Encoret Limited v Medical Creative Technologies, Inc

[2001] APO 55

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 696289 in the name of Encoret Limited

Title:          Apparatus for use in surgery and a valve

Action: Request for a determination under section 32 of the Patents Act 1990 by Medical Creative Technologies, Inc.

Decision:          Issued            .

Abstract

Determination under section 32 that patent application 696289 is to proceed in the names of Encoret Limited and Medical Creative Technologies, Inc.

Direction that application proceed to sealing.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 696289 by Encoret Limited; and a request for a determination under section 32 of the Patents Act 1990 by Medical Creative Technologies, Inc.

DECISION

I heard a dispute between Encoret Limited ("Encoret") and Dexterity Inc ("Dexterity") on 24 October 2000 regarding ownership of Patent Application 696289.  The relevant facts are set out in my decision at Encoret Limited v Dexterity, Inc [2001] APO 12 (14 March 2001). In my decision, I found that Patrick Leahy is jointly entitled to the invention along with Frank Bonadio, who has assigned his rights to Encoret.

In my decision I expressed doubts over whether or not Dexterity was an "interested party" as required by section 32, as there appeared to be no record of any assignment of rights from Leahy to Dexterity. Therefore I invited the parties to file further submissions on how the matter should be disposed of.

As a result of that invitation, the attorneys for Dexterity filed a new request under section 32 that requests "that Application No. 696289 (75074/94) proceed in the names Medical Creative Technologies, Inc. and Encoret Limited as nominated persons." In the accompanying submissions, the section 32 requestor states that from a review of the facts surrounding this matter, it appears that the "interested party" within the meaning of section 32 should in fact be Medical Creative Technologies, Inc ("MCT").

The applicant was given two months to object to this further request under section 32 but did not do so. I am satisfied on the available evidence that MCT is entitled to any rights to the invention of Patrick Leahy, by way of assignment.

I therefore make the following determination under section 32 of the Patents Act 1990:

I determine that Patent Application 696289 is to proceed in the names of Encoret Limited and Medical Creative Technologies, Inc as applicants and nominated persons.

I direct the application be sealed after 30 days from the date of this decision.  If the Commissioner has been served with a notice of appeal before that time, I direct that sealing not occur until the appeal has been decided or discontinued.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Fisher Adams Kelly, Brisbane

Patent attorneys for the opponent   :  Davies Collison Cave, Sydney