Who is Mr Not Given?
There have been approximately 1500 provisional patent applications filed in Australia since 1 July 2020. Who are the inventors of these inventions? We don’t know. About 22% of these provisional patent applications list the inventor as “Not Given”.
When it comes to filing a provisional patent application in Australia, one of the pieces of information that can be provided is the inventor name(s). It might be news to you, though, that the name of the inventor need not be given. There is no legal requirement in Australia that the inventor name(s) be disclosed in a provisional patent application.
Here are the top 3 reasons why it might be better to not give too much away.
There is less information on publicly-available databases about your invention. If a third party is seeking to uncover commercial intelligence about you by watching you or your business, they may not be able to tell if a provisional patent application is yours if there are no inventor details. Furthermore, some tweaks and changes could make it easier to conceal from those publicly-available databases many traces of a refiling of the same provisional patent application.
As often happens, the invention develops over 12 months from filing the provisional patent application, and the inventorship might then change. Why leave an indicator of this change on a patent register? If inventorship changes, there may be an argument available for a competitor to make that the ability to validly claim priority for all subject matter in the application has changed. While priority claiming is a matter of fact, there is no need to draw any attention to it as an issue – let third parties do their own work to find issues of potential patent invalidity if they are interested enough (indeed, if there are any).
If the invention evolves and an inventor therefore should not be named in the complete patent application, it might be better that they were never listed on the provisional patent application at all. People, inventors or not, do not like feeling that they have lost something, even if, in fact, they never had anything to lose in the first place. Having inventor names listed on the provisional patent application could confuse informal inventorship determinations, and risks leaving murky, residual inventors on a public patent register.
The practice of using the Not Given filing strategy seems to vary across firms. One large, high-filing and well-known Australian patent attorney firm files over 85% of its provisional patent applications with this vague inventor name. It seems that the strategy is embedded in some attorney practices.
Even if the inventor(s) are not named in the provisional patent application, this does not mean that determining who is, and who is not, an inventor, should be delayed until filing the complete patent application. It is always very important to establish inventorship, and ownership of a provisional patent application, from the outset to avoid any nasty surprises down the track. However, our experience has shown that the flexibility of filing the provisional patent application under the guise of Mr (or Ms) Not Given has been advantageous in many circumstances. Notwithstanding, we should all keep an eye on foreign patent application practices to check that this entrenched strategy does not cause issues of priority claiming in any other countries down the track.
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Photo: Blake Lisk on Unsplash.