Patents Act, 1978 (Act No. 57 of 1978)

Chapter VI : Grant, duration and effect of patents

49. Joint ownership in patents
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(1)Where a patent is granted to two or more persons jointly, each of the joint patentees shall, in the absence of an agreement to the contrary, be entitled to an equal undivided share in the patent.

 

(2)Subject to the provisions of subsection (4), a joint patentee shall, in the absence of an agreement to the contrary and in the absence of consent of the joint patentee or patentees, not be entitled—
(a)to make, use, exercise, offer to dispose of, dispose of or import the patented invention;

[Paragraph (a) substituted by section 9 of Act No. 58 of 2002.]

(b)to grant a licence or to assign the whole or any part of his interest in the patent; or
(c)to take any steps or institute any proceedings relating to the patent:

Provided that he may pay any renewal fee that is payable without recourse to any other patentee, unless the commissioner directs otherwise in proceedings in terms of subsection (6).

 

(3)Where a patented article is disposed of by a joint patentee, the acquirer or any person claiming through him shall be entitled to deal with it in the same manner as if the article had been disposed of by the patentees jointly.

 

(4)Any joint patentee may institute proceedings for infringement and shall give notice thereof to every other joint patentee, and any such other patentee may intervene as co-plaintiff and recover any damages in respect of any damage he may have suffered as a result of the infringement.

 

(5)If in any proceedings under subsection (4) damages are awarded to a plaintiff, he shall be awarded damages as if he were the sole patentee, and the defendant shall not be obliged to compensate any other joint patentee in respect of the infringement in question.

 

(6)Where any dispute arises between joint patentees as to their respective rights in or to a patent, the institution of proceedings relating to the patent or the manner in which they should deal with the patent or the patented invention, any joint patentee may apply to the commissioner to decide the matter in dispute.

[Sub-section (6) substituted by section 42 of Act No. 38 of 1997.]

 

(7) If in considering any application under subsection (6) the commissioner is satisfied that a joint patentee, not being obliged thereto, is unable or unwilling to remain a patentee, the commissioner may order him to assign his rights to any other joint patentee able and willing so to remain: Provided that where it appears to the commissioner to be just and equitable, he may order the payment of compensation to such joint patentee who is so ordered to assign his rights.

 

(8)In considering any application under subsection (6) the commissioner shall, unless it appears to him that there are good reasons to the contrary, resolve the dispute in a manner which will lead to the preservation and exploitation of the patent.