Kennedy v Gearhart United Pty Ltd

The case of Kennedy v Gearhart United Pty Ltd was heard in the District Court of South Australia. The plaintiff, Kennedy, sought a declaration or order that it was the owner of and entitled to the right, title and interest in an invention known as the Extreme Machining Roller Reamer (EMRR). The plaintiff alleged that the EMRR was developed by Mr J.F. Kennedy during his employment with the plaintiff and that an assignment agreement was in place which assigned the rights to the EMRR to the plaintiff. The defendants argued that the claim should be dismissed or stayed as it was a matter arising under the Patents Act 1990 (Cth) and should be heard in the Federal Court. The defendants contended that the claim should be dismissed because the District Court did not have jurisdiction to determine a claim arising under the Act.

The legal issue before the court was whether the plaintiff's claim was a matter arising under the Patents Act and therefore required to be heard in the Federal Court. The court had to determine whether the plaintiff's claim was a contractual claim or whether it was a matter arising under the Act. The court considered the arguments of both parties and examined the pleadings. The court found that the plaintiff's claim was a contractual claim and dependent upon the Invention and Confidential Information Agreement. The entitlement to a declaration arose under the general law without reference to the Act. The court held that the Act did not govern every treaty, however incidental, relating to an invention. Therefore, the plaintiff's claim was properly justiciable in the District Court.

The court declined to stay the proceedings as it was satisfied that there was a real question to be tried. The court held that the plaintiff's claim was not a matter arising under the Patents Act and therefore the District Court had jurisdiction to hear the matter. The court dismissed the appeal and ordered that the matter would proceed in the District Court. The court reserved the question of costs for later determination.

In summary, the court held that the plaintiff's claim was a contractual claim and not a matter arising under the Patents Act. The court found that the District Court had jurisdiction to hear the matter and declined to stay the proceedings. The matter will proceed in the District Court with the question of costs to be determined at a later date.