Yang v Vuly Pty Ltd

Case [2020] FCA 1037

FEDERAL COURT OF AUSTRALIA

Yang v Vuly Pty Ltd [2020] FCA 1037

File number: NSD 559 of 2020
Judge: BURLEY J
Date of judgment: 20 July 2020
Date of publication of reasons: 22 July 2020
Catchwords: PRACTICE AND PROCEDURE – application pursuant to r 34.25 of the Federal Court Rules 2011 (Cth) for an extension of time within which to appeal from decision of delegate of Commissioner of Patents – two month delay – where cause of delay is innocent mistake – where no prejudice to respondent – where appeal will be conducted as a hearing de novo and the respondent will be the effective moving party – application granted
Legislation:

Federal Court Rules 2011 (Cth) r 34.24, 34.25

Patents Act 1990 (Cth) s 29, 36
Cases cited:

Donzenac Pty Ltd v MCV Enviroworks Pty Ltd [2015] FCA 361

Jackamarra v Krakouer [1988] HCA 27;  195 CLR 516

Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90;  222 ALR 155

Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9; 165 FCR 527

Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2020] FCA 408

Vuly Pty Ltd v Wei Yang [2020] APO 13
Date of hearing: 20 July 2020
Registry: New South Wales
Division: General Division
National Practice Area: Intellectual Property
Sub-area: Patents and associated Statutes
Category:         Catchwords
Number of paragraphs: 15
Counsel for the Applicant: Mr J. Cooke with Mr E. Thompson
Solicitor for the Applicant: Eaglegate Lawyers
Counsel for the Respondent: Ms J. Ambikapathy
Solicitor for the Respondent: Maxwell Intellectual Property Lawyers

ORDERS

NSD 559 of 2020
BETWEEN:

WEI YANG

Applicant
AND:

VULY PTY LTD ACN 130 522 388

Respondent

JUDGE:

BURLEY J

DATE OF ORDER:

20 JULY 2020

THE COURT ORDERS THAT:

1.The applicant have leave to appeal in the form of the draft Notice of Appeal filed on 20 May 2020.

2.The applicant pay the costs of the application.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.


REASONS FOR JUDGMENT
(Revised from transcript)

BURLEY J:

  1. The applicant, Wei Yang, seeks leave pursuant to r 34.25 of the Federal Court Rules 2011 (Cth) (FCR) for an extension of time in which to appeal from a decision of a Delegate of the Commissioner of Patents made on 28 February 2020: Vuly Pty Ltd v Wei Yang [2020] APO 13 (decision). The decision was made on 28 February 2020. FCR 34.24 requires that any notice of appeal be filed within 21 days of the date of the decision; in this case, by 20 March 2020. Instead, the present application together with a draft notice of appeal was filed two months after the date of the decision, on 20 May 2020.

  2. Mr Yang is the applicant for Patent Applications Numbers AU2014268206, PCT/CN2015/085337 and AU2017216515 (collectively, patent applications), all of which relate to a frame structure for trampolines. The delegate’s decision arises from an application brought pursuant to s 36 of…

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AGLC
Yang v Vuly Pty Ltd [2020] FCA 1037
Case
[2020] FCA 1037
Decision Date

CaseChat Overview and Summary

Wei Yang has applied for an extension of time to appeal a decision made by a Delegate of the Commissioner of Patents. The decision, delivered on 28 February 2020, related to patent applications concerning a frame structure for trampolines. The Delegate determined that Vuly Pty Ltd, not Mr Yang, was the sole person entitled to the inventions claimed in those applications. The Federal Court Rules 2011 (Cth) (FCR) require a notice of appeal to be filed within 21 days of the decision, but Mr Yang filed his application on 20 May 2020, two months late. Mr Yang seeks leave under FCR 34.25 for an extension of time to file his notice of appeal, accompanied by a draft notice of appeal and an affidavit explaining the circumstances of the delay. The key legal issue before the Court is whether Mr Yang's two-month delay in filing his notice of appeal, due to an innocent mistake, justifies granting an extension of time. The Court must consider the nature of the appeal, the cause of the delay, and whether there has been any prejudice to the respondent, Vuly Pty Ltd.

In deciding the application, the Court noted that Mr Yang's solicitor, Xiao Sandy Zhang, had made an innocent mistake regarding the deadline for filing the notice of appeal. Mr Zhang had read the decision and mistakenly believed that there was a two-month extension for Vuly to provide further information, which led him to delay filing the notice of appeal. The Court also noted that Vuly and the Commissioner of Patents had not opposed the grant of an extension, and that the appeal would be conducted as a hearing de novo, with Vuly being the effective moving party. Given these factors, the Court concluded that Mr Yang's delay was due to an innocent mistake, there was no prejudice to Vuly, and the appeal would proceed as a hearing de novo, the Court granted the application for an extension of time. The Court ordered that Mr Yang have leave to appeal in the form of the draft Notice of Appeal filed on 20 May 2020 and that Mr Yang pay the costs of the application.

Orders

Orders of the court

1. The applicant have leave to appeal in the form of the draft Notice of Appeal filed on 20 May 2020.

2. The applicant pay the costs of the application.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

The applicant, Wei Yang, seeks leave pursuant to r 34.25 of the Federal Court Rules 2011 (Cth) (FCR) for an extension of time in which to appeal from a decision of a Delegate of the Commissioner of Patents made on 28 February 2020: Vuly Pty Ltd v Wei Yang [2020] APO 13 (decision). The decision was made on 28 February 2020. FCR 34.24 requires that any notice of appeal be filed within 21 days of the date of the decision; in this case, by 20 March 2020. Instead, the present application together with a draft notice of appeal was filed two months after the date of the decision, on 20 May 2020. Mr Yang is the applicant for Patent Applications Numbers AU2014268206, PCT/CN2015/085337 and AU2017216515 (collectively, patent applications), all of which relate to a frame structure for trampolines. The delegate’s decision arises from an application brought pursuant to s 36 of the Patents Act 1990 (Cth) by Vuly Pty Ltd to the effect that it, and not Mr Yang, is solely entitled to the inventions claimed in those applications. The delegate found that Vuly’s claim was made out. Vuly and the Commissioner of Patents have been notified of the present application, and Vuly has filed a notice of appearance. Neither Vuly or the Commissioner has made any submission in opposition to the grant of the extension, although Vuly has reserved its position in relation to costs. FCR 34.25 provides:(1)A person who wants to apply for an extension of time within which to file a notice of appeal mentioned in rule 34.24 must file an application for an extension of time, in accordance with Form 67.(2) The application may be made during or after the period mentioned in rule 34.24.(3) The application must be accompanied by:(a) an affidavit stating the following:(i) briefly but specifically, the facts on which the application relies; and(ii) why the notice of appeal was not filed within time; and(iii) the nature of the appeal; and(iv) the questions involved; and(b) a draft notice of appeal that complies with rule 34.24.(4) The applicant must, at least 14 days before the day fixed for the directions hearing, serve a copy of the application and the accompanying documents on:(a) the Commissioner; and(b) each interested person. Mr Yang relies on an affidavit sworn by Xiao Sandy Zhang, a solicitor at Eaglegate Lawyers who acts for Mr Yang, in support of his application. Mr Zhang explains that he made a mistake about the time when a notice of appeal should be filed. He was provided with a copy of the decision on 2 March 2020 and read it. He observed that in the opening paragraph of the decision the delegate made a declaration under s 36(1) of the Patents Act to the effect that Vuly is the sole eligible person in respect of the patent applications, but then noted that in the next paragraph the delegate said (original emphasis):I allow Vuly Pty Ltd two (2) months in which to provide the further information requested in the final paragraph of this decision. That request for information arises from [94] – [98] of the decision, where the delegate found that although Vuly succeeded in the application, the delegate remained uncertain as to the actual identity of the true inventor. The delegate explained that he accepted the case advanced by Vuly that Mr Joe Andon and/or employees of D3 Product Design Pty Ltd are the inventors of the “cross-over design”, but that it was not clear whether Mr Andon had a claim to inventorship. He also noted that s 36 enables a person who has been determined to be an eligible person either to make a new application under s 29 of the Patents Act for the whole of the subject matter of the application, or to pursue the Yang applications as they currently stand. The delegate concluded with a request that Vuly provide written submissions on how it wished to proceed, preferably with evidence to establish the identity of the actual inventor, within two months.

Ratio Decidendi

Legal Principle Established

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