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Stack v Brisbane City Council

Stack v Brisbane City Council

Case [1999] FCA 1279 15 September 1999

Contract Formation

Breach of Contract

Unconscionable Conduct

Intellectual Property Law

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FEDERAL COURT OF AUSTRALIA
Stack v Brisbane City Council [1999] FCA 1279
INTELLECTUAL PROPERTY - patents - petty patent - entitlement - nominated person - consideration of who may be granted a patent - divisional applications - discussion of co-inventors - assignment of patent - consideration of successor in title of patent and original grantee - entitlement of employee to workplace invention.
INTELLECTUAL PROPERTY - patents - invalidity - whether the claims of the petty patent are fairly based on the specifications - whether the claims lack clarity.
INTELLECTUAL PROPERTY - patents - priority date of the petty patent - divisional and associated applications - whether claims are fairly based on provisional specification to obtain earlier priority date.
INTELLECTUAL PROPERTY - patents - manner of manufacture within s 6 Statute of Monopolies - whether the invention claimed is a manner of manufacture - whether the invention was a mere collocation of well-known integers - whether inventive step disclosed in complete specification.
INTELLECTUAL PROPERTY - patents - obviousness - prior art base - whether invention claimed had inventive step when compared to the prior art base.
INTELLECTUAL PROPERTY - patents - novelty - compared with prior art base - discussion and application of the test “reverse infringement” for novelty.
Patents Act 1990 (Cth) ss 5, 7, 15, 18, 28, 29, 38, 40, 43, 138
Patents Regulations Regs 3.1, 3.12, 6.6, 19.1
Stack v The State of Queensland (1996) 68 FCR 247 Cited
Martin and the Miles Martin Pen Coy Ld v Scrib Ld (1950) 67 RPC 127 Appr
Stack v Brisbane City Council (No 2) (1996) 67 FCR 510 Cited
Worthington Pumping Engine Company v Moore (1902) 20 RPC 41 Cited
Fine Industrial Commodities Limited v Powling (1954) 71 RPC 253 Cited
Sterling Engineering Co Ld v Patchet [1955] AC 534 Cited
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 Cited
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 Cited
Electric & Musical Industries Ld v Lissen Ld and Boonton Research Corporation Ld (1939) 56 RPC 23 Cited
Henriksen v Tallon Limited [1965] RPC 434 (HL) Appl
No-Fume Ld v Frank Pitchford & Co Ld (1935) 52 RPC 231 (CA) Appl
Valensi v British Radio Corporation [1973] RPC 337 Appl
CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (FC) Foll
Stauffer Chemical Company’s Application [1977] RPC 33 Cited
Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 FC Cited
NV Phillips Gloeilampenfabrieken v Mirabella International Pty Ltd (1995) 183 CLR 655 Cited
National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 Cited
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 194 CLR 171 Cited
British Celanese Ltd v Courtaulds (1935) 52 RPC 171 cited
Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 Cited
British Westinghouse Electric and Manufacturing Company Ltd v Braulik (1910) 27 RPC 209 Cited
Minnesota Mining and Manufacturing Co v Beiersdorf…

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.

Continue reading Stack v Brisbane City Council

Details

AGLC: Stack v Brisbane City Council [1999] FCA 1279
Case: [1999] FCA 1279
Decision Date: 15 SEPTEMBER 1999

CaseChat Overview and Summary

This case involves a dispute over the entitlement to a petty patent for a water meter assembly, as well as the validity of the patent itself. The applicants, George Stack and GS Technology Pty Ltd (GST), sought to enforce the patent against the respondents, Brisbane City Council, Davies Shephard Pty Ltd, and Davies Shephard (Queensland) Pty Ltd. The applicants also sought to extend the term of the patent and prevent its revocation.

The central issue in the case was whether George Stack was entitled to the grant of the petty patent under section 15 of the Patents Act 1990 (Cth). The court found that Stack was not entitled to the grant of the patent, as he was an employee of Russell Plastics at the time the invention was made. The invention was made in the course of his employment, and therefore, the entitlement to the patent lay with Russell Plastics. The court also found that GST, as the assignee of the patent, was not entitled to the patent as it derived its entitlement from Stack, who was not entitled to the grant of the patent in the first place.

The court further held that the claims of the petty patent were fairly based on the specification and complied with the requirements of the Act. The invention was found to be novel and non-obvious when compared to the prior art. Consequently, the court declared that the invention claimed in the petty patent was a patentable invention and that the specification complied with the statutory requirements.

Based on these findings, the court made several declarations, including that George Stack was not entitled to the grant of the patent, GST was not entitled to the patent, and the invention claimed in the petty patent was patentable and its specification complied with the statutory requirements.

Orders