Grant v Australian Temporary Fencing Pty Ltd - [2003] QSC 194

SUPREME COURT OF QUEENSLAND

CITATION:

Grant & Anor v Australian Temporary Fencing Pty Ltd [2003] QSC 194

PARTIES:

DAVID THOMAS GRANT AND
SUZANNE PATRICIA GRANT
(first plaintiff)
READY CO PTY LTD (ACN 078 092 047)
(second plaintiff)
v
AUSTRALIAN TEMPORARY FENCING PTY LTD (ACN 060 402 048)
(defendant)

FILE NO:

SC No. 6375 of 2002

DIVISION:

Trial Division

PROCEEDING:

Application

ORIGINATING COURT:

Supreme Court Brisbane

DELIVERED ON:

11 June 2003

DELIVERED AT:

Brisbane

HEARING DATE:

21 March 2003

JUDGE:

Holmes J

ORDER:

The Defendant’s application for summary judgment is dismissed.

CATCHWORDS:

INTELLECTUAL PROPERTY – PATENTS – REGISTER OF PATENTS – where defendant sued for infringement of patent – where defendant seeks rectification of the register – whether defendant is a person aggrieved

CONTRACTS – CONSTRUCTION AND INTERPRETATION OF CONTRACTS – OTHER MATTERS – where purported assignment and licence of patent – whether effective assignment of patent - whether grant in equity of licence – whether extended to standard patent – whether license exclusive

INTELLECTUAL PROPERTY – PATENTS – REGISTER OF PATENTS – whether register should be rectified – whether licensee has standing where no registration as exclusive licence

Patents Act 1952 (Cwth)
Patents Act 1990 (Cwth)
Patents Regulations (Cwth)
Uniform Civil Procedure Rules r.293(2)

Bernstrom v National Australia Bank [2002] QCA 231
Codelfa Constructions Pty Ltd v State Rail Authority of New South Wales (1982) 149 CLR 337
Coflexip Stena Offshore Limited’s Patent [1997] RPC 179
Drew Robinson & Co v Shearer & Anor (1914) 18 CLR 209
General Steel Industries Inc v Commissioner General Steel Industries Inc. v Commissioner for Railways (NSW) (1964) 112 CLR 125
Hide & Skin Trading Pty Ltd v Oceanic Meat Traders Ltd (1990) 20 NSWLR 310
Hillas & Co Ltd v Arcos Ltd [1932] All ER 494
Murphy Corp Ltd v Acumen Design & Development (Qld) Pty Ltd (1995) 11 BCL 274
Ritz Hotel v Charles of the Ritz Ltd (1988) 15 NSWLR 158
Royal Botanic Gardens & Domain Trust v South Sydney City Council (2002) 76 ALR 436
Sportsvision Australia v Tallglen Pty Ltd (1998) 44 NSWLR 103
Swain v Hillman [2001] 1 All ER 91
The Film Investment Corporation of New Zealand (receiver appointed) & Anor v Golden Additions Pty Ltd (t/as Hughes Leisure Groups) (1994) 28 IPR 1
Three Rivers District Council v Bank of England (No. 3) [2001] 2 All ER 513
Trollope & Colls Ltd v Atomic Power Construction Ltd [1963] WLR 333
Unilever Aust Ltd v Karounos & Anor (2001) 113 FCR 322
Uprising Dragon Ltd & Anor v Benedict Trading and Shipping Pty Ltd & Ors (1987) AIPC 90-400
Vitamins Australia Ltd v Beta-Carotene Industries Pty Ltd (1987) AIPC 90-417
White & Anor v Australia and New Zealand Theatres Ltd (1943) 67 CLR 266

COUNSEL:

Mr Crowe SC for the applicant defendant
Mr D. Logan for the respondent plaintiffs

SOLICITORS:

Clarke & Kann for the applicant defendant
Redchip Lawyers for the respondent plaintiffs

The application for summary judgment

The defendant seeks summary judgment on a counterclaim…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Grant v Australian Temporary Fencing Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2003] QSC 194
Decision Date: 11 June 2003

CaseChat Overview and Summary

Grant brought an action against Australian Temporary Fencing, alleging infringement of a patent. Australian Temporary Fencing counterclaimed, seeking rectification of the Register of Patents to recognise it as the owner of the patent. The court was tasked with determining whether Australian Temporary Fencing was a person aggrieved by the patent registration, thereby having standing to seek rectification. Additionally, the court had to decide whether the patent had been effectively assigned and whether the licence granted was exclusive.

The court found that Australian Temporary Fencing, despite not being registered as the exclusive licensee, had standing to seek rectification of the register. This was based on the principle that a party who is in possession of the patent and has an interest in the rectification of the register can seek rectification, regardless of their registration status. The court further examined the purported assignment and licence agreement, concluding that the agreement did not constitute an effective assignment of the patent. However, the court found that an equitable licence had been granted to Australian Temporary Fencing, which was extended to the standard patent. This equitable licence, however, was not exclusive.

As a result, the court dismissed the defendant's application for summary judgment, leaving the issue of infringement to be determined at a later stage. The rectification of the register to reflect Australian Temporary Fencing as the patent owner was not ordered, as the court found the defendant did not have standing to seek such rectification. The court determined that the equitable licence did not confer standing for rectification purposes.

Orders

Orders of the court

The Defendant’s application for summary judgment is dismissed.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

CITATION:	Grant & Anor v Australian Temporary Fencing Pty Ltd [2003] QSC 194
PARTIES:	DAVID THOMAS GRANT AND SUZANNE PATRICIA GRANT (first plaintiff) READY CO PTY LTD (ACN 078 092 047) (second plaintiff) v AUSTRALIAN TEMPORARY FENCING PTY LTD (ACN 060 402 048) (defendant)
FILE NO:	SC No. 6375 of 2002
DIVISION:	Trial Division
PROCEEDING:	Application
ORIGINATING COURT:	Supreme Court Brisbane
DELIVERED ON:	11 June 2003
DELIVERED AT:	Brisbane
HEARING DATE:	21 March 2003
JUDGE:	Holmes J
ORDER:	The Defendant’s application for summary judgment is dismissed.
CATCHWORDS:	INTELLECTUAL PROPERTY – PATENTS – REGISTER OF PATENTS – where defendant sued for infringement of patent – where defendant seeks rectification of the register – whether defendant is a person aggrieved CONTRACTS – CONSTRUCTION AND INTERPRETATION OF CONTRACTS – OTHER MATTERS – where purported assignment and licence of patent – whether effective assignment of patent - whether grant in equity of licence – whether extended to standard patent – whether license exclusive INTELLECTUAL PROPERTY – PATENTS – REGISTER OF PATENTS – whether register should be rectified – whether licensee has standing where no registration as exclusive licence Patents Act 1952 (Cwth) Patents Act 1990 (Cwth) Patents Regulations (Cwth) Uniform Civil Procedure Rules r.293(2) Bernstrom v National Australia Bank [2002] QCA 231 Codelfa Constructions Pty Ltd v State Rail Authority of New South Wales (1982) 149 CLR 337 Coflexip Stena Offshore Limited’s Patent [1997] RPC 179 Drew Robinson & Co v Shearer & Anor (1914) 18 CLR 209 General Steel Industries Inc v Commissioner General Steel Industries Inc. v Commissioner for Railways (NSW) (1964) 112 CLR 125 Hide & Skin Trading Pty Ltd v Oceanic Meat Traders Ltd (1990) 20 NSWLR 310 Hillas & Co Ltd v Arcos Ltd [1932] All ER 494 Murphy Corp Ltd v Acumen Design & Development (Qld) Pty Ltd (1995) 11 BCL 274 Ritz Hotel v Charles of the Ritz Ltd (1988) 15 NSWLR 158 Royal Botanic Gardens & Domain Trust v South Sydney City Council (2002) 76 ALR 436 Sportsvision Australia v Tallglen Pty Ltd (1998) 44 NSWLR 103 Swain v Hillman [2001] 1 All ER 91 The Film Investment Corporation of New Zealand (receiver appointed) & Anor v Golden Additions Pty Ltd (t/as Hughes Leisure Groups) (1994) 28 IPR 1 Three Rivers District Council v Bank of England (No. 3) [2001] 2 All ER 513 Trollope & Colls Ltd v Atomic Power Construction Ltd [1963] WLR 333 Unilever Aust Ltd v Karounos & Anor (2001) 113 FCR 322 Uprising Dragon Ltd & Anor v Benedict Trading and Shipping Pty Ltd & Ors (1987) AIPC 90-400 Vitamins Australia Ltd v Beta-Carotene Industries Pty Ltd (1987) AIPC 90-417 White & Anor v Australia and New Zealand Theatres Ltd (1943) 67 CLR 266
COUNSEL:	Mr Crowe SC for the applicant defendant Mr D. Logan for the respondent plaintiffs
SOLICITORS:	Clarke & Kann for the applicant defendant Redchip Lawyers for the respondent plaintiffs