Stack, George v The State of Queensland
[1996] FCA 739
•23 AUGUST 1996
CATCHWORDS
PATENTS - application for exploitation of invention - Commissioner’s failure to register an assignment - “proof to the reasonable satisfaction of the Commissioner” - what Commissioner can consider when deciding whether to record an assignment of a Patent - what is the Register to provide
Patents Act 1990 ss 165, 187, 13, 14(1), 28(1), 69, 28, 28(3), 138(3), 138(1), 139(2), 34, 137, 35, 192, 192(2)(a), 191, 20, 13, 196 and 195(1)
Patents Regulations Regs 19.1(2), 19.1(1)(a) and (b), 6.6(1)
Trade Practices Act 1974 s 80(1)
Australian Federation of Consumer Organisations Inc v Tobacco Institute of Australia Ltd (1988) 81 ALR 701 Cons
Martin and The Miles Martin Pen Co Ltd v Scrib Ltd (1950) 67 RPC 127 Foll
George Stack and GS Technology Pty Ltd v The State of Queensland and The Commissioner of Patents
No QG 21 of 1996
Kiefel J Brisbane 23 August 1996
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
No QG 21 of 1996
BETWEEN:
GEORGE STACK
First Applicant
AND:
G S TECHNOLOGY PTY LTD
Second Applicant
AND:
THE STATE OF QUEENSLAND
First Respondent
AND:
THE COMMISSIONER OF PATENTS
Second Respondent
JUDGE MAKING ORDER: Kiefel J
DATE OF ORDER: 23 August 1996
WHERE MADE: Brisbane
MINUTES OF ORDERS
THE COURT ORDERS THAT:
The questions ordered to be separately determined in the proceedings be answered:
The Commissioner was not entitled to have regard to the question whether petty patent no 662284 was granted to an eligible person in deciding whether to record the assignment referred to in the Deed of Assignment dated 24 August 1995;
The Commissioner was not entitled to have regard to the decisions made in relation to petty patent no 645740 in deciding whether to record the assignment.
Not appropriate for answer.
Note:Settlement and Entry of Orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
GENERAL DIVISION
No QG 21 of 1996
BETWEEN:
GEORGE STACK
First Applicant
AND:
G S TECHNOLOGY PTY LTD
Second Applicant
AND:
THE STATE OF QUEENSLAND
First Respondent
AND:
THE COMMISSIONER OF PATENTS
Second Respondent
CORAM:Kiefel J
DATE:23 August 1996
PLACE:Brisbane
REASONS FOR JUDGMENT
The application filed by GS Technology Pty Ltd (“GST”) and Mr George Stack sought to fix terms, pursuant to s 165 Patents Act 1990, between the State of Queensland and GST for the exploitation of the latter’s invention. A preliminary question however arose as to whether GST might seek those orders, because the Commissioner has declined to register an assignment of the relevant petty patent, number 662284, from Mr Stack to that company.
A statement of agreed facts has been filed by the parties to facilitate the determination of preliminary questions which concern the Commissioner’s power to refuse registration of the assignment on grounds relating to the entitlement to the grant of the petty patent itself. On 24 August 1995 the Commissioner granted the petty
patent to Mr Stack. Particulars were recorded in the Register and Mr Stack, at all relevant times, remained registered as patentee. Both that petty patent and another, number 645740, derived from patent application number 85236 of 1991 for an invention described as “Water Meter Assemblies”. In the course of determining an application for the extension of petty patent 645740, which was opposed by another party, the Deputy Commissioner came to the view that Mr Stack was not a person entitled to the grant. Although the agreed facts contains a number of references to statements made by the Deputy Commissioner in the process culminating in the conclusion that Mr Stack had not been entitled to a grant, they do not seem to me directly relevant. The questions posed do not depend upon the correctness of any view as to Mr Stack’s entitlement, from which it would however follow that an assignment from him to GST would be ineffective. At one point the prospect that GST itself may have had some such entitlement was mooted, the Deputy Commissioner commenting that it might be entitled at least with respect to Mr Stack’s inventive contribution. This may have relevance to consequential orders in the proceedings. For the purpose of determining the questions themselves it needs only to be observed that it is not said that GST had an entitlement to a grant of the petty patent.
By letter dated 12 February 1996 the Commissioner wrote to Mr Stack and GST advising that Reg 19.1(2) of the Patents Regulations required there to be “proof to the reasonable satisfaction of the Commissioner ...” before the assignment could be registered. On 28 February 1996 those parties were advised that, having regard to the decision which had now been made not to extend petty patent 645740 (by reason of
Mr Stack’s non-entitlement to a grant) the Commissioner did not intend to record the assignment. The material before the Commissioner, described as declarations in support of the request to register the assignment, was the same as that furnished with respect to petty patent 645740. As I have said, however, the correctness of it concerning the question of Mr Stack’s entitlement is not presently in issue. It is agreed that, in refusing to record the assignment, the Commissioner took into account:
the question whether the patentee of petty patent no 662284 was entitled to be granted that patent;
matters of which he had become aware and which might affect the validity of petty patent no 662284;
the evidence findings and decisions dated 5 January 1996 and 27 February 1996 regarding petty patent no 645740.
The focus of this application is upon the relevance of the right of the registered patentees to continue to be registered to the question whether an assignment (or other interest granted) between the patentee and a third person should be registered. This says nothing of the view which could, as a question of fact and perhaps law, have been reached as to whether the documents lodged with the Commissioner otherwise established the existence of an assignment of Mr Stack’s interest to GST. It follows from the procedure undertaken that the parties accept that this was made out and that the only relevant obstacle to registration were the facts relating to Mr Stack’s grant, of which the Commissioner had become aware.
The questions to be determined are:
(a) whether the second respondent was entitled to have regard to the
question whether petty patent No 662284 was granted to an eligible person in deciding whether to record the assignment;(b) whether the second respondent was entitled to have regard to the decisions made in relation to petty patent no 645740 in deciding whether to record the assignment; and
(c)the nature and extent of the discretion (if any) conferred on the Commissioner by Reg 19.1(2).
It seems to me however that the last question is too wide to admit of a useful answer.
The questions depend largely on the procedures envisaged by Reg 19.1, which provides for the registration of particulars with respect to patents including, by paragraphs (1)(a) and (b) thereof, particulars of entitlements to patents which include those arising by way of transfer. This in turn requires consideration of the scheme of registration established under the Act and the procedures for challenge to a patentee’s entitlement to a grant (here of a petty patent).
Section 187 of the Patents Act provides:
“Particulars of patents in force, and other prescribed particulars relating to patents (if any) must be registered”.
Regulation 19.1(1) then lists those particulars:
“Particulars to be registered
19.1(1) For the purposes of section 187 of the Act (“registration of particulars of patents etc.”), the following particulars are prescribed, that is, particulars of:
(a)an entitlement as mortgagee, licensee or otherwise to an interest in a patent;
(b)a transfer of an entitlement to a patent or licence, or to a share
in a patent or licence;
(c) an extension of the term of a patent;
(d) a restoration of a standard patent;
(e) an order of a court a copy of which is filed under subsection 105(5) of the Act (“amendments directed by court”);
(f) an order of a prescribed court that has been served on the Commissioner under section 140 of the Act (“Commissioner to be given copies of orders”);
(g) an order of a prescribed court made on appeal in relation to a patent, being an order of which an office copy has been served on the Commissioner;
(h)a decision of the Commissioner to revoke a patent under Chapter 9 of the Act (“re-examination”);
(i) the acquisition of a patent by the Commonwealth under Part 3 (“acquisitions by and assignments to the Crown”) of Chapter 17 (“the Crown”) of the Act;
(j)the cessation of a patent.”
I have highlighted (a) and (b). With respect to those particular provisions, Reg 19.1(2) then provides:
“(2) A request for registration of particulars referred to in paragraph (1) (a) or (b) must be in the approved form and have with it proof to the reasonable satisfaction of the Commissioner of the entitlement of the person making the request.”
It may be observed that the matters listed in paragraphs (c) to (h), as requiring registration, will have been concluded by order of the Court or decision of the Commissioner under specific procedures provided for elsewhere in the Act. Any determinations necessary for (i) and (j) would not seem to depend upon controversial facts. The matters with which (a) and (b) are concerned are not the subject of any other express power nor are procedures provided for the resolution of any question arising with respect to them, other than what appears in Reg 19.1(2). And it may also be observed that the classes of rights or entitlements referred to in paragraphs (a) and (b) are those created by the patentee and flow from the exclusive rights given by a patent (see s 13). They are not in the same category as those matters concerning the
patent itself and which are listed in paragraphs (c) and (j). These factors tend, in my view, to indicate that no substantial investigation into the entitlements referred to in paragraphs (a) and (b) was considered likely to be necessary. This would support the applicant’s contention that it was not intended then to reconsider the patentee/assignor’s entitlement to a grant in the first place.
The applicants submit that the “entitlement” referred to in Regulation 19.1(1) and (2) is that of the requesting party, the person or entity claiming the interest by assignment or otherwise. It follows then, the submission proceeds, that “proof to the reasonable satisfaction of the Commissioner” is only with respect to that entitlement and not the entitlement, with which s 15 is concerned, of a person to a patent:
15.(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a)is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c)derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d)is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”
Regulation 19.1(2) could then be taken as requiring only proof of the fact of the existence of the relevant interest said to have been created. There is, I consider, merit in these submissions. And, it seems to me, what the regulation anticipates is that proof will usually be provided in writing, requiring that it be “with” the request. Indeed, at least so far as an assignment is concerned, it is required by the Patents Act to be in writing: s 14(1).
Of course if the documents did not establish the interest sought to be registered the Commissioner could and ought refuse registration. The creation of a simple documentary procedure to permit of a conclusion one way or the other does not however suggest more complex questions of law and fact relating to the patentee’s entitlement are here to be gone into. It is of some importance, I consider, that there are other procedures by which that entitlement might be impeached.
So far as petty patents are concerned a usual course undertaken, where there is another party disputing a patentee’s entitlement or the validity of the petty patent, is for a notice under s 28(1) to be given to the Commissioner within the prescribed period after the grant of the petty patent. Section 69, which empowers the Commissioner to extend the term of the petty patent, requires a decision to be reached “in accordance with the regulations” (s 69(2)). Regulation 6.6(1) requires the Commissioner to consider any notice given under s 28 and also any matter of which the Commissioner has become aware. Section 28(3) provides:
“(3) If the Commissioner becomes aware, otherwise than by a notification under subsection (1), of any matter that may affect the validity of a petty patent or one or more of the grounds mentioned in that subsection, the Commissioner must inform the patentee in writing of the matter.”
An opportunity is then required to be given to the patentee to correct the matter, by amendment of the patent request or specification: s 69(3). With respect to the decision to refuse or grant an extension, which may incorporate findings as to entitlement, an appeal lies to this Court: s 69(7).
The patentee’s entitlement to a patent (which is defined to include a petty
patent) might also be a ground for an order for revocation under s 138(3). Such an application may be necessary where the extension has already been granted. The persons who might apply to the Court for such an order are the Minister “or any other person” (s 138(1)). Section 139(2) provides that the applicant must serve a copy of any such application on the Commissioner and that the Commissioner may “appear and be heard in the proceedings”. This does not however, in my view, imply that the Commissioner could never be an applicant for an order for revocation. It simply provides for notification where the Commissioner is not. In a situation where the Minister does not bring proceedings, on advice, there does not seem to me to be any warrant for denying the Commissioner standing to do so. In Australian Federation of Consumer Organisations Inc v Tobacco Institute of Australia Ltd (1988) 81 ALR 701, 706 Burchett J declined to read down s 80(1) Trade Practices Act 1974 which provided that an injunction might issue with respect to contraventions of Part IV or V “... on the application of the Minister, the Commissioner or any other person...”. His Honour said:“By this provision, an independent power to given to “any other person” to seek injunctive relief in a case of this kind. That power seems expressly designed to avoid problems of standing of the kind which proved fatal to the plaintiff in Australian Conservation Foundation Inc v Commonwealth of Australia (1980) 146 CLR 493; 28 ALR 257. In R v Judges of Federal Court of Australia; Ex parte Pilkington ACI (Operations) Pty Ltd (1978) 142 CLR 113 at 128; 23 ALR 69 at 78, Mason J said of the power to grant relief on the application of “any other person”: “The class is expressed as widely as it can be and it would require considerations of very great strength to warrant a reading down.” In the same case, (CLR at 131; ALR at 79) Murphy J said: “There is no reason for reading the words, `any other person’, down and strong reason for giving the words their natural breadth.”
There are other sections in the Patent Act which permit the Court, or the Commissioner, to declare another person eligible to a grant with respect to the
invention (see ss 34, 137 and 35) but the circumstances in which that might arise are not directly relevant to the questions here. And s 192 provides that a “person aggrieved” by a wrong entry in the register might apply to the Court for its rectification. This would not assist the Commissioner however even where concerns were held as to the true entitlement of a person registered as patentee. It may have been a course which GST could have pursued if it had been asserted that it was entitled to the grant. Section 192(2)(a) empowers a Court to decide any question which it is necessary or expedient to decide in connection with the rectification of the Register and would, it seems to me, permit the determination of the factual issues which confronted the Deputy Commissioner on the application for extension of petty patent 645470 and which, I take it, will arise in considering the application to extend this petty patent.
Returning to the questions of construction, it seems to me that where provision is elsewhere made for a determination as to the question of a person’s entitlement to the patent itself, this is a strong indication that that is not a matter with which the Commissioner will be concerned when considering a request to register particulars of interests created by the patentee.
Each party sought to place reliance on what the Register is to provide. For the Commissioner it was submitted that it must have been intended that it provide some certainty but not that the Commissioner is to be obliged to register a doubtful or wrong interest. The answer to the latter concern, it seems to me, is that the interest with which the Commissioner is relevantly concerned under reg 19.1 is the
assignment, mortgage, lease or other agreed interest. It could not then be suggested that the Commissioner, by making the entry on proof of that interest, commits an offence under s 191, a concern which was raised during submissions. With respect to the reliability of the Register Counsel for the Commissioner referred to the following observation in Martin and the Miles Martin Pen Co Ltd v Scrib Ltd (1950) 67 RPC 127:“These provisions, in my judgment, really make it plain beyond argument that the policy of the Act is that, in order to ensure some certainty and finality as regards title to patents, a Register is to be kept, and vis-a-vis the outside world the registered proprietor is to be regarded as the owner of the patent, subject to any interest which may have been carried out of his interest and duly noted on the Register...”
And, so far as those comments assist, I accept they apply to the Commonwealth Act. But that is not to say that the Register is a warranty as to the validity of a patent (to the contrary see s 20) or as to a patentee’s entitlement. The Register provides information as to who is registered as patentee who then has the exclusive rights derived from a patent (s 13), and the holders of some other interest in the patent. Non-entry in the Register has important consequences in particular with respect to admissibility of a document as proof of that title or interest (see s 196) and, in some cases, the priority of an interest which perhaps serves to confirm those persons’ interest in registration of their particulars, but does not take the matter further. Relevantly the Register is only prima facie evidence as to the particulars contained in it: s 195(1) and is subject to correction or rectification. Registration of particulars of interests said to be held in patents does not provide the holder of the interest with unassailable title. Their interest will depend upon an entitlement to the patent being maintained. The purpose of and the standards applicable to the Register do not
require some gloss to be put upon the requirements of Reg 19.1(2).
This is an unusual case where the Commissioner has come to a view concerning Mr Stack’s entitlement to one petty patent. Assuming that all relevant material was placed before the Commissioner, it must follow that the same result will be reached on the extension of this patent. The utility of these answers is then in question. But so far as the questions posed by both the applicants and the Commissioner are concerned it must in my view be concluded that, nevertheless, the Commissioner may not by the limited procedure provided by Reg 19.1 determine against a requesting party on the basis of a view held as to the patentee’s entitlement. Further evidence and a hearing of some kind may not be necessary in this case, because of what has gone before, but it would in others. These may be seen to be provided by the procedures with respect to an extension of the petty patent (ss 69, 28) or application for revocation of a patent, including a petty patent (s 138(3)).
The questions are therefore answered:
(a)the Commissioner was not entitled to have regard to the question whether petty patent no 662284 was granted to an eligible person in deciding whether to record the assignment referred to in the Deed of Assignment dated 24 August 1995;
(b)the Commissioner was not entitled to have regard to the decisions made in relation to petty patent no 645740 in deciding whether to record the assignment; and
(c) not appropriate for answer.
I shall hear Counsel as to any consequential orders and as to costs.
I certify that this and the preceding eleven pages are a true copy of the reasons for judgment herein of the Honourable Justice Kiefel.
Associate
Date: 23 August 1996
Counsel for the applicants: Mr D J McGill SC
Solicitors for the applicants: Andrew P Abaza
Counsel for the respondent: Ms E M O’Reilly
Solicitors for the respondent: Australian Government Solicitor
Date of Hearing: 23 April 1996
Place of Hearing: Brisbane
Place of Judgment: Brisbane
Date of Judgment: 23 August 1996
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