Under Australian law, patent infringement proceedings may be started in the Australian Federal Court only by a patentee or an exclusive licensee.[1] When it comes to determining the identity of the patentee or exclusive licensee, the Court will look to the particulars as recorded in the Register of Patents (‘the Register’).[2]
Therefore, if you are an exclusive licensee, but have not taken the step of recording your exclusive license on the Register through the Australian Patent Office, the Register will not reflect that you hold those exclusive licence rights. In such a case, you may be stuck in a “No Standing” zone: without leave of the Court,[3] your licence will be inadmissible, and you will have no standing to sue.
Although it is not mandatory to record an exclusive licence on the Register, doing so before commencing litigation to enforce a patent is strongly advisable. The process of recording an exclusive licence is straightforward, requiring an electronic copy of the licence agreement to be submitted to the Australian Patent Office accompanied by a request for its recordal in the Register against one or more patents.
Recording your exclusive licence early, and before litigation is on the horizon, can allow you to move immediately against an infringer without being delayed or distracted by first having to update the Register.
[1] Patents Act 1990 (Cth) s 120(1).
[2] Ibid s 195(1).
[3] Ibid s 196(1).
Naomi Pearce
CEO, Executive Lawyer (AU, NZ), Patent & Trade Mark Attorney (AU, NZ)
Naomi is the founder of Pearce IP, and is one of Australia’s leading IP practitioners. Naomi is a market leading, strategic, commercially astute, patent lawyer, patent attorney and trade mark attorney, with over 25 years’ experience, and a background in molecular biology/biochemistry. Ranked in virtually every notable legal directory, highly regarded by peers and clients, with a background in molecular biology, Naomi is renown for her successful and elegant IP/legal strategies.
Among other awards, Naomi is ranked in Chambers, IAM Patent 1000, IAM Strategy 300, is a MIP “Patent Star”, and is recognised as a WIPR Leader for patents and trade marks. Naomi is the 2023 Lawyers Weekly “IP Partner of the Year”, the 2022 Lexology client choice award recipient for Life Sciences, the 2022 Asia Pacific Women in Business Law “Patent Lawyer of the Year” and the 2021 Lawyers Weekly Women in Law SME “Partner of the Year”. Naomi is the founder of Pearce IP, which commenced in 2017 and won 2021 “IP Team of the Year” at the Australian Law Awards.