Citation:
`
`Parties:
`
`File number:
`
`Judge:
`
`Date of judgment:
`
`Catchwords:
`
`FEDERAL COURT OF AUSTRALIA
`
`Australia) Pty Ltd [2013] FCA 527
`
`[2013] FCA 527
`
`Australia) Pty Ltd
`
`FOSTER'S AUSTRALIA LIMITED ACN 004 056 106,
`(NOW KNOWN AS CUB Pty Ltd) v CASH'S
`(AUSTRALIA) PTY LTD ACN 004 275 183
`
`VID 913 of 2011
`
`KENNY J
`
`29 May 2013
`
`INTELLECTUAL PROPERTY Application made for
`a patent pursuant to s 29(1) of the Patents Act 1990 (Cth)
`by a person not ultimately entitled to grant of patent within
`Prior to grant of
`the terms of 15(1) of the Patents Act
`patent, rights to invention and application assigned to
`entitled person within the meaning of s 15(1) - Held that
`patent application validly made under s 29(1) and properly
`granted to entitled person within the meaning of 15(1) such
`that the patent should not be revoked pursuant to 138(3)(a)
`false
`suggestion
`or
`- No
`of
`the Patents Act
`misrepresentation to the Commissioner of Patents such that
`
`under s 138(3)(d) or (e) of the Patents Act.
`
`INTELLECTUAL PROPERTY Application filed for
`design registration pursuant to s 21(1) of the Designs Act
`2003 (Cth) by a person not entitled to be entered on the
`Register of Designs within the terms of s 13(1) of the
`Design registered in name of applicant
`Designs Act
`Held
`that
`application
`for
`design registration and
`registration of design were valid because in both events
`applicant was acting as constructive trustee for entitled
`person Accordingly no revocation on the grounds of s
`false
`suggestion
`or
`- No
`93(3)(b) warranted
`misrepresentation made to the Registrar of Designs such
`that registration of the design should be revoked in exercise
`Designs Act
`
`2003 (Cth).
`
`Legislation:
`
`Patents Act 1990 (Cth)
`Patents Regulations 1991 (Cth)
`Designs Act 2003 (Cth)
`
`HP 1009
`Page 1 of 47
`
`

`
`Cases cited:
`
`Books cited:
`
`- 2 -
`
`Stack v Brisbane City Council (1999) 47 IPR 525
`H Bion Inc v Commissioner of Patents [2010] FCA 539
`Purex Corporation Limited v Vanguard Trading Company
`(1965) 112 CLR 532
`The Queen v Commissioner of Patents; ex parte Martin
`(1953) 89 CLR 381
`Martin and the Miles Martin Pen Coy Ltd v Scrib Ltd
`(1950) 67 RPC 127
`Pfizer Overseas Pharmaceuticals v Eli Lilly and Co (2005)
`68 IPR 1
`Prestige Group (Australia) Pty Ltd v Dart Industries Inc
`(1990) 19 IPR 275
`ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc
`(2000) 181 ALR 635
`
`Van
`Campers Pty Ltd) v Camoflag Pty Ltd (2005) 67 IPR 68
`Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth &
`Anor (2010) 88 IPR 459
`Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011]
`FCAFC 132
`Speedy Gantry Hire Pty Ltd v Preston Erection Pty & Anor
`(1998) 40 IPR 543
`Preston Erection Pty Ltd & Anor v Speedy Gantry Hire Pty
`Ltd (1998) 43 IPR 74
`University of British Columbia & Anor v Conor
`Medsystems, Inc (2006) 155 FCR 391
`Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC
`(2008) 77 IPR 449
`Australian Olympic Committee Inc & Anor v Big Fights &
`Ors (1999) 46 IPR 53
`Edwards v Liquid Engineering 2003 Pty Ltd (2008) 77 IPR
`115
`Figgins Holdings Pty Ltd v Registrar of Trade Marks
`(1995) 59 FCR 147
`Chang v Registrar of Titles (1976) 137 CLR 177
`Imagic Inc v Futuretronics (Australia) Pty Ltd (1983) 51
`ALR 122
`Re Australian Wine Co Ltd (1885) 61 LT 427
`
`Bodkin, C, Patent Law in Australia (Lawbook Co, 2008)
`Dufty, A and Lahore, J, Lahore. Patents, Trade Marks &
`Related Rights (LexisNexis Butterworths, Australia, 2006
`(loose leaf)
`Lindgren, K, Lahore, J, and Rothnie, WA, Copyright and
`Designs (LexisNexis Butterworths, Australia, 2004 (loose
`leaf))
`
`Date of hearing:
`
`23 August 2012
`
`HP 1009
`Page 2 of 47
`
`

`
`- 3 -
`
`Date of last submissions:
`
`27 August 2012
`
`Place:
`
`Division:
`
`Category:
`
`Melbourne
`
`GENERAL DIVISION
`
`Catchwords
`
`Number of paragraphs:
`
`139
`
`Counsel for the Applicant:
`
`A J L Bannon SC with L Merrick
`
`Solicitor for the Applicant:
`
`Corrs Chambers Westgarth
`
`Counsel for the Respondent:
`
`J Garnsey QC with V Beniac-Brooks
`
`Solicitor for the Respondent
`
`Arcadia Lawyers
`
`HP 1009
`Page 3 of 47
`
`

`
`IN THE FEDERAL COURT OF AUSTRALIA
`VICTORIA DISTRICT REGISTRY
`GENERAL DIVISION
`
`VID 913 of 2011
`
`BETWEEN:
`
`AND:
`
`FOSTER'S AUSTRALIA LIMITED ACN 004 056 106 (NOW
`KNOWN AS CUB PTY LTD)
`Applicant/Cross-Respondent
`
`CASH'S (AUSTRALIA) PTY LTD ACN 004 275 183
`Respondent/Cross-Claimant
`
`JUDGE:
`DATE OF ORDER:
`WHERE MADE:
`
`KENNY J
`29 MAY 2013
`MELBOURNE
`
`THE COURT ORDERS THAT:
`
`1.
`
`The questions ordered to be separately answered be determined as follows:
`Question (a):
`
`Is the respondent/cross-
`that any of:
`the Patents Act 1990
`(i)
`Australian Innovation Patent No 2010101451;
`(ii)
`Australian Innovation Patent No 2010101452;
`(iii)
`Australian Innovation Patent No 2010101453; and
`(iv)
`Australian Innovation Patent No 2010101454,
`be revoked on the grounds stated in ss 138(3)(a), (d) and/or 138(3)(e) of the
`Patents Act by reason of the matters set out in paragraphs 3(iA), 3(ii)A and
`
`138 of
`
`-
`
`s-claim
`
`Answer:
`No.
`
`Question (b):
`
`93 of the Designs Act 2003
`
`Australian Registered Design No 326865; and/or
`(i)
`Australian Registered Design No 326895,
`(ii)
`be revoked on the grounds stated in ss 93(3)(b) and 93(3)(d) of the Designs
`Act by reason of the matters set out in paragraphs 6 of the Defence and 21
`and 22 of the Cross-claim?
`
`Answer:
`No.
`
`HP 1009
`Page 4 of 47
`
`

`
`- 2 -
`
`2.
`
`3.
`
`On or before 4.30 pm on 7 June 2013, the parties file and serve written submissions
`on costs (such submissions are not to exceed 2 pages).
`
`There be a further directions hearing on a date to be fixed.
`
`Note: Entry of orders is dealt with in Rule 39.32 of the FederalCourt Rules 2011.
`
`HP 1009
`Page 5 of 47
`
`

`
`IN THE FEDERAL COURT OF AUSTRALIA
`VICTORIA DISTRICT REGISTRY
`GENERAL DIVISION
`
`VID 913 of 2011
`
`NOW
`
`BETWEEN:
`
`AND:
`
`JUDGE:
`DATE:
`PLACE:
`
`KNOWN AS CUB PTY LTD)
`Applicant/Cross-respondent
`
`CASH'S (AUSTRALIA) PTY LTD ACN 004 275 183
`Respondent/Cross-claimant
`
`KENNY J
`29 MAY 2013
`MELBOURNE
`
`1
`
`2
`
`REASONS FOR JUDGMENT
`
`INTRODUCTION
`
`In the relevant period, the applicant/cross-
`
`a Group well-known in Australia and
`commonly associated with beer and wine products. FAL commenced this proceeding by way
`of an originating application for relief for patent and design infringements against the
`s responded, in part, that the patents and designs in
`respondent/cross-claimant
`asserted that the patents and designs
`question were invalid and liable to be revoked.
`
`entitled to claim ownership of the relevant intellectual property.
`
`that that company was not
`
`In order to determine this issue ahead of the other issues raised in the proceeding, the
`Court ordered that the following questions ( the preliminary questions ) be heard prior to and
`separately from all other questions in the proceeding:
`
`(a)
`
`titled to an order under s 138 of
`Is the respondent/cross-
`the Patents Act 1990 (Cth) ( the Patents Act ) that any of:
`(i)
`Australian Innovation Patent No 2010101451;
`(ii)
`Australian Innovation Patent No 2010101452;
`(iii)
`Australian Innovation Patent No 2010101453; and
`(iv)
`Australian Innovation Patent No 2010101454,
`
`HP 1009
`Page 6 of 47
`
`

`
`- 2 -
`
`be revoked on the grounds stated in ss 138(3)(a), (d) and/or 138(3)(e) of the
`Patents Act by reason of the matters set out in paragraphs 3(iA), 3(ii)A and
`3(iii) of the Amended Substituted Defence filed on 2 August 2012 ( the
`Defence ) and 20(iA), 20(ii), 20(iii) of the Amended Substituted Cross-claim
`filed on 2 August 2012 ( the Cross-claim )?
`
`(b)
`
`93 of the Designs Act 2003 (Cth) ( the
`
`Designs Act ) that:
`(i)
`Australian Registered Design No 326865; and/or
`(ii)
`Australian Registered Design No 326895,
`be revoked on the grounds stated in ss 93(3)(b) and 93(3)(d) of the Designs
`Act by reason of the matters set out in paragraphs 6 of the Defence and 21
`and 22 of the Cross-claim?
`At the same time, the Court ordered that the preliminary questions be determined by
`reference to a Statement of Agreed Facts and Documents ( SAFD ) and on the evidence
`adduced by the parties at the hearing of the preliminary questions. The SAFD is set out in
`
`an
`
`These reasons concern the answers that the Court would give to these preliminary
`questions.
`In summary, for the reasons stated below, I would answer the separate questions:
`
`(a)
`
`(b)
`
`No; and
`
`No.
`
`THE RELEVANT PLEADINGS
`
`Regarding the Innovation Patents
`
`I discuss
`Whilst the relevant pleadings are inelegant, their purport is clear enough.
`them briefly below, in order to assist the reader to comprehend the preliminary questions.
`
`Defenc
`Substituted Cross-
`of Patents Act 1990 (Cth)
`(e) of subsection 138(3) of that Act.
`
`-
`
`138
`
`3
`
`4
`
`5
`
`6
`
`HP 1009
`Page 7 of 47
`
`

`
`7
`
`Thus, in paragraphs 3(iA), 3(ii)A and 3(iii) of the Defence and paragraphs 20(iA),
`20(ii) and 20(iii) of the Cross-
`
`- 3 -
`
`(iA)
`
`s 138(3)(a) of the Patents Act, by reason of the Applicant, as the patentee
`
`B.
`
`the grounds that:
`A.
`the Applicant is not the inventor of the inventions as described in the
`claims of the subject patents and each of them of the complete
`Specification of the said patents, within the meaning and for the
`purposes of s 15(1)(a) of the Patents Act;
`the Applicant was not, on the grant of the Patents, and each of them,
`entitled to have the said patents or any of them, assigned to it
`(Applicant); within the meaning and for the purposes of s 15(1)(b) of
`the Patents Act[;]
`the Applicant does not derive title to the invention the subject of the
`patents and each of them, from the inventor or a person mentioned in
`s 15(1)(b) of the Patents Act.
`
`C.
`
`(ii) A s 138(3)(d) of the Patents Act, by reason of the said Patents, and each of
`them, insofar as the application for same, as filed on 21 December 2010,
`purporting to claim a priority date for each of same, of 13 January 2009, that
`(FGL) of
`an application for Australian Standard Patent, being Application No
`2009900126, as lodged with the Patents Office by FGL on 13 January 2009,
`under s 29 of the Patents Act (FGL Parent Application), not being able to be
`claimed as the priority date for the said patents, and each of them, rather the
`earliest priority date able to be claimed by the patents is 21 December 2010;
`
`(iii)
`
`the application by FAL
`the Patents Act, by reason of
`s 138(3)(e) of
`(Assignment Request by FAL in respect of the FGL Parent Application) to
`the Patent Office requesting amendment of the [Register of Patents], in
`relation to the patent request filed by FGL on 13 January 2009, to record a
`change in ownership of the Patents, and each of them, from FGL to FAL,
`having been made in circumstances involving by false suggestion or
`misrepresentation.
`
`8
`
`9
`
`s refers to the particulars to
`paragraphs 18 to 20 of the Cross-claim and to paragraph 7 of its Particulars of Invalidity. For
`present purposes, it suffices to refer to the relevant parts of the Cross-claim.
`
`Paragraphs 20(iA), 20(ii) and 20(iii) of the Cross-claim allege the invalidity of the
`Patents pursuant to:
`
`(iA)
`
`s 138(3)(a) of the Patents Act, by reason that FAL is not entitled to the
`Patents, and each of them.
`
`HP 1009
`Page 8 of 47
`
`

`
`- 4 -
`
`(ii)
`
`(iii)
`
`s 138(3)(d) of the Patent Act, by reason of the said Patents, and each of them,
`not being entitled to claim a priority date for each of same of 13 January
`2009, rather the earliest priority date is 21 December 2010; and
`
`s 138(3)(e) of the Patents Act, by reason of the application by FAL to the
`Patent Office requesting amendment of the Patent Register, in relation to the
`patent request filed by FGL on 13 January 2009, to record a change in
`ownership of the Patents, and each of them, from FGL to FAL, having been
`obtained by false suggestion or misrepresentation.
`
`10
`
`11
`
`12
`
`Regarding the RegisteredDesigns
`
`In paragraph 6 of the Defence and paragraphs 21 and 22 of the Cross-
`effectively claimed to be entitled to an order under s 93 of the Designs Act on the grounds
`stated in paragraphs (b) and (d) of subsection 93(3) of that Act.
`
`21 of the Cross-
`
`[the] same are invalid and liable to be
`aded that:
`
`B.
`C.
`
`The First Registered Design is and has, at all material times, been:
`A.
`an entry wrongly made in the Register of Designs; further or
`alternatively
`an entry wrongly remaining on the Register of Designs; and
`the
`wholly invalid,
`in that as at
`the earliest priority date of
`application for registered design, as lodged with the Designs Office
`on 23 January 2009, such application being in the name of FGL,
`which party was not an entitled person within the meaning of s 5 of
`the Designs Act, as a person entitled under s 13 of the Act, to be
`entered in the Register as the registered owner of the subject design,
`and, hence is liable to be revoked pursuant to s 51 and/or s 52 of the
`Act.
`(Italics are original.)
`pleading in paragraph 22 of the Cross-claim was identical, save that it related to the
`Second Registered Design, instead of the First Registered Design.
`
`EVIDENTIARY ISSUES
`
`It is convenient to note at this point that, although annexures 3, 4 and 20 to the SAFD
`were the subject of a confidentiality order prior to the hearing of the preliminary questions,
`this order was vacated at the hearing when leave was given to substitute redacted versions of
`annexures 3 and 4. There was no redacted version of annexure 20, which simply ceased to be
`subject to the earlier confidentiality order.
`
`HP 1009
`Page 9 of 47
`
`

`
`13
`
`14
`
`15
`
`16
`
`- 5 -
`
`In support of its submissions in answer to the preliminary questions, FAL relied on
`the affidavits
`Mr Keefe made a further affidavit on 22 August 2012. There was no cross-examination of
`either deponent. Prior to the hearing, FAL sought a confidentiality order in respect of
`16 August 2012 affidavit and in respect of
`annexures MOK-3 to MOK-
`annexure OM-
`versions of MOK-3 to MOK-7, FAL did not pursue this application. Further, at the hearing,
`FAL did not pursue its application for a confidentiality order in respect of OM-2 or MOK 8
`to 11.
`
`relied on
`In support of its submissions in answer to the preliminary
`Book of Additional Documents
`documents reproduced in a folder labelled
`( RBAD ).
`der tabs 5, 6, 8 and 14-18 were
`upheld. Documents under tabs 20 and 21 were in the nature of submissions and the parties
`agreed that they should be treated as such.
`
`-Brookes sworn on 12 May 2012,
`which had been filed prior to the hearing of the preliminary questions. A further affidavit of
`Ms Beniac-Brooks sworn on 13 August 2012 (also reproduced under tab 6 of the RBAD)
`with annexures and the affidavit of Robert Charles Kelson sworn on 13 August 2012 with
`annexures (some of which were also reproduced under tab 5 of the RBAD) were the subject
`of successful objection.
`
`FACTUAL BACKGROUND
`
`In the period with which the preliminary questions are concerned, FAL and another
`FGL ), were both
`
`events with which the preliminary questions are concerned. Since these questions chiefly
`concern events in the period between the beginning of 2008 and mid-2011 ( the relevant
`period ), before
`FAL and FGL changed their names, these reasons refer to these two companies by reference
`to their former names, as denoted by the abbreviations FAL and FGL.
`
`HP 1009
`Page 10 of 47
`
`

`
`17
`
`18
`
`19
`
`20
`
`21
`
`- 6 -
`
`In the relevant period, FGL was the ultimate holding company and the head company
`
`Group, including company secretarial work, tax management, insurance and public relations.
`FGL also dealt with legal affairs and intellectual property management.
`
`Also in the relevant period, FAL was a wholly-owned subsidiary of FGL and an
`FAL was primarily responsible for
`the
`distribution and marketing of the wine and beer products (and associated marketing
`of FGL controlled the
`. FGL was able to direct FAL to
`
`activities of FAL
`enter into such transactions as FGL saw fit.
`
`s Group on a
`The majority of the people working for companies within
`FPPL ), which was another
`corporate
`
`-owned subsidiary of FGL.
`
`intellectual property
`affairs through an in-house intellectual property department ( IP Department ) headed by
`rectly to Mr Malone.
`Mr Malone. Mr Malone was assisted by Mr
`(employed by FPPL) were authorised to execute
`agreements on behalf of FAL and FGL in relation to intellectual property matters.
`
`The IP Department provided guidance to
`relation to intellectual property
`illustrative of this, providing that:
`
`up in
`are
`
`relating to the business of any company in th
`Group
`G
`Limited (
`)within the meaning of the Corporations Act 2001.
`
`You must:
`
`(c)
`
`Use your best endeavours to promote and enhance the interests, profitability,
`
`HP 1009
`Page 11 of 47
`
`

`
`(d)
`
`or may be harmful to Fost
`The IP Department was also
`Property Policy
`
`22
`
`- 7 -
`
`.
`
`stated:
`
`Intellectual property
`Group, underpinning its brands, business operations, commercial relationships and
`innovations developed within the businesses.
`
`The Policy itself
`
`management of its intellectual property
`p
`Fo
`assets to ensure that they are fully secured, controlled and utilised to best effect to
`support and promote its business objectives.
`
`management approach to its
`intellectual property assets through centralised management of registrable intellectual
`property and the provision of advisory services t
`control and use of intellectual property generally. This purpose [sic] of this policy is
`to both ensure appropriate security of intellectual property assets and to extract
`maximum value from utilisation of these assets in the competition market place.
`When appropriate, the IP Department also instructed external lawyers and attorneys in
`relation to intellectual property matters.
`
`, it was common for FAL to be the
`In the relevant period, w
`beer
`registered owner of much of the registered intellectual property relating to the
`business, although other comp
`associated with this property.
`
`Broadly speaking,
`
`each
`the evidence
`indicated that the companies within the Group generally acted with the common purpose of
`progressing the business interests of the Group as a whole.
`
`23
`
`24
`
`25
`
`HP 1009
`Page 12 of 47
`
`

`
`Service Agreement with Dot Design Pty Ltd
`
`- 8 -
`
`26
`
`27
`
`On or about 1 February 2008, Dot Design Pty Ltd ( Dot ) was given a Creative
`relating to the development of a mounting device and brand
`Activity Brief
`. The development
`display. The Brief was said to be funded by a
`work by Dot was overseen
`.
`FPPL
`contained the terms set out at [21] above. It was common ground that, pursuant to this Brief,
`the inventions and the designs which are
`officers of Dot created the intellectual property
`the subject of the innovation patents and registered designs with which this proceeding is
`primarily concerned.
`
`On 23 December 2008, FAL and Dot executed a Services Agreement
`, with a commencement date of 1 March 2008. The Services Agreement stated
`forming part
`
`of the agreement was as follows:
`
`Details
`
`Parties
`
`Supplier
`
`Services Agreement
`
`Name
`
`ABN
`
`Address
`
`Telephone
`
`Fax
`
`Attention
`
`Name
`
`ABN
`
`Address
`
`Australia Limited
`
`76 004 056 106
`
`77 Southbank Boulevard,
`Southbank, Victoria,
`Australia 3006
`
`+61 3 9633 2000
`
`+61 3 9633 2002
`
`Company Secretary
`
`DOT Design Pty Ltd
`
`70 098 839 617
`
`54 Kellett Street, Potts
`Point, NSW 2011
`
`HP 1009
`Page 13 of 47
`
`

`
`Recitals
`
`- 9 -
`
`Telephone
`
`Fax
`
`Attention:
`
`02 9361 3655
`
`02 9361 3855
`
`Emad Ayad
`
`A
`
`B
`
`C
`
`multi-
`beverage producer in Australia and
`has requested the Supplier to supply
`
`The Supplier is a service provider
`who has agreed to supply the
`
`The parties have agreed on the terms
`and conditions of this Agreement
`
`28
`
`29
`
`Date of
`Agreement
`Pursuant to clause 3.1 of the Services Agreement:
`
`See signing page
`
`the Term and the Supplier accepts such appointment.
`
`e Supplier in accordance
`
`August 2012:
`
`The Services Agreement related to the provision by Dot of the following services
`(among others):
`The Supplier shall design, manufacture and deliver the Hardware (that is,
`draught beer tapware and handles, as otherwise described in Part 6 of this
`n-premises draught beer portfolio, to
`
`Specifically, the Services that the Supplier agrees to provide are:
`
`Full design, manufacture, product testing and delivery service of the
`Hardware (one point of interaction)
`Responsibility for design and manufacture Hardware
`Design for tap handles and badges (3 tap handle concepts per brand
`
`Dot also warranted that
`and its Representatives have the requisite knowledge, skill and expertise to supply the
`
`HP 1009
`Page 14 of 47
`
`

`
`30
`
`The Services Agreement contained a number of provisions regarding the ownership of
`intellectual property, including:
`
`- 10 -
`
`11.2 Ownership
`Intellectual Property Rights in all documents, materials and inventions which are
`generated, created or acquired (excluding under licence from a third party) by the
`Relevant
`Supplier or its Representatives during the
`Intellectual Property Rights
`and absolutely for its own use and benefit in any manner it sees fit without any
`further fee payable to or consent required from the Supplier.
`
`11.3 Assignment
`As soon as the Relevant Intellectual Property Rights come into being, the Supplier
`will assign or transfer, and will make sure its Representatives assign or transfer, all
`
`do all such things necessary in order to give effect to this clause.
`Clause 28.1 of the Services Agreement contained numerous definitions,
`
`including:
`
`Affiliate means in relation to a person, any person that Controls, is Controlled by or
`is under common Control with that first mentioned person.
`
`Control has the same meaning as given to it in the Corporations Act 2001 (Cth).
`
`Intellectual Property Rights includes present and future intellectual property rights
`pertaining to Confidential Information, copyright, patents, trade or services marks,
`designs, eligible layouts and circuit layouts (whether registered or unregistered).
`
`Representatives of a party means an Affiliate or an employee, agent, officer,
`director, auditor, adviser, partner, consultant, joint venturer or sub-contractor of that
`party or an Affiliate, including but not limited to those persons listed in Schedule 6.
`Clause 28.2 further provides that:
`
`In this Agreement, unless the context otherwise requires:
`
`(d)
`
`a reference to:
`(i)
`
`The development work relating to the mounting device and badge holder the subject
`of the proceeding was completed in 2008.
`
`31
`
`32
`
`33
`
`HP 1009
`Page 15 of 47
`
`

`
`Patent and design applications made by FGL
`
`- 11 -
`
`On 13 January 2009, Allens Arthur Robinson, Patent and Trade Mark Attorneys
`,
`filed Provisional Patent Application number 2009900125 for an invention
`in the name of FGL.
`
`On 23 January 2009, Allens applied for Australian Registered Design No 326865
`
`referred to as the
`
`On 24 July 2009, the First Registered Design became registered in the name of FGL.
`On 27 July 2009, the Second Registered Design became registered in the name of FGL.
`
`filed a Standard Patent Request
`On 13 January 2010, FGL (through Allens)
`(accompanied by a Complete Specification) in respect of the invention described in the
`Provisional Application. This Standard Patent Request became Patent Application number
`n claimed a priority date of
`
`13 January 2009 based on the Provisional Application.
`
`The circumstances in which FGL, as opposed to FAL, applied for the Registered
`Designs and filed the Provisional Application and the Standard Application are described
`pr
`
`ony
`pursuit of the applications by Allens.
`Selleck of Allens to apply for the Registered Designs and to file the Provisional Application
`
`be named as the applicant for the Registered Designs or the Provisional Application.
`
`Later, b
`
`subject line of the email read
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`- 12 -
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`RegisteredDesigns, Provisional Application and the Standard Application
`
`Between mid-
`from IP Australia (via Allens) in relation to the applications for the Registered Designs and
`,
`however, notice that FGL was noted as the applicant for the Registered Designs and the
`Provisional Application until 13 January 2010 shortly after he had given his instructions to
`Mr Selleck to file the Standard Application. Late in the afternoon of 13 January 2010,
`Malone, who directed him to arrange for the
`Mr
`Registered Designs, the Provisional Application and the Standard Application to be assigned
`ck (of Allens), stating:
`to FAL. About 5 o
`
`Both technologies appear to have been applied for in the name of our corporate
`
`Australia Limited.
`
`If ever in doubt, please check which legal entity should hold the
`
`I will go over all the design and patent cases we have for Fosters and, if necessary,
`assign them over to Fosters Australia Ltd or amend the application forms.
`
`Hi Anthony,
`
`re the be
`
`Shortly thereafter
`
`two documents, one entitled
`
`the other,
`The Registrar recorded the
`these two documents were executed by FGL and FAL.
`assignment of the Registered Designs from FGL to FAL in the Register of Designs on 2
`August 2010. The Commissioner recorded the assignment of the Standard Patent Application
`from FGL to FAL on 4 August 2010.
`
`45
`
`Mr Malone deposed (and it may be accepted) that, by reason of the fact that FGL had
`legal entitlement to control and in fact controlled FAL:
`
`FGL could have directed FAL to assign all of its rights in and to the Registered
`Designs, the Provisional Application and the Parent Application to FGL at any time.
`However, while this course was open to FGL in January 2010, I elected to arrange
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`FAL applies for the innovation patents in suit
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`- 13 -
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`46
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`On 21 December 2010, FAL (through Allens)
`
`filed applications for Australia
`
`47
`
`48
`
`The Patents are divisionals of the Standard Application
`Paten
`and claim a priority through the Standard Application to the filing date of the Provisional
`Application (namely, 13 January 2009).
`
`On 20 January 2011, the First, Second and Fourth Patents were granted in the name of
`FAL. On 3 February 2011, the Third Patent was granted in the name of FAL. Each of the
`Patents has been examined and certified by the Commissioner.
`
`The March 2012 Assignment
`
`On 21 March 2012, FAL and Dot entered into a further agreement entitled
`
`may have in relation to the intellectual property the subject of the Registered Designs, the
`Parent Application and the Patents (with effect from the creation of that intellectual property).
`This is the effect of clause 2(a) and paragraph (d) of the definition of Intellectual Property
`Rights in clause 1.1 of the Assignment Deed.
`
`49
`
`Clause 2(a) of the Assignment Deed provides:
`
`The Assignor hereby assigns absolutely to the Assignee all of its rights, title and
`interest, both legal and beneficial, in the Intellectual Property Rights, with effect
`from the date on which those Intellectual Property Rights came into being.
`The definition of Intellectual Property Rights in clause 1.1 of the Assignment Deed states,
`
`Assignor or its Representatives during the performance of the Services, including:
`
`(d)
`
`all intellectual property rights in relation to and subsisting in:
`
`(i)
`(ii)
`(iii)
`(iv)
`(v)
`(vi)
`(vii)
`
`Australian Innovation Patent N
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`Services Agreement between FAL and Dot: see clause 1.1 of the Assignment Deed.
`
`LEGISLATION - PATENTS
`
`Section 29(1) of the Patents Act identifies who may apply for a patent, as follows:
`
`A person may apply for a patent for an invention by filing, in accordance with the
`regulations, a patent request and such other documents as are prescribed.
`Section 15(1) of the Patents Act governs who may be granted a patent. It provides:
`
`(c)
`
`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
`derives title to the invention from the inventor or a person mentioned in
`paragraph (b); or
`is the legal representative of a deceased person mentioned in paragraph (a),
`(b) or (c).
`Section 138 of the Patents Act concerns applications for the revocation of a patent. It
`relevantly states:
`
`(d)
`
`(1)
`
`(3)
`
`Subject to subsection (1A), the Minister or any other person may apply to a
`prescribed court for an order revoking a patent.
`
`After hearing the application, the court may, by order, revoke the patent,
`either wholly or so far as it relates to a claim, on one or more of the following
`grounds, but on no other ground:
`(a)
`that the patentee is not entitled to the patent;
`
`(d)
`
`(e)
`
`the patent was obtained by fraud,
`that
`misrepresentation;
`that an amendment of the patent request or the complete specification
`was made
`or
`obtained
`by
`fraud,
`false
`suggestion
`or
`misrepresentation;
`
`false suggestion or
`
`LEGISLATION - DESIGNS
`
`Section 21(1) of the Designs Act concerns who may make a design application.
`Section 21(1) states:
`
`A person may file an application (a design application) in respect of a design.
`Section 13 (1) of the Designs Act states who may be registered as the registered
`proprietor of a design.
`It states:
`
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`- 15 -
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`A person mentioned in any of the following paragraphs is entitled to be entered on
`the Register as the registered owner of a design that has not yet been registered:
`(a)
`the person who created the design (the designer);
`(b)
`if the designer created the design in the course of employment, or
`the other person, unless the
`under a contract, with another person
`designer and the other person have agreed to the contrary;
`a person who derives title to the design from a person mentioned in
`paragraph (a) or (b), or by devolution by will or by operation of law;
`a person who would, on registration of the design, be entiled to have
`the exclusive rights in the design assigned to the person;
`the legal personal representative of a deceased person mentioned in
`paragraph (a), (b), (c) or (d).
`Section 93 of the Designs Act relates to applications for revocation of the registration
`of a design.
`It relevantly provides:
`
`(c)
`
`(d)
`
`(e)
`
`55
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`56
`
`57
`
`(1)
`
`A person may apply to a prescribed court for an order revoking the
`registration of a design.
`
`(3)
`
`The grounds on which a court may revoke the registration of the design are:
`
`(b)
`
`(d)
`
`that one or more of the original registered owners was not an entitled
`person in relation to the design when the design was first registered;
`or
`
`the registration of the design was obtained by fraud, false
`that
`suggestion or misre
`
`(4)
`
`In this section:
`original registered owner, in relation to a design, means each person entered
`in the Register as the registered owner at the time the design was first
`registered.
`
`regarding the Patents
`
`submitted that the Provisional Application and the Standard Application were
`
`obtaining an assignment from [Dot] which it never obtained
`under s 15(1) of the Patents Act.
`
`could not become an
`
`[T]hat FAL did not get any rights to make the divisional
`
`innovation patent
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`applications from FGL under the 2010 Deed. That is because FGL could not have
`applied for and obtained the grant of any patent under section 15 of the Patents Act.
`Eligible person for a grant is defined as someone who qualifies under section 15;
`FGL never qualified for any of the patents.
`
`the patent
`including the rights to make further applications arising out of
`applications. FGL had no such rights for divisional applications based on the
`standard patent application. So FAL could not, by virtue of the deed, obtain any
`rights to make applications for the innovation patents with, or without, the earlier
`priority. Any rights it obtained were otherwise presumably under the services
`agreement.
`
`effectively submitted that, for this reason
`divisional application or to claim priority from earlier
`misconceived.
`
`:
`
`could never have derived title to the invention of the Standard Complete
`
`and
`
`the Standard Complete Application
`for
`the status and rights of an applicant
`2010200211, or of an applicant for any divisional Innovation Patents based on the
`Standard Complete Application 201020021, let alone with the priority dates of the
`Standard Co
`
`Cons
`of the four Innovation Patents .
`
`FAL was never entitled to apply for or obtain the grants
`
`Referring to Stack v Brisbane City Council
`[38], 536 [52] and H Bion Inc v Commissioner of Patents
`that registration of the purported assignment could not create rights that did not otherwise
`exist.
`
`534 [36]-
`
`Stack
`
`the Patent Application
`ineffectiveness of
`Assignment was further evidenced by its inconsistency with the Assignment Deed entered
`s relied on this
`into at a later date between Dot and FAL.
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`- 17 -
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`importance of the interests in maintaining the integrity of the
`Register of Patents, referring to Purex Corporation Limited v Vanguard Trading Company
`(1965) 112 CLR 532, 533-534 (Kitto J); The Queen v Commissioner of Patents; ex parte
`Martin (1953) 89 CLR 381, 407-408; Stack, 534 [38] (Cooper J); and Martin and the Miles
`Martin Pen Coy Ltd v Scrib Ltd (1950) 67 RPC 127, 133.
`
`benefit of the existing Standard Patent A