As at date of grant, FAL was entitled to the invention
89 As already noted, s 15(1) of the Patents Act would permit a grant of patent to the inventor (s 15(1)(a)) or a person who would be entitled to an assignment of the patent on grant (s 15(1)(b)) or to a person deriving title from either of these persons (s 15(1)(c)). (Here, FAL could satisfy s 15(1)(c) (or s 15(1)(b))): see clause 11.3 of the Services Agreement, set out at [30] above). It may reasonably be inferred that, prior to 13 January 2010, Mr O'Keefe either failed to turn his mind to the question, whether, within the Foster's Group, either FGL or FAL should be named as the person to whom the grant of the Patents was to be made; or, alternatively, whether he had properly instructed Allens as to the proper person to whom the Patents were to be granted. Once Mr O'Keefe identified that FAL was the entity to whom the grant should be made, what was he to do?
90 Section 104(1) of the Patents Act contemplates amendments to patent requests and other relevant documents "for any purpose", including for "clerical error or an obvious mistake". As Cash's said, this was not a case that clearly fell into the latter category. In any event, one can infer that there was a legitimate concern to preserve priority date benefits for the Foster's Group. In this circumstance, Mr O'Keefe's instructions to Mr Selleck of Allens to prepare a deed of assignment of rights from FGL to FAL were reasonable.
91 The first question is: what was assigned by the Patent Applications Assignment? The second question is: was the assignment effective?
92 Under clause 1.1 of the Patent Applications Assignment, FGL assigned to FAL:
… all its right, title and interest in and to the Patent Applications and any applications for patents, patents granted thereon or other intellectual property rights arising therefrom including, without limitation, the right to claim a priority date from any of the Patent Applications, the right to sue for any infringement occurring prior to the date of this Agreement and the right to recover damages for that infringement.
The purport of clause 1.1 was clear enough. By clause 1.1, FGL intended to assign to FAL all its interest in the Provisional Application and the Standard Application. Clause 1.1 would accomplish FGL's purpose providing FGL had an interest in the Provisional Application and the Standard Application that was capable of assignment.
93 On one view, FGL's interest in the Provisional Application and the Standard Application was clear. Since FGL had made both applications in conformity with s 29(1) of the Patents Act, then, providing the Patents Act contemplated that the right to apply for a patent was assignable, it was competent for FGL to assign its interest in its rights to the Provisional Application and the Standard Application to FAL.
94 As FAL said, the Patents Act apparently contemplates that the benefit of an invention and the right to apply for a patent in respect of it are capable of assignment. Speaking of the 1952 Act, Emmett J held, in Speedy Gantry, that the benefit of an invention and the right to apply for a patent in respect of it were assignable. This much appears from the following passages in Speedy Gantry at 552-553 and 556. At 552-553, his Honour observed that:
It has been suggested that the right to apply for a patent may be a chose in action which is capable of assignment in equity for consideration and at law subject to compliance with certain statutory requirements. …
Section 34(1)(b) of the 1952 Act clearly contemplated the possibility of the assignment of rights relating to the grant of a patent prior to the making of any application for such a grant … However, the nature of the subject matter of such an assignment and the formalities, if any required for such an assignment are by no means clear …
Section 34(1)(b) clearly contemplates that there is something which is capable of assignment. It may be that the subject matter of any assignment contemplated by s 34(1)(b) is nothing more than the right to have a patent granted in respect of an invention. In so far as patents are the creatures of statute, rights in relation to patents, and inchoate rights in relation to inventions which might be the subject of a patent, must depend upon the statute under which their existence is recognised. If the statute treats an invention, or the right to apply for a patent, as something which is capable of assignment, it will be necessary to recognise any juridical act or conduct which might effect such an assignment.
…
If Speedy Gantry were able to demonstrate an agreement between it and Mr Nielsen for the assignment of the invention, or the right to apply for a patent in respect of the invention, being an assignment supported by consideration, that may be sufficient to constitute an assignment in equity. Such an agreement could be written or oral, or might be implied from the conduct of the parties. Nevertheless there must be something which is capable of constituting such an agreement.
95 At 556, his Honour concluded that:
Mr Neilsen's conduct in causing the application to be lodged in the name of Speedy Gantry, coupled with his signing of the declaration, is consistent only with assignment to Speedy Gantry of the invention and the right to apply for a patent in respect of it. The declaration cannot of itself be an act or conduct effecting assignment because it was brought into existence after the lodging of the application. However, it confirms Mr Neilsen's intention that Speedy Gantry was his assignee in respect of the invention.
I consider that, having regard to the intention of Messrs Nielsen and Richards that the company of which they were the only directors and shareholders should be the applicant for a patent, Mr Nielsen's conduct, in causing the application to be made in the name of Speedy Gantry, amounted to the assignment to Speedy Gantry of his invention and of the right to apply for a patent in respect of it. In any event, I am certainly not persuaded, on the balance of probability, that Speedy Gantry was not "the assignee of the actual inventor" within the meaning of s 34(1)(b). …
As his Honour indicated, an assignment of the benefit of an invention and the right to apply for a patent in respect of it might be accomplished expressly (in writing or orally) or might be implied from the conduct of the parties.
96 Emmett J's analysis (to the extent set out above) was apparently accepted on the appeal: see Preston Erection Pty Ltd & Anor v Speedy Gantry Hire Pty Ltd (1998) 43 IPR 74 at 82 (Wilcox, Heerey and Lindgren JJ).
97 Of course, as already noted, in Speedy Gantry, Emmett J was concerned with the 1952 Act. The terms of s 34(1)(b) of that Act find no direct equivalent in the Patents Act with which this case is concerned. Section 113 of the Patents Act may justify the proposition that the benefit of an invention is assignable before grant; it is less clear that it supports the proposition that the right to apply for a patent in respect of that invention may be assigned at this time. Any doubts on this account are, however, diminished by the subsequent comments of Emmett J with respect to s 15 of the Patents Act, as it currently stands. Thus, in University of British Columbia & Anor v Conor Medsystems, Inc (2006) 155 FCR 391 ('UBC v Conor Medsystems') at 400-401 [37]-[39], Emmett J explained:
Section 15 specifies no formalities as being necessary for an applicant to be effectively the assignee of the invention from the inventor. Further, s 15 specifies no formalities as being necessary for the derivation of title to an invention from an inventor or from a person who, on the grant of a patent, would be entitled to have the patent assigned. While an assignment in writing might be preferable, in order to avoid difficulties of proof, an assignment might be effected orally or may even be implied from the conduct of the parties (see Speedy Gantry at 550).
There may be doubt as to whether an invention is itself a species of property. However, whether it is properly to be characterised as property or not is irrelevant. Section 15(1)(b) clearly contemplates the possibility of some juridical act relating to the grant of a patent prior to the grant, which has the consequence that, upon grant, a person would be entitled to an assignment of the patent. Section 15(1) also assumes that, under the general law, a person may demonstrate title to an invention and that that title is capable of disposition or alienation by the inventor to another person, such that that other person can be said to derive title to the invention from the inventor. That suggests that an invention is to be regarded as a form of property capable of assignment, alienation or disposition.
Thus, s 15(1)(c) clearly contemplates that there is something that is capable of assignment, disposition or alienation by the inventor, such that another person has title to it. It may be that the subject matter of such an assignment, alienation or disposition, as contemplated by s 15(1)(c), is nothing more than the right to have a patent granted in respect of an invention. Patents are the creature of statute, and rights in relation to patents, and inchoate rights in relation to inventions that might be the subject of a patent, must depend upon the statute under which their existence is recognised. If the statute treats an invention, or the right to apply for a patent in respect of the invention, as something that is capable of assignment, alienation or disposition, it is necessary to recognise any juridical act or conduct that might give effect to such an assignment, disposition or alienation.
See also UBC v Conor Medsystems at 412 [101] (Bennett J).
98 There is, however, a difficulty in FAL's reliance on Speedy Gantry and UBC v Conor Medsystems, because each of these authorities apparently assumes that the assignor would have some "right to the benefit of the invention", in the sense that the assignor would have a right to have a patent granted in respect of an invention. Neither dealt with the circumstances that arguably arises here, where the assignor would have no right to have a patent granted in respect of an invention. As already noted, a patent may only be granted under s 15(1) of the Patents Act to a person who is the inventor, or would be entitled to an assignment of the patent on grant, or derives title from either of these persons (or, if any of the above are deceased, is their legal representative).
99 For present purposes, it may be assumed that FGL fell into none of these categories; and in consequence the question arise as to whether, under the Patents Act, FGL had any interest in the Provisional Application and the Standard Application that was capable of assignment.
100 There are at least four factors that persuade me that FGL had an interest in these applications that was capable of assignment. First, there is the difference, as already noted, between, the 1952 Act and the Patents Act in its current form. As already noted, in contrast to the 1952 Act, a person may make a valid application for a patent even though not eligible for the grant of the patent for which application has been made. Secondly, s 29(1) clearly permitted FGL to apply for the grant of a patent (as it in fact did) "by filing, in accordance with the regulations, a patent request and such other documents as are prescribed". Thirdly, under the Patents Act, the priority date is referrable to the date of application under s 29(1). Fourthly, if a person (such as FGL) were unable to assign its interest in a patent application because of its ultimate lack of entitlement to the grant of patent, then this would substantially destroy the practical benefit afforded by the amendments to the Patents Act, which made it unnecessary to have an entitlement to a grant of patent in order to make an application. In order for the statutory scheme to operate in a fair and reasonable fashion and to avoid robbing the amendment of its apparent effect, it must be open to an applicant under s 29(1), who is unable to receive the grant under s 15, to assign the interest acquired by virtue of making the application to a person who can receive the grant. It is for this reason that I consider the statement by Dufty and Lahore in Patents, Trade Marks & Related Rights at [8045], upon which Cash's relied to be unduly broad. Ultimately, as FAL submitted:
The conduct of FGL in relation to the Provisional Application and the Standard Application and the conduct of FAL in relation to the Patents conforms with the scheme created by ss 29(1) and 15(1) of the Patents Act.
101 Accordingly, I would conclude that it was open to FGL to assign its interest in the Provisional Application and the Standard Application to FAL as in fact it did under the Patent Applications Assignment. As at the date of grant, FAL was, therefore, eligible to the grant of the Patents under s 15(1) of the Patents Act. This was because, before any patent was granted to FGL and whilst the application for the Patents was still pending, FGL assigned all its rights in the Provisional Application and the Standard Application to FAL pursuant to the Patent Applications Assignment; and because, by virtue of clause 11.3 of the Services Agreement, FAL had a right to receive the grant by virtue of s 15(1)(c), alternatively s 15(1)(b). FAL was thus entitled to claim the priority date of the Provisional Application based on the assignment of the Provisional Application and the Standard Application from FGL.
102 This conclusion is not, in my view, undermined by the Assignment Deed of 21 March 2012, pursuant to which Dot assigned to FAL any residual rights it may have in relation to the intellectual property, including the Patent Application and the Patents. Cash's inconsistency point is rejected. The Deed, which had been contemplated by clause 11.3 of the Services Agreement, did not more than ensure that, if any intellectual property had not been assigned earlier, then it was assigned under the Assignment Deed. The Deed is not to be read as an admission that there had been a prior relevant failure: compare Sigma v Wyeth at 608 [589] (Jagot J) and, on appeal, Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132 at [270]-[291] (Yates J).
103 As already stated, it is for Cash's to make out its claimed grounds of revocation under s 138(3)(a), (d) and (e) of the Patents Act: see Sigma v Wyeth at 608 [588]-[589] (Jagot J) and, on appeal, Sigma Pharmaceuticals (Australia) Pty Ltd v Wyeth [2011] FCAFC 132 at [279] (Yates J, with whom Bennett J and Nicholas J agreed on this point (at [125]-126]; [133])); JMVB Enterprises at 81 [21] (Emmett, Stone and Bennett JJ); Speedy Gantry Hire Pty Ltd v Preston Erection Pty & Anor (1998) 40 IPR 543 ('Speedy Gantry') at 549 (Emmett J).
104 For the reasons stated, I would reject Cash's assertion that FAL was not entitled to the Patents and that, accordingly, the Court should revoke the Patents on the ground set out in s 138(3)(a) of the Patents Act.
105 Having arrived at this conclusion, it is unnecessary to consider the alternative submissions that FAL advanced, with respect to FAL's entitlement to the Patents.