24 July 2012

IP Australia Changes Tack on Changing Names

Someone always playing corporation games.
Who cares? They’re always changing corporation names!
– Jefferson Starship, ‘We Built this City’

Wedding
'’If anyone knows of any lawful reason why this man should not marry this patentee, speak now or forever hold your peace…’
‘Hang on – don’t we get three months to oppose this change of name?!’
In a bizarre change to long-standing practice, we understand that IP Australia has determined that it is required to advertise, for opposition purposes, all requests to record a change of name of a patent owner.  Although this change has yet to be announced, we hear that it has been in effect since at least 18 July 2012.

From now on, therefore, if a corporate or individual patentee simply changes name – whether by choice, marriage, or for any other reason – and does the right thing by requesting the change be recorded on the Register of Patents, the request will be open to opposition for a three-month period.

So a simple administrative change, which currently takes no more than a few business days to process, will now be delayed by around four months (assuming no opposition is filed).  Brilliant.

WHY THE CHANGE?

An amendment to the Register for the purpose of recording a change of name is governed by Regulation 10.7 of the Patents Regulations 1991.  In particular, subregulation 10.7(1) provides that:

The Commissioner may, on a request being made in the approved form, amend:
(a) an entry in the Register for the purposes of:

(ii) if a name or an address entered in the Register has been changed – changing the name or address …

Under subregulation 10.7(3):

If a proposed amendment would materially alter the meaning or scope of an entry in the Register or a patent, the Commissioner must publish in the Official Journal a notice of the request to amend the entry or the patent.

Subregulation 10.7(4) further provides that ‘if a notice is published, a person may oppose the making of the amendment.’

Apparently – only 21 years after these regulations first came into force – IP Australia has decided that recording a change in the name of a patentee ‘materially alters the meaning or scope of an entry in the Register’.

The new practice does not apply to pending applications, for which a change can be recorded under the provisions of section 104 of the Patents Act 1990, and does not affect the Register (since an application, by definition, is not yet registered).

MATERIAL ALTERATION?  SURELY NOT!

We should point out that IP Australia does not require any formal documentation in order to record a change of name.  It is enough that the existing registered proprietor of a patent (or their nominated representative) requests the change.

With all due respect, it seems to us that there is nothing relevantly ‘material’ about a mere change of name.  If a company or individual decides to change name – for which there could be any number of perfectly legitimate reasons – all that changes is a label.  A person with a new name is just the same person.  A company with a new name is still the same company – for example, an Australian registered company will retain the same Australian Company Number (ACN), and will continue to exist otherwise unchanged.

It is the very essence of a change of name that it is not ‘material’.  The patent has not changed hands.  No rights have been transferred, broadened or narrowed.  Absolutely nothing is any different, other than the linguistic signifier used as a convenient means to identify the particular legal person which owns the patent.

It is surely this very lack of materiality which underpins the practice of not requiring formal documentation to record a change of name.  If a patentee contacts the Office and states ‘I no longer wish to be known as Joe Bloggs, I am now Fred Nerk’, then who is to argue with this?

By contrast, the recording of an assignment – which involves a material change in ownership of the patent and associated rights, and requires formal documentation to be provided (signed by both the assignor and the assignee, according to section 14) – is not considered an ‘amendment’, is not advertised, and is not open to opposition.

COMMENT

To require that requests to record changes of name be advertised, and be subject to opposition, is plainly ridiculous.  If it were IP Australia’s official role to make this country the laughing stock of the international patent community, it could not do much better than this!

Of course, now that IP Australia has convinced itself that a change of name is a ‘material alteration’, it will consider itself bound to the new practice by the requirements of Regulation 10.7 (despite not having noticed this issue for more than two decades).

Fortunately, the Regulations are in the process of being revised, to implement the changes associated with the Intellectual Property Amendment (Raising the Bar) Act 2012.  So with any luck we will not be forced to live with this idiocy for any more than a few months.

In the meantime, the simple act of recording a change of name – which of course serves the public interest in identifying the registered owner of a patent, and should be processed as expeditiously as possible – will be subject to pointless delays while requests are advertised for opposition.

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