Federal Court Declares Eligible Co-Owners of Patent Applications
📌 In brief
The Federal Court declared certain individuals as eligible co-owners of specific patent applications based on their involvement in the inventive process and their relationship to the patent application.
⚖️ Legal holding
An eligible person for patent ownership is determined by their involvement in the inventive process and their relationship to the patent application.
📖 What the law says
A pessoa que pode ser concedida uma patente deve ser o inventor, ou ter direito à atribuição da patente, ou derivar o título da invenção do inventor ou de quem tem direito à atribuição, ou ser o representante legal de um falecido mencionado nas condições anteriores.
Plain-English explanation — does not replace advice from a legal practitioner.
📖 Technical summary
The court declared that certain individuals are eligible co-owners of specific patent applications.
📜 Headnote Official document
The court declared that certain individuals are the sole eligible persons within the meaning of the Patents Act 1990 (Cth) and are entitled to registration as co-owners in equal shares of specific patent applications based on their involvement in the inventive process and their relationship to the patent application.
📚 Full judgment Official document
FEDERAL [COMPANY] v [COMPANY] (No 3) [2008] FCAFC 198
INTELLECTUAL PROPERTY consideration of evidentiary bases justifying a declaration of right in favour of eligible persons who are co-owners in equal shares of a patent Patents Act (199) (Cth), s 15 [NAME] v [COMPANY] (1955) AC 534 [COMPANY] (ACN [PHONE]), [NAME] and [COMPANY] (ACN [PHONE]) v [COMPANY] (ACN [PHONE]), [COMPANY] (ACN [PHONE]), [NAME] and [COMPANY] (ACN [PHONE])
QUD 321 of 2006
[NAME] JJ
24 DECEMBER 2008
BRISBANE
IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY QUD 321 of 2006
ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA
BETWEEN: [COMPANY] (ACN [PHONE])
First Appellant/First Defendant
[NAME] Appellant/Second Defendant
[NAME] Appellant/Third Defendant
[COMPANY] (ACN [PHONE])
Fourth Appellant/Fourth Defendant
AND: [COMPANY] (ACN [PHONE])
First Respondent/First [COMPANY] (ACN [PHONE])
Second Respondent/Second Plaintiff
[NAME] Respondent/Third Plaintiff/First [COMPANY] (ACN [PHONE])
Fourth Respondent/Fourth Plaintiff/Second Cross-Appellant
JUDGES: [NAME] JJ
DATE OF ORDER: 24 DECEMBER 2008
WHERE MADE: BRISBANE
THE COURT DECLARES THAT:
1. [COMPANY] on the one hand, and [COMPANY] and [NAME] on the other, are the sole eligible persons within the meaning of the Patents Act 1990 (Cth) and are entitled to registration as co-owners in equal shares of Patent Application No 2002950316 dated 22 July 2002 (and any Complete Application lodged in reliance on that provisional application) and International Patent Application No PCT/AU03/00930 dated 22 July 2003 (and any national phase application which may proceed from that International Patent Application).
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using eSearch on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY QUD 321 of 2006
BETWEEN: [COMPANY] (ACN [PHONE])
First Appellant/First Defendant
[NAME] Appellant/Second Defendant
[NAME] Appellant/Third Defendant
[COMPANY] (ACN [PHONE])
Fourth Appellant/Fourth Defendant
AND: [COMPANY] (ACN [PHONE])
First Respondent/First [COMPANY] (ACN [PHONE])
Second Respondent/Second Plaintiff
Fourth Respondent/Fourth Plaintiff/Second Cross-Appellant
JUDGES: [NAME] JJ
DATE: 24 DECEMBER 2008
PLACE: BRISBANE
REASONS FOR
JUDGMENT 1 In our reasons for decision in [NAME] v [NAME] (No 2) [2008] FCAFC 168 we refused to make either of the alternate declarations sought by the [NAME] and [NAME] interests respectively as to the identity of the persons entitled to the grant of the patent for the purposes of s 15 of the Patents Act 1990 (Cth). The actual identities of the eligible persons were not the subject of conclusive findings by the primary judge. 2 In paragraph 7 of our reasons we indicated that if the parties could provide us with satisfactory evidentiary bases which could appropriately justify a declaration in favour of the persons who are now said respectively to be the [NAME]' eligible person(s) and the [NAME] interests' eligible person(s), we would be minded to make a declaration in relation to that matter. Leave was given to the parties to put on further evidence and to make supporting submissions. In relation to the [NAME], the affidavits of the second appellant, [NAME], and of a [NAME] clarify the position insofar as the appellants are concerned. 3 Whatever interests in the patent that [NAME] and [NAME] may have had in the patent applications were assigned to [COMPANY] in July of 2002 under a Deed of Assignment. While the [NAME] have not put on any evidence discounting the possibility that [COMPANY] was an eligible person, there is evidence in the principal proceeding that [NAME] were at all relevant times the Directors and shareholders of [COMPANY] as well as being the Directors and shareholders of [NAME]. Further, the July 2002 Deed of Assignment recites that the inventors were [NAME] and [NAME]. [NAME] was not an employee or otherwise engaged by either [NAME] or [COMPANY]. In these circumstances it is appropriate to infer that [COMPANY] asserts no interest in the patents as an eligible person. 4 In relation to the [NAME] interests the evidence that has been put on by [NAME] establishes clearly that [NAME] was an employee of [COMPANY] (the third respondent) and that [NAME] was a Director of that company. [NAME]'s evidence is that he employed [NAME] to design and construct a sophisticated sterilising unit which was portable. [NAME] also assisted in the design of the PSU. [NAME]'s evidence is to like effect. Insofar as [NAME]'s participation in the process was concerned, it is clear that Peachester is the relevant eligible person, [NAME] having been employed by it for this very purpose: see [NAME] v [COMPANY] (1955) AC 534; and see also Patents Act, s 15(1)(b). Additionally, there is no evidence before us that [NAME] claims, or that his contract of employment provides, an entitlement to retain any intellectual property rights to any invention to which he contributed in his employment. [NAME]'s evidence is not altogether clear in relation to the capacity in which he acted when making his own contribution to the design of the PSU, the respondents have accepted in their submissions that he acted in a personal capacity. On the material that is before us we are prepared to accept that such was the case. Accordingly we are satisfied that there is an appropriate evidentiary foundation for the making of a declaration in the matter. 5 That declaration will be that [COMPANY] on the one hand, and [COMPANY] and [NAME] on the other, are the sole eligible persons within the meaning of the Patents Act 1990 (Cth) and are entitled to registration as co-owners in equal shares of Patent Application No 2002950316 dated 22 July 2002 (and any Complete Application lodged in reliance on that provisional application) and International Patent Application No PCT/AU03/00930 dated 22 July 2003 (and any national phase application which may proceed from that International Patent Application). I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the [NAME]. Associate: Dated: 24 December 2008 Counsel for the Appellants: [redacted] Solicitor for the Appellants: [redacted] Counsel for the Respondents: [redacted] Solicitor for the Respondents: [redacted] Date of Judgment: 24 December 2008
⚖️ What tends to weigh in cases like this
✅ Tends to be accepted
- The court was satisfied that there was an appropriate evidentiary foundation for making a declaration that the identified parties are the sole eligible persons and entitled to registration as co-owners in equal shares of the patent applications.
- The court accepted that the July 2002 Deed of Assignment assigned any interests of the appellants in the patent applications to the first appellant, and that the first appellant asserted no interest as an eligible person, based on the evidence that the appellants were directors and shareholders of both companies and the deed recited the inventors.
- The court accepted that the third respondent was an employee of the first respondent and was employed to design and construct the sterilising unit, making the first respondent the relevant eligible person under s 15(1)(b) of the Patents Act 1990 (Cth), and that the second respondent acted in a personal capacity in contributing to the design, as accepted by the respondents.
Patterns observed in similar cases in this collection — every case is unique.
❓ Frequently asked questions
What did this decision decide?
The court declared certain individuals as eligible co-owners of specific patent applications.
What was the dispute about?
The dispute was about determining who among several individuals was eligible to be co-owners of specific patent applications.
How did the court decide, and why?
The court decided based on the individuals' involvement in the inventive process and their relationship to the patent application.
Which laws or rules were applied?
The Patents Act 1990 (Cth) s 15 was applied.
What was the argument that mattered most?
The argument that mattered most was the involvement of the individuals in the inventive process and their relationship to the patent application.
Was the decision for or against the person who brought the case?
The decision was for the person who brought the case.
What does this mean for someone in a similar situation?
For someone in a similar situation, the decision means that eligibility for patent ownership is determined by involvement in the inventive process and relationship to the patent application.
What evidence or documents mattered?
The evidence and documents that mattered included the involvement of the individuals in the inventive process and their relationship to the patent application.