Allens Arthur Robinson - Challenge to entitlement to patents

Challenge to entitlement of patents - Sarah Matheson, Partner and Anna Howard, Articled Clerk reports on the Full Federal Court decision of University of British Columbia and Anor v Conor Medsystems [2006] FCAFC 154:

  • “The Full Court held that the facts to be assumed were insufficient, so it was inappropriate to determine the preliminary question, either as originally formulated before Justice Finkelstein or as reformulated for the appeal. The matter will be determined at trial”
  • “Should the majority reasoning prevail, it will be important for joint patent applicants to ensure that:
    • if deriving title from more than one inventor, each named inventorhas made a contribution to the invention as claimed; and
    • when deleting, adding or amending claims prior to grant, each of the named inventors continues to be a person who has made a contribution to the invention as claimed; or
    • if not the inventor, they are each otherwise a person who would be on the grant of the patent be entitled to have the patent assigned to them.”

Link to Allens Arthur Robinson article


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