fees for granting should be paid within 3 months from the date when Notice of Allowance was received. Patents in Australia are valid for 20 years from the filing date. Annual fees are due each year starting from the 5th one and should be paid before the expiry of the 4th anniversary of the filing date. Late payment is possible within a six-month grace period by paying a corresponding surcharge for each lapsed month or part thereof.

• Duration of registration procedure

In the case of a smooth patent registration process in Australia, the whole procedure takes approximately 4-5 years.

• Utility Model 

Utility model protection is not available under Australian legislation. However, before August 25, 2021 the applicants were able to obtain an innovation patent protection instead of Utility Model in Australia. Existing innovation patents that were filed on or before 25 August 2021 will continue in force until their expiry (8 years).

• Representation by a patent attorney

For foreign patent applicants, it is recommended to perform patent prosecution in Australia using an agent - a registered Australian and New Zealand patent attorney.

Online Search Database for Australian Patents Search .

Brief summary is based on the information provided by PIPERS on 23.02.2024 Please contact us if the above information is not in conformity with Australian IP Laws

An International Guide to Patent Case Management for Judges

2.7 civil remedies.

Section 122 of the Patents Act 1990 (Cth) provides for the relief available to a patentee where a claim of an asserted patent is found by a court to be infringed. Such relief includes:

• an injunction (subject to such terms, if any, as the court thinks fit);
• either damages or an account of profits (at the election of the patentee); and
• an additional amount in an assessment of damages if the court considers it appropriate to include such an amount (commonly referred to as “additional damages”).

Each form of remedy is discussed in turn below.

2.7.1 Injunctive relief

In addition to pecuniary remedies (outlined in the next section), permanent injunctive relief is also available. 110 In the ordinary course, a successful patentee will be granted a permanent injunction for the life of a patent.

However, injunctive relief is subject to equitable and discretionary considerations and, therefore, may not be an appropriate remedy in all cases. For example, the appropriateness of a permanent injunction has been queried by the Federal Court of Australia in respect of infringement of a patent claiming a new method of a medical treatment using a therapeutic agent that is also widely used for other non-infringing medical treatments. 111

Further, the form of the injunctive relief will depend on the specific circumstances of each case. A court can grant a permanent injunction prohibiting infringement in “general form” (i.e., restraining the infringer from infringing a particular patent or patents) or an injunction in terms limited to the specific infringements established at trial, known as a “conduct-based injunction” (where an infringer is restrained from doing those certain acts). 112

2.7.2 Separation of quantum and liability

It is common in patent infringement proceedings for liability to be heard and determined before considering the quantum of pecuniary relief. This is because parties often agree, and the court considers it appropriate, for questions of liability (i.e., infringement and validity issues) to be heard and determined as a separate and preliminary question prior to any hearing on quantum of pecuniary relief. 113

Due to this bifurcation of liability and quantum, and as a matter of commercial practicalities and convenience, issues relating to pecuniary relief are often resolved inter partes after the liability judgment has been given and any appeals have been determined, and before the hearing on pecuniary relief.

A patentee must elect pecuniary relief in the way of either damages or an account of profits: a patentee cannot choose both damages and an account of profits. Discovery can also be sought and obtained following a finding of patent infringement to assist the patentee in making the election. An infringer can also be ordered to provide an affidavit or audited accounts with respect to its infringing sales or profits.

2.7.2.1 Damages

Damages is a common law remedy, and damages for patent infringement are awarded according to the ordinary principles relevant to tort law. The rationale for an award of damages in patent infringement is to restore the patentee as much as reasonably possible to the position as if the infringement had not occurred. Damages should be assessed liberally and to the best possible approximation. However, a patentee must first demonstrate the requisite threshold elements of causation and reasonable foreseeability in accordance with common law.

The Federal Court of Australia has recognized that there are a number of different ways to calculate damages for patent infringement, including on a “lost sales” basis, using a “reasonable license fee,” or a “user principle” basis, depending on the facts of the particular case. Further, provided foreseeability and causation are demonstrated, damages for patent infringement can also be claimed for the loss of goods that commonly would have been sold with the patented goods, springboarding or on other grounds.

Damages may also attract interest under Section 51A of the Federal Court of Australia Act 1976 (Cth).

2.7.2.1.1 Lost sales

The “lost sales” methodology is often used where the patentee has exploited the patent by manufacturing, production or direct sales, and the infringer is a competitor in the relevant market. However, the onus is on the patentee to show that the relevant sales are actually “lost.” This can be problematic for certain patentees: often, the sale of an infringing item does not (without more) equate to one unit of a lost sale for the patentee. Relatedly, the patentee may also need to prove that the patentee could have satisfied the additional demand and would have made a profit on that sale.

2.7.2.1.2 Reasonable license fee

Conversely, a “reasonable license fee” approach is generally employed by a patentee who exploits a patent through licensing to others. In implementing this methodology, the appropriate measure of damages is considered to be the determination of a license fee, either as would have been agreed to by the patentee or on a notional basis. Again, the onus is on the patentee to demonstrate the amount of a reasonable license fee.

2.7.2.1.3 “User principle” basis

The “user principle” basis of damages is where a successful patentee can recover a reasonable sum of damages from an infringer who has wrongfully “used” the patentee’s property, even, for example, where the evidence is that the patentee would not have granted a license at all, or if it cannot be shown that the patentee has suffered an actual loss. Using the “user principle” methodology, the quantum of damages is often determined by assessing the amount the infringer would have had to pay for the “use” of the patent, for example, by way of a notional license fee.

2.7.2.2 Account of profits

An account of profits requires an infringer to account for and disgorge the profits it made through the infringing conduct. As an account of profits is an equitable remedy, equitable considerations apply, including knowledge of wrongful conduct on the part of the infringer and equitable defenses such as estoppel, laches, acquiescence and delay.

An account of profits is generally calculated by taking the revenue made by the infringer and subtracting any reasonable costs expended that are attributable to the infringing sales, such as costs in respect of manufacturing, marketing and distribution.

Further, if the patent in issue is for a product that is a single component within a larger product (e.g., a SIM card inside a smartphone), a court may require an apportionment of the profits to take into account there being a large proportion of non-infringing parts within the relevant article. This analysis will also depend on whether the infringing part is considered an “essential part” of the article.

2.7.2.3 Additional damages

Where a patentee has elected to seek damages for patent infringement, the court also has the discretion to include an “additional amount in the assessment of damages” if it considers it appropriate to do so. 114 Importantly, there is no requirement for any proportionality or relationship between the amount of actual damages awarded and the quantum of any “additional damages.” Relatedly, there is no limit to the quantum of additional damages prescribed by the Patents Act or accompanying regulations. Discovery can also be ordered if considered by the court to be relevant to the additional damages claim.

Section 122(1A) of the Act relevantly sets out the factors that a court can “have regard to” if the court “considers it appropriate to do so.” Importantly, these factors are nonlimiting and include:

(a) the flagrancy of the infringement; and (b) the need to deter similar infringements of patents; and (c) the conduct of the party that infringed the patent that occurred: (i) after the act constituting the infringement; or (ii) after that party was informed that it had allegedly infringed the patent; and (d) any benefit shown to have accrued to that party because of the infringement; and (e) all other relevant matters.

The last criterion – namely, “all other relevant matters” – has been construed to allow parties to seek to rely on a variety of conduct in seeking an award for additional damages. 115

Additionally, more than mere “copying” is required to enliven the application of Section 122(1A), as the purpose of the additional damages regime is to award such damages in cases of wilful infringement of a patent. For example, it is considered not to be a “flagrant” or illegitimate act for a potential competitor to attempt to “work around” a particular patent.

Further, the Federal Court of Australia has found that the fact that an infringer possessed a reasonably arguable belief that the relevant patent was invalid or not infringed is an important factor tending against an award of additional damages. This is so, even if those non-infringement or invalidity defenses are ultimately unsuccessful at trial. 116

2.7.3 Other remedies

There are number of other remedies available to patent litigants in Australia, including Mareva injunctions, Anton Piller orders and orders for ancillary final relief (such as the destruction or delivery up of infringing articles).

In broad terms, an Australian court may order a Mareva injunction (also known as a “freezing” or “asset protection” order) if it is satisfied that:

• judgment has been given in favor of the applicant, or the applicant has a “good arguable case on an accrued or prospective cause of action”; and
• there is a danger that the judgment or prospective judgment will be wholly or partially unsatisfied because the judgment debtor or prospective judgment debtor has either absconded or removed, disposed of or diminished the value of their assets. 117

Freezing orders are exceptional in nature, and the applicant for such an order will need to provide the usual undertaking as to damages, being to submit to any order as the court may consider just for the payment of compensation to any person (whether or not that person is a party) affected by the operation of the order. Further guidance on freezing orders, including a sample form of a freezing order, appears in the Federal Court of Australia’s Freezing Orders Practice Note (GPN-FRZG) . 118

In Australia, an Anton Piller order (also called a “search” order) may be made if the court is satisfied that (i) the applicant has a “strong prima facie ” case and will suffer “serious” loss or damage if the search order is not made, and (ii) there is “sufficient evidence” that the respondent possesses important evidentiary material and that there is a real possibility that such material might be destroyed or otherwise unavailable for use in evidence in the proceeding or anticipated proceeding. 119 Applications for search orders are generally made on an ex parte basis, require the usual undertaking as to damages and involve the court appointing an independent solicitor to supervise the execution of the search order. Further guidance on search orders, including a sample form of a search order, appears in the Federal Court’s Search Orders Practice Note (GPN-SRCH) . 120

In addition to injunctive relief, it is common for patentees following a successful patent infringement action to request orders for the delivery up or destruction of infringing articles. Whether such ancillary relief should be awarded is ultimately a discretionary question for the court. Among other things, it needs to be shown that the infringing articles that are the subject of the delivery up or destruction order do, in fact, fall within the scope of the claims and that the orders are required (over and above any order for injunctive relief) as additional protection against the risk of future infringement. 121

It is also not uncommon for successful patentees in Australia to seek declarations of infringement and, if the validity of a patent claim has been questioned and its validity upheld, an order for a certificate of validity under Section 19 of the Patents Act 1990 (Cth). The effect of a certificate under Section 19 is that, if a subsequent revocation proceeding is issued in respect of the claim that is the subject of the certificate, and the patentee is successful in that subsequent proceeding, then the patentee may be entitled to costs on a solicitor and client basis in that subsequent proceeding. 122

2.7.4 Costs

2.7.4.1 general approach to costs.

In all courts in Australia, including the Federal Court of Australia, costs are at the discretion of the court. That is, the court may make an order that one party pay the other party’s legal costs for the proceedings. Legal costs will include the costs of legal representation, including any disbursements such as barristers’ fees and expert costs.

Where a costs order is made, the usual rule is that “costs follow the event,” meaning that the unsuccessful party will pay the legal costs of the successful party. The total costs ordered against the unsuccessful party are typically payable on a “party and party” basis. 123 Party/party costs are costs that have been fairly and reasonably incurred by the party in the conduct of the litigation. But, as the order is at the court’s discretion, on application by a party, the court may order that costs be paid on a different basis, including on an indemnity basis. 124 Indemnity costs allow for the recovery of all of a party’s costs except those that have been unreasonably incurred. Under any costs order, a party does not have to pay any costs that have been improperly, unreasonably or negligently incurred. 125

In most cases, it is not possible for a successful party, even on an indemnity basis, to recover all of their costs. For example, a party awarded costs on a party and party basis may only be entitled to recover approximately 60 percent of these costs once their costs are assessed on a fair and reasonable basis. One reason for this gap between actual costs and what is assessed to be fair and reasonable (on a party and party basis) is that the actual cost of counsel and experts and other legal costs is higher than is allowed for under the court scale.

If a party is only partially successful – or for other reasons – a judge may make no order as to costs, order the unsuccessful party to pay less than 100 percent of the successful party’s costs on a party and party basis, or make an order that the successful party pay the unsuccessful party’s costs in full or in part. This may occur where one party has not complied with the overarching purpose set out in Sections 37M and 37N of the Federal Court Act 1976 (Cth) – facilitating the just resolution of disputes according to law and as quickly, inexpensively and efficiently as possible – or has otherwise acted in a way that has wasted costs. It has also become commonplace in patent cases for courts to adopt an issues-based approach to the award of costs – for example, by only requiring an unsuccessful patentee in a revocation action to pay a portion of the successful revoker’s costs on the basis that the revoker was successful on some but not other grounds.

Particular reference should be made to Part 40 of the Federal Court Rules 2011 (Cth) concerning costs and the Costs Practice Note (GPN-COSTS) 126 in respect of costs in the Federal Court. If the matter is listed in a state court, the equivalent practice notes, rules and legislation applicable in that jurisdiction should be consulted.

The above applies both to first-instance hearings and on appeal. In either case, costs are ordinarily sought by the applicant in the originating application commencing proceedings. Parties are usually heard on the question of costs by the court by way of either or both oral and written submissions at the end of the trial, once reasons for judgment are delivered or when orders are made in relation to the substantive issues in the proceedings.

2.7.4.2 Interlocutory proceedings and other issues

Parties may apply for costs orders in interlocutory applications. Where a party has been wholly successful in an interlocutory application, they may obtain an order that the other party pay their costs of the application, to be determined similarly to the above.

Where there have been wasted costs, the affected party may seek an order for “costs thrown away.” An order of this kind means that, whatever the outcome of the proceedings, a party will be entitled to recovery of those costs. For example, where an applicant has amended its pleadings, resulting in the removal of a cause of action that the respondent has already spent time and money responding to, the respondent may apply for an order for costs thrown away.

If an applicant or cross-claimant discontinues proceedings, 127 an adverse costs order, usually on an indemnity basis, is ordinarily made. 128

2.7.4.3 Security for costs

Where a respondent has reason to believe that an applicant may not be able to cover an adverse cost order if its claim is unsuccessful, it may apply for security for costs orders. 129 Upon an interlocutory application seeking security for costs being filed in an existing proceeding, a court will consider the applicant’s ability to meet an adverse costs order. This includes whether there is reason to believe that the applicant will be unable to pay the respondent’s costs if ordered to do so, whether the applicant ordinarily resides outside Australia, is suing for someone else’s benefit, is impecunious or any other relevant matter. These matters should be dealt with by affidavit evidence.

A party may seek further orders that proceedings be stayed until any security ordered has been paid into court. Once paid, the security is held by the court until the conclusion of the proceedings. If security is not paid as ordered, a respondent may apply for the proceedings to be dismissed. 130

2.7.4.4 Offers of compromise and Calderbank offers

The costs a party is liable to pay may also be affected by the existence of a valid offer of compromise made under the Federal Court Rules 131 or of a Calderbank offer. 132 In both cases, form requirements must be met for the offers to be accepted by the court as within these categories. If accepted, and depending on the offer made and the outcome of the case, one or the other party may be entitled to have their costs paid on an indemnity basis from the date of the offer or as otherwise provided for by the Federal Court Rules.

Such offers are frequently made throughout proceedings to protect a party’s costs position with the aim of efficiently settling proceedings to avoid incurring unnecessary costs. The court should not be informed of any settlement offers before the substantive issues in the proceedings have been determined.

2.7.4.5 Assessment of costs

Where a court makes an order for payment of a party’s costs, and failing agreement by the parties as to the quantum to be paid, the costs must be taxed in accordance with the Federal Court Rules (e.g., on a party and party basis or an indemnity basis). As part of this process, a costs assessor will be engaged to assess the costs payable to the party in whose benefit the order was made. 133 This is known as the taxation process. A costs assessor is an independent specialist knowledgeable about the costs rules and industry costs.

Once the costs assessor has assessed the costs, a report is provided to the court, and, if there is no dispute, orders will be made that the liable party pay the assessed amount. If the parties are unable to agree on the assessment of costs, there may be a hearing to determine the costs payable. However, courts seek to avoid hearings on costs, which are lengthy and expensive. Party cooperation in respect of costs is therefore expected in order to avoid a contested costs hearing.

Compromises such as an agreed lump sum payment for costs are another way to streamline the costs process, orders for which the court may make upon application by the parties. 134

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What is an Intellectual Property Assignment Agreement?

By June Ahern Legal Project Manager

Updated on August 4, 2020 Reading time: 5 minutes

This article meets our strict editorial principles. Our lawyers, experienced writers and legally trained editorial team put every effort into ensuring the information published on our website is accurate. We encourage you to seek independent legal advice. Learn more .

Key Clauses in an Intellectual Property Assignment Agreement

Key takeaways.

As an individual or business owner, there may be times when you want to assign your intellectual property (IP) rights to another individual or business. Alternatively, you may want another entity to assign their IP rights to you. IP is a term which is applied broadly to something which is created, invented or designed. IP is sometimes referred to as ‘property of the mind’. Assigning your IP rights to another party is most often seen in the context of an employment contract, whereby any IP produced in the course of employment is automatically assigned to the employer. You may need another individual or entity to assign their IP rights to you if you engage a service provider to carry out work for you, such as:

• designing your logo; or 
• writing the code for your app. 

This article explains: 

• what an IP assignment agreement is; and 
• why an IP assignment is important in defining and protecting your rights.

An IP assignment agreement is a contractual agreement which facilitates the transfer of IP from one party to another. The party transferring the IP interest is the assignor . The party receiving the IP interest is the assignee . There are several important clauses which you should include in an IP assignment agreement.

The Assignment Clause

Assignment of IP rights may t ake place in return for a sum of money. However, this is not always so, as in the case of employees automatically assigning their IP rights to their employer. The clause should make it clear that all current or future rights, titles or interest in the IP are conveyed to the assignee.

Timing of the Assignment

It is important to state that all rights, titles or interest in the IP are conveyed to the assignee immediately upon creation of the IP. The assignor must agree to do ‘all things necessary’, including signing required documents, to facilitate a successful transfer of IP.

Assignment of Moral Rights

The assignor must also consent to the assignment of their moral rights in the IP. Moral rights are the rights of a creator to control, protect and enforce the artistic integrity that subsists in the IP. This includes the right:

• of the assignor to attribute their name to the work;
• against false attribution from other parties; and
• against derogatory treatment.

Third-Party Confidentiality

To the extent that any rights held by the assignor under third-party confidentiality agreements cannot be assigned, the assignor must agree to hold such rights on trust for the benefit of the assignee.

The assignor must represent and warrant that it:

• is the sole and absolute owner of the IP;
• has the authority and capacity to assign the IP in full;
• has not licenced or encumbered any right, title or interest in the IP to any third party;
• does not infringe any third-party’s IP rights or moral rights; and
• has no other obligations to any third-party which are inconsistent with the rights and obligations as set out in the intellectual property assignment agreement.

A warranty clause is important, as it protects the assignee from liability in the event that the assignor attempts to transfer IP which belongs to another party, whether intentionally or not.

A comprehensive intellectual property assignment agreement is important to d efine and protect your position in either assigning or receiving IP. A well-drafted intellectual property assignment agreement will protect you against any claims of IP infringement from third-parties and ensure that you have full ownership rights of the IP. If you have any questions on intellectual property assignment agreements, please contact LegalVision’s intellectual property lawyers on 1300 544 755 or fill out the form on this page.

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In response to public feedback regarding the retirement of the legacy search systems, a new simplified interface of Patent Public Search named Basic Search is now available. Basic Search is recommended for users new to Patent Public Search, or for users who only need to perform a quick look up.

PatFT, AppFT, PubEAST and PubWEST were retired on September 30. Preexisting links to U.S. patents and pre-grant publications are no longer available. You will need to create new links for saved documents. Read through this  step-by-step guide  on how to set up a web link to access a saved document, as well as set up saved search queries. For questions regarding Patent Public Search, please contact the Public Search Facility at  [email protected] .

Search for patents

New to Patent Searching? See this important information about searching for patents:

How to Conduct a Preliminary U.S. Patent Search: A Step by Step Strategy  - Web Based Tutorial (38 minutes)

• The Seven Step Strategy  - Outlines a suggested procedure for patent searching
• A detailed handout of the Seven Step Strategy with examples and screen shots.

Patents may be searched using the following resources:

Patent Public Search

The Patent Public Search tool is a new web-based patent search application that will replace internal legacy search tools PubEast and PubWest and external legacy search tools PatFT and AppFT. Patent Public Search has two user selectable modern interfaces that provide enhanced access to prior art. The new, powerful, and flexible capabilities of the application will improve the overall patent searching process.

Global Dossier

Global Dossier is a set of business services aimed at modernizing the global patent system and delivering benefits to all stakeholders through a single portal/user interface .  Through this secure service, users have access to the file histories of related applications from participating IP Offices, which currently include the IP5 Offices.

By using this service, users can see the patent family for a specific application, containing all related applications filed at participating IP Offices, along with the dossier, classification, and citation data for these applications. This service also provides Office Action Indicators to help users identify applications that contain office actions, a Collections View for saving documents and applications for review later on in the session, and the ability to download the documents in an application.

Public Search Facility

The United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA provides the public access to patent and trademark information in a variety of formats including on-line, microfilm, and print. Trained staff are available to assist public users.

Patent and Trademark Resource Centers (PTRCs)

Your nearest Patent and Trademark Resource Center (PTRC) maintains local search resources and may offer training in patent search techniques.

• Find your nearest PTRC
• 7 Steps to Searching at a PTRC

Patent Official Gazette

The Electronic Official Gazette allows users to browse through the issued patents for the current week. The Official Gazette can be browsed by classification or type of patent, for example, utility, design, and plant.

Common Citation Document (CCD)

The Common Citation Document (CCD) application aims to provide single point access to up-to-date citation data relating to the patent applications of the IP5 Offices. It consolidates the prior art cited by all participating offices for the family members of a patent application, thus enabling the search results for the same invention produced by several offices to be visualized on a single page. The creation of the CCD application is part of an ongoing process of technical harmonization at international level aimed at establishing an appropriate infrastructure to facilitate greater integration of the global patent system.

Search International Patent Offices

To see if your idea has been patented abroad, you'll want to refer to searchable databases made available from other International Intellectual Property offices. Free online access to patent collections is provided by many countries. Some available databases include:

• European Patent Office (EPO) provides esp@cenet a network of Europe's patent databases- This site also provides access to machine translation of European patents for some languages. 
• Japan Patent Office (JPO) - This site also provides access to machine translations of Japanese patents.
• World Intellectual Property Organization (WIPO) provides PATENTSCOPE ® Search Service, which features a full-text search of published international patent applications and machine translations for some documents as well as a list of international patent databases.
• Korean Intellectual Property Rights Information Service (KIPRIS)
• China National Intellectual Property Administration (CNIPA) - This site also provides access to machine translation of Chinese patents.
• Other International Intellectual Property Offices that provide searchable patent databases include: Australia , Canada , Denmark , Finland , France , Germany , Great Britain , India , Israel , Netherlands , Norway , Sweden , Switzerland and Taiwan .

Stopfakes.Gov provides informative Toolkits that give an overview of the Intellectual Property Rights (IPR) environment in various countries around the world.

For additional search resources, contact your local Patent and Trademark Resource Center , visit the USPTO Public Search Facility or the USPTO Main STIC Library . The staff in the Main STIC Library are experts on foreign patents and able to help the public as needed.

Search Published Sequences

The Publication Site for Issued and Published Sequences (PSIPS) website provides Sequence Listings, tables, and other mega items for granted US patents or published US patent applications.

All sequences (SEQ ID NOs.) and tables for listed patents or publications are available for viewing, without downloading, by accessing the proper document detail page and then submitting a SEQ ID NO or a mega table ID number.

Patent Assignment Search

Visit the Patent Assignment Search website to search for patent assignments and changes in ownership.

Patent Examination Data System (PEDS)

The Patent Examination Data System (PEDS) in the Amazon Cloud provides public users the ability to search, view and download bibliographic data for all publicly available Patent applications in a secure manner. The solution allows public users to search and download bibliographic data in bulk as well as manage the volume of data that can be downloaded at any given period of time by a particular user.

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