INTELLECTUAL PROPERTY – patents – petty patent – entitlement – who may be granted a patent – discussion of co-inventors – whether sole inventor entitled to grant of patent for joint invention – assignment of patent – assignee’s entitlement where grant of original patent invalid.
PRACTICE AND PROCEDURE - declarations of the Court – setting aside – circumstances in which appeal court will impugn primary judge’s exercise of discretion.
GEORGE STACK & ANOR v DAVIES SHEPHARD PTY LTD & ORS
Q 243 of 1999
GEORGE STACK & ANOR v DAVIES SHEPHARD PTY LTD & ORS Q 42 of 2000
WHITLAM, SUNDBERG & DOWSETT JJ 4 MAY 2001 BRISBANE
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY
Q 243 OF 1999
BETWEEN:
DAVIES SHEPHARD PTY LTD DAVIES SHEPHARD (QUEENSLAND) PTY LTD G S A INDUSTRIES (AUST) PTY LTD APPELLANTS
AND:
GEORGE STACK G S TECHNOLOGY PTY LTD RESPONDENTS AND CROSS-APPELLANTS
AND:
BRISBANE CITY COUNCIL RESPONDENT
JUDGES:
WHITLAM, SUNDBERG & DOWSETT JJ
DATE OF ORDER:
4 MAY 2001
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.Leave be given, if necessary, to George Stack and G S Technology Pty Ltd to appeal from that part of the judgment of Cooper J given on 15 September 1999 as is specified in their notice of cross-appeal filed on 9 December 1999.
2.The time for filing the notice of cross-appeal be extended to 10 December 1999.
3.The cross-appeal be dismissed with costs.
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 42 OF 2000
BETWEEN:
GEORGE STACK G S TECHNOLOGY PTY LTD APPELLANTS
AND:
DAVIES SHEPHARD PTY LTD DAVIES SHEPHARD (QUEENSLAND) PTY LTD G S A INDUSTRIES (AUST) PTY LTD RESPONDENTS
JUDGES:
WHITLAM, SUNDBERG & DOWSETT JJ
DATE OF ORDER:
4 MAY 2001
WHERE MADE:
BRISBANE
THE COURT ORDERS THAT:
1.Leave be given, if necessary, to George Stack and G S Technology Pty Ltd to appeal from that part of the judgment of Cooper J given on 10 May 2000 as is specified in their notice of appeal filed on 31 May 2000.
2. The appeal be dismissed with costs.
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
ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
Q 243 OF 1999
BETWEEN:
DAVIES SHEPHARD PTY LTD DAVIES SHEPHARD (QUEENSLAND) PTY LTD G S A INDUSTRIES…
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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AGLC
Stack v Davies Shephard Pty Ltd [2001] FCA 501
Case
[2001] FCA 501
Decision Date
CaseChat Overview and Summary
This case involved an appeal against a decision made by Cooper J, where the patent in question was revoked. The appellants, George Stack and G S Technology Pty Ltd, filed a notice of cross-appeal and a notice of appeal, respectively, on 9 December 1999 and 31 May 2000, and also applied for leave to appeal under s 158(2) of the Act. The central issue before the court was whether the primary judge erred in revoking the patent, given that the appellants argued that the patent should have been granted to A & B rather than B. However, the court found that the primary judge's decision was appropriate based on the declarations made in September and the dismissal of the claims regarding the patent's eligibility and amendment. The court also noted that the appellants did not challenge the revocation order in their arguments.
The court considered the appellants' claims that the patent should have been granted to Stack alone and that the failure to nominate Grieves in the patent request was an oversight. However, the court found no error in the primary judge's decision to revoke the patent. The court further noted that no application had been made under s 105 of the Act to amend the patent request and patent to add Grieves as a joint patentee. The court dismissed the appeals with costs.
In conclusion, the court granted leave to George Stack and G S Technology Pty Ltd to appeal from the specified parts of the judgment of Cooper J, extended the time for filing the notice of cross-appeal, and dismissed the cross-appeal and appeal with costs. The court found that the appellants did not provide sufficient grounds to challenge the revocation of the patent and that the primary judge's decision was appropriate based on the declarations made and the dismissal of the claims regarding the patent's eligibility and amendment.
Orders
Orders of the court
1. Leave be given, if necessary, to George Stack and G S Technology Pty Ltd to appeal from that part of the judgment of Cooper J given on 15 September 1999 as is specified in their notice of cross-appeal filed on 9 December 1999.
2. The time for filing the notice of cross-appeal be extended to 10 December 1999.
3. The cross-appeal be dismissed with costs.
1. Leave be given, if necessary, to George Stack and G S Technology Pty Ltd to appeal from that part of the judgment of Cooper J given on 10 May 2000 as is specified in their notice of appeal filed on 31 May 2000.
2. The appeal be dismissed with costs.
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
All that was said by the appellants in oral argument on this point was that the primary judge gave no “particular reasons” for revoking the patent. It is clear that his Honour regarded that order as appropriate in light of the declarations he had made in September. No attempt was made to persuade us that the revocation order should not have been made. In Stack’s eighty-six page affidavit it is said that “there has never been a case where a good patent has been revoked on a basis as asserted that it ought to have been granted to A & B rather than B”. Given the declarations that neither Stack (the patentee) nor GST (the registered patentee by assignment) was entitled to a grant, the refusal of a declaration that Russell Plastics was an eligible person in relation to the patent, and the dismissal of the claim that the patent be amended to record GST or Russell Plastics as patentee, we are not satisfied that his Honour was in error in revoking the petty patent.CONCLUSION The failure to nominate Grieves in the patent request was not an oversight. Stack and GST have persisted with their claim that the petty patent was validly granted to Stack alone. No application has been made under s 105 of the Act in any of the pending proceedings to have the Court direct amendment of the patent request and patent so as to add Grieves as a joint patentee. Stack and GST instituted these two appeals by filing, respectively, a notice of cross-appeal on 9 December 1999 and a notice of appeal on 31 May 2000. On those dates they also filed applications for leave to appeal under s 158(2) of the Act because some of the matters being heard concurrently by Cooper J involved appeals from decisions or directions of the Commissioner. Plainly no leave is required to appeal against the order revoking the petty patent, but to the extent that leave is required in respect of the other orders of Cooper J it should be given. The appeals will be dismissed with costs.