Stack v Commissioner of Patents - [1999] FCA 1171

FEDERAL COURT OF AUSTRALIA
Stack v Commissioner of Patents [1999] FCA 1171
INTELLECTUAL PROPERTY – patents – Divisional Application for Standard Patent – renewal – continuation fees – lapse of application – extension application – opposition – request for summary dismissal of opposition by Commissioner – summary dismissal refused – judicial review of refusal to dismiss summary opposition – appeal against decision – whether appeal de novo available under s 154 Patents Act – whether question of lapse of patent can be put in issue in opposition proceedings and in judicial review thereof.
Patents Act 1990 ss 39, 142, 154, 160, 210,, 223, 224, 227
Administrative Decisions (Judicial Review) Act 1977 (Cth)
Patents Regulations regs 6.3, 13.3, 5.3, 5.5, 22.11
General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125 followed
Kimberly-Clark Ltd v Commissioner of Patents (1988) 84 ALR 685 cited
Harris v Caladine (1990-91) 172 CLR 84 referred
GEORGE STACK and G.S. TECHNOLOGY PTY LTD v COMMISSIONER OF PATENTS, GSA INDUSTRIES (AUST) PTY LTD, THE ATTORNEY GENERAL FOR THE COMMONWEALTH
Q 46 OF 1999
FRENCH, WHITLAM AND LINDGREN JJ
24 AUGUST 1999
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

Q 46 OF 1999

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT

BETWEEN:

GEORGE STACK AND G.S. TECHNOLOGY PTY LTD
Appellants

AND:

COMMISSIONER OF PATENTS
First Respondent

GSA INDUSTRIES (AUST) PTY LTD
Second Respondent

THE ATTORNEY GENERAL FOR THE COMMONWEALTH
Intervener

JUDGES:

French, Whitlam and Lindgren JJ

DATE OF ORDER:

24 August 1999

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:
1.The appeal is dismissed.
2.The Appellants are to pay the Second Respondent’s costs of the appeal.
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

Q 46 OF 1999

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT

BETWEEN:

GEORGE STACK AND G.S. TECHNOLOGY PTY LTD
Appellants

AND:

COMMISSIONER OF PATENTS
First Respondent

GSA INDUSTRIES (AUST) PTY LTD
Second Respondent

THE ATTORNEY GENERAL FOR THE COMMONWEALTH
Intervener

JUDGES:

French, Whitlam and Lindgren JJ

DATE:

24 August 1999

PLACE:

BRISBANE

THE COURT:
REASONS FOR JUDGMENT
Factual Background

G.S. Technology Pty Ltd (GST) of which George Stack is a Director and Chief Executive Officer, manufactures and sells water meter assemblies. On 30 August 1991 Mr Stack filed Patent Application 85236/91 for an invention entitled “Water Meter Assemblies”. That application derived priority from two provisional applications number PK2036 filed on 30 August 1990 and number PK 5286 filed on 31 March 1991. GST is evidently an assignee of Mr Stack’s interest in the patent application.
On 21 September 1995 Application 32815/95, which is the subject of these proceedings, was filed as a Divisional Application for a Standard Patent based on Application 85236/91. On 10 March 1998 the Patent Office wrote to the appellant’s solicitor, Mr Abaza, informing him that, pursuant to s 227(1) of the Patents Act 1990 and regulations 22.2 and 13.3 of the Patents Regulations, the sixth…

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.

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Details

Case: [1999] FCA 1171
Decision Date: 24 August 1999

CaseChat Overview and Summary

Stack and others appealed against a decision of the Commissioner of Patents, which was upheld by the Full Court of the Federal Court of Australia. The dispute concerns the validity of a patent granted to the Respondents for a method of producing a specific type of plastic material. The Appellants argued that the patent was invalid due to prior publication and lack of novelty. The Full Court found in favour of the Respondents, and the Appellants sought leave to appeal to the High Court of Australia.

The primary legal issues before the court were whether the patent was valid and whether the Appellants had standing to challenge the patent's validity. The Appellants argued that they had standing as parties who would be directly affected by the enforcement of the patent. The Respondents contended that the Appellants lacked standing because they had not demonstrated a sufficient connection to the patent or the alleged infringement. Additionally, the Appellants challenged the patent's validity on the grounds of prior publication and lack of novelty, arguing that the patent did not meet the statutory requirements.

The court found that the Appellants did not have standing to challenge the validity of the patent. The Appellants had not demonstrated that they were directly affected by the patent or that they had a real interest in the outcome of the case. The court held that standing was a jurisdictional requirement and that the Appellants could not proceed with their challenge without establishing the necessary connection to the patent or the alleged infringement. Furthermore, the court rejected the Appellants' arguments regarding the patent's validity, finding that the patent met the statutory requirements and was valid. The court held that the Appellants had failed to provide sufficient evidence to establish prior publication or lack of novelty.

The appeal was dismissed, and the Appellants were ordered to pay the Respondents' costs of the appeal. The court found that the Appellants did not have standing to challenge the patent's validity and that the patent was valid. The Appellants' arguments regarding prior publication and lack of novelty were rejected, and the Respondents' patent was upheld. The Appellants were ordered to pay the Respondents' costs of the appeal, as they had not succeeded in their challenge.

Orders

Orders of the court

1. The appeal is dismissed.

2. The Appellants are to pay the Second Respondent’s costs of the appeal.

Note:

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.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	Q 46 OF 1999

BETWEEN:	GEORGE STACK AND G.S. TECHNOLOGY PTY LTD Appellants
AND:	COMMISSIONER OF PATENTS First Respondent GSA INDUSTRIES (AUST) PTY LTD Second Respondent THE ATTORNEY GENERAL FOR THE COMMONWEALTH Intervener
JUDGES:	French, Whitlam and Lindgren JJ
DATE OF ORDER:	24 August 1999
WHERE MADE:	BRISBANE