Dabscheck v Hecla Electrics Pty Ltd

This case involved a petition by Woolf Dabscheck (the petitioner) seeking the revocation of letters patent granted to Hecla Electrics Pty. Ltd. (the respondent) for an invention relating to improvements in electrical plugs and connecting means designed to prevent electrical shocks. The petitioner alleged that the patent was obtained in fraud of his rights, that he was the true inventor, and that the invention was not novel and had been publicly disclosed prior to the patent application.

The court was required to determine whether the petitioner was the first and actual inventor of the subject matter of the patent, whether the patent had been obtained by fraud, and whether the invention lacked novelty due to prior public disclosure by the petitioner. Additionally, the court had to consider the effect of section 61 of the Patents Act 1903-1935, which addresses the validity of a patent when some claims are invalid but others may be valid.

Starke J. found that the petitioner had publicly used and displayed the device before the respondent's patent application and was indeed the first and actual inventor. While the petitioner's allegation of fraud against the respondent's governing director failed, the court was satisfied that the governing director had seen the petitioner's device and forgotten about it, leading to the respondent's company not being the true inventor. The court determined that claims 1, 3, 4, 5, and 2 (along with claims 9, 14, and 15 which fell with claim 2) were invalid as they included the petitioner's unpatented invention or were not novel. Applying section 61 of the Patents Act, the court held that the invalidity of certain claims did not necessarily invalidate the entire patent.

Consequently, the letters patent were revoked in respect of claims 1 to 9, 13 to 17, and 19. Despite the failure of the fraud allegation, the petitioner was awarded costs due to the exceptional circumstances of the case.