GS Technology Pty Ltd v Elster Metering Pty Ltd

1. George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of a patent in consequence of the filing of the provisional specification PK2036.
2. George Stack is not, and was not at any material time, entitled under s 15 of the Patents Act 1990 (Cth) to a grant to him of a standard patent in consequence of the filing of application 85236/91.
3. George Stack was not entitled under s 15 of the Patents Act 1990 (Cth) to the grant to him of Australian Petty Patent Number 645740.
4. GST Technology Pty Ltd was not entitled under s 15 of the Patents Act 1990 (Cth) to a grant to it of Australian Petty Patent Number 645740.
5. GS Technology Pty Ltd is not entitled to Australian Petty Patent Number 645740 within the meaning of s 138(3)(a) of the Patents Act 1990 (Cth). … 24 It is to be noted that no order or declaration was made by Cooper J on 15 September 1999 that directly affected PP2, the second petty patent, being another divisional of Application No 85236/91. 25 His Honour also declared that the invention claimed in PP1 was a patentable invention within the meaning of s 18 of the Old Act, and that the specification of that patent complied with the requirements of sections 40(2) and 40(3) of the Old Act. 26 The first respondent and the second respondent contend, and it is not disputed by the applicant, that PP1 and PP2 were divisionals of Application No 85236/91. 27 Section 39 of the Old Act made provision for divisional applications. Section 39 relevantly provided: 39 Divisional applications (1) Where a complete patent application is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention: (a) disclosed in the specification filed in respect of the first-mentioned application; and (b) where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification. (2) A patentee of a petty patent may, in accordance with the regulations, make a further complete application for a petty patent or a standard patent in respect of an invention disclosed in the complete specification filed in respect of the application on which the first-mentioned petty patent was sealed. … 28 Importantly, a divisional application could be made only by an applicant entitled to the parent patent. It was for this reason that Cooper J found that the entitlement of Stack to the parent patent was determinative of his entitlement to the divisional. 29 The respondents contend that there was a finding of lack of entitlement to PP1 in George Stack because Mr Stack was not, at any material time, entitled under s 15 of the Old Act to the grant to him of a patent in consequence of the filing of the provisional specification PK2036 and because Mr Stack was not, at any material time, entitled under s 15 of the Old Act to grant to him a standard patent in consequence of the filing of Application No 85236/91. In the light of those findings, it is contended that the applicant is estopped from asserting an entitlement to PP2, a further divisional of 85236/91. 30 Cooper J in his First Set of Reasons found: 75 It follows, in my view, that Stack was not entitled under s 15(1) of the Act to the grant of a patent for the invention claimed in PK2036. The consequence is that he was not entitled, nor were he and Grieves jointly entitled, to make any divisional application and to have granted a patent, including the petty patent, on the basis of an entitlement to Stack or Stack and Grieves under s 15(1) of the Act. 76 As the entitlement of GST to the petty patent is sourced solely in the assignment from Stack which entitled it to registration in the Register of patents, it follows that GST as the patentee is not entitled to the patent within the meaning of s 138(3)(a) of the Act. Nor was Stack, as patentee, entitled to be granted the petty patent within the meaning of s 28(1) of the Act. 31 An appeal to the Full Court of the Federal Court from Cooper J's decision was dismissed: [2001] FCA 501; 51 IPR 513. Cooper J, at [44]-[45] of his Honour's First Set of Reasons, and the Full Federal Court on appeal at [31] held that "patentee" in s 28(1)(a) means the original patentee. 32 Cooper J and the Full Court of the Federal Court also held that the subject matter of s 138(3)(a) (revocation of a patent on the ground that the patentee is not entitled to the patent) is the entitlement of the original grantee: see Cooper J in his Honour's First Set of Reasons at [51]-[53] and the Full Court at [34]. 33 In this proceeding, the patentee, at the time of revocation proceedings, is a later registered assignee of the patent. The question of entitlement remains to be determined by reference to the eligibility of the original grantee under s 15, because the subsequent holder of title to a patent stands in the shoes of the person from whom the title is acquired. As Cooper J noted at [52] of his Honour's First Set of Reasons, an assignee can obtain no better entitlement to the patent than the original grantee. 34 Cooper J said at [52]: … An original grantee who was not entitled to a grant under s 15 of the Act cannot make good an improper grant by assigning the patent to another person. Therefore although assignment or devolution by law of the patent prior to revocation carries an entitlement to registration as the proprietor of the patent, registration does not cure a defect in the title which renders it liable to revocation because it should never have been granted originally. 35 The question of entitlement for the purpose of a notice under s 28 for extension proceedings under s 69 and revocation proceedings under s 138 ultimately involve the question of the eligibility of Mr Stack under s 15 to the grant of PP2. 36 On 21 October 1999, Stack and GSA filed a Notice of Motion seeking in effect to adduce further evidence and to reopen the issue of the applicant's entitlement to PP1. That evidence included a Deed dated 22 October 1996, which is a document referred to in the proposed Amended Statement of Claim in the present proceeding. 37 The applicants sought to have Alan Joseph Grieves made a respondent to the proceedings and to have the Court order the amendment of the patent, or patent request, under s 105 of the Old Act. 38 On 10 May 2000, Cooper J revoked Petty Patent No 655740 and dismissed the Notice of Motion insofar as it sought to reopen the issue of the two applicants' entitlement to Petty Patent No 645740. In his Honour's reasons for dismissing the Notice of Motion, ([2000] FCA 598 (the Second Set of Reasons)), Cooper J said at [19]-[24]): 19 What Stack and GST seek to do is to set aside declarations which, although not yet entered, have taken effect as and from the date of their making as orders of the Court: O 35 r 3. They also seek to set aside on the entitlement issue all findings of fact made on that issue, to re-open their case to tender the evidence on the entitlement issue, which was previously struck out, and to call additional evidence which, on its face, was available at the time of the trial. This they seek to do to overcome matters determined adversely to them in a trial which has concluded and after judgment has been given. In my view, no demonstrable basis for the making of such an order has been made out, or is even attempted to be made out, on the material filed in support of the notice of motion. 20 The decision not to call Grieves and Stack to give evidence, I have no doubt, was a tactical decision taken on the trial of the issues. Stack was present for most, if not all, of the trial. There is no reasonable basis to suggest that Stack and GST and their legal adviser did not understand what was being done and the consequences of not producing the witnesses for cross-examination. This is not an application to re-open before judgment, where the taking of such a decision may not carry so much weight against allowing re-opening: Urban Transport Authority of NSW v Nweiser (1991) 28 NSWLR 471 (CA) at 475-6, 478-479. See also Hindmarsh Medical Clinic v Hindmarsh Family Practice Pty Ltd (1997) 38 IPR 616. 21 In the present case there is no attempt to explain why the evidence now relied upon was not left to the Court on the trial of the issue. Further, Stack and GST seek to retain the benefit of the declarations of validity in declarations 6 and 7 by contending that those issues were found in their favour, and that, having regard to my findings on them, Grieves and Stack would not be subject to cross-examination on those issues. To take such a position smacks of the earlier conduct being a deliberate attempt to deny the cross-claimants an opportunity to cross-examine the inventors on the invalidity issues, and to now seek to retain the benefit of having taken such a course without accepting the consequences which flowed in terms of the entitlement issue. 22 All respondents to the notice of motion oppose all of the relief sought including setting aside declarations 1 to 5 inclusive and permitting Stack and GST to re-open their case. DS and DSQ also submit that if declarations 1 to 5 are set aside, then declarations 6 and 7 should also be set aside so that they too could re-open their case on all issues. 23 The cross-claimants have been forced to conduct the case on the issues tried without the benefit of cross-examining Grieves and Stack as the inventors. Whether or not cross-examination would have assisted them on the other issues is a moot point. However, to set aside all declarations and all findings would involve a substantial waste of time and costs. The parties litigated the issues to judgment on the basis of the evidence before the Court the content of which, was in no small way, determined by the way in which GST and Stack conducted their case at trial. Even assuming that GST and Stack are in a position to pay the costs thrown away if all of the declarations are set aside, and leave is given to all parties to re-open their cases, there is no offer to pay such costs, whether they be with respect to all issues or limited to the issues which arose on the entitlement of Stack and through him GST, to the grant of the petty patent. 24 There must be finality to litigation, unless some good reason is shown to the contrary. In my view, no such reason has been shown. Nor am I persuaded on the material produced in support of the notice of motion that to re-open the trial would necessarily lead to any different result, so far as the entitlement of Stack or GST to the grant of the petty patent is concerned. I decline to set aside any of the declarations made on 15 September 1999. (Emphasis added). 39 The judgment of the Full Federal Court of 4 May 2001 dismissed both appeals from the decisions of Cooper J dated 15 September 1999 and 10 May 2000. The Court noted at [49]: 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. 40 The High Court refused an application for special leave by Stack and GST on 26 June 2002. 41 On 30 March 2004, Cooper J made final orders in his Honour's Third Set of Reasons. His Honour dismissed proceeding QG 28 of 1994, save for some paragraphs of the Further Amended and Consolidated Statement of Claim filed on 6 October 1997, which relate to claims concerning copyright, breach of confidence, and breach of contract. All claims relating to Petty Patent No 645740 and Petty Patent No 662284 were dismissed. His Honour further dismissed proceeding QG 21 of 1996 and entered judgment for the State of Queensland in respect of claims relating to Petty Patents Nos 645740 and 662284. 42 In his Honour's Third Set of Reasons of 30 March 2004, Cooper J said at [35]: I am satisfied that each of the necessary elements to establish an issue estoppel binding against Stack and GST with respect to the entitlement of Stack and GST under s 15 of the Patents Act to obtain the grant of a patent in respect of the "water meter assemblies" invention has been made out. This means that Stack and GST cannot make out the necessary entitlement to the grant of Petty Patent 662284. To allow the proceedings to proceed in respect of the Issues relating to Petty Patent 662284 in the face of ultimate failure would amount to an abuse of process. The proceedings against the BCC for infringement and against the State of Queensland for relief under s 165 of the Patents Act will be dismissed pursuant to O 20 r 2 of the Federal Court Rules. However, neither the BCC nor the State of Queensland sought a revocation of Petty Patent 662284 in substantive proceedings by cross-claim. Accordingly they are not entitled to such relief in a summary manner on these notices of motion. 43 That judgment has not been appealed. 44 Stack and GST made a further application to the High Court for special leave to appeal from the judgment and order of the Full Court of the Federal Court of 4 May 2001, which application was refused on 23 June 2005. ([2005] HCATrans 445). 45 In arguments by the applicant in relation to issue estoppel, focus was given, in large measure, in the provisions of s 15(1)(a)(b)(c) and (d) of the Old Act, which provided:
6. Who may be granted a patent? (1) 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 (c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or (d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c). 46 The Full Court said at [13]: Clearly, s 15 contemplates the grant of a patent only to a person who falls into one of the four specified categories. His Honour found that as Stack was not the inventor, but rather one of two joint inventors, he was not within par 15(1)(a). He had no claim to an assignment upon issue of the patent and so was not within par 15(1)(b). Clearly, the alleged circumstances in which Grieves permitted Stack to apply did not amount to a transfer of title to the invention for the purposes of par 15(1)(c). The evidence suggests only that Grieves was agreeable to Stack making the application. There was no allegation that Stack was the legal representative of any deceased person who was entitled to a patent (par 15(1)(d)). And further at [14]: Thus the question for determination is whether his Honour was correct in concluding that the Act does not authorize the grant of a patent to one of two or more joint inventors. A perusal of the texts suggests that there has been little recent consideration of this point. … 47 At [28], the Full Court observed: This brief examination of the historical position in England and the United States demonstrates that Cooper J was correct in concluding that Stack was not entitled to a patent for the joint invention of himself and Grieves. Each may have been entitled to a patent over his part (if it was otherwise patentable), while they both may have been entitled to a joint patent over the whole. Neither was solely entitled to a patent over the total invention. It follows that they could not, by arrangement between them, create in Stack an entitlement to a patent, save to the extent that they created a relationship pursuant to which he satisfied either par 15(1)(b) or par 15(1)(c). As we have observed, whatever agreement there was between them did not have that effect. 48 Mr Vasta QC for the appellant asserted that the applicant was estopped, but only in a narrow sense. "What we are estopped from saying is that George Stack was entitled to patent 662284 in his capacity as the inventor, that is, that is under 15(1)(a). That's what the issue which we are estopped from denying. That's it." 49 Mr Vasta submitted that with regard to the ability of George Stack to have the patent granted to him under (b) or (c), what was said by Cooper J is that: Whatever the evidence was I find that because the evidence was withdrawn in many respects, some witness statements were left, there's insufficient evidence for me to find on that evidence that he may have been entitled to have it granted to him on the basis of (b) or (c). 50 Mr Vasta's submission continued, at p 41 of the transcript: … in respect of that matter one must examine what the evidence was before the Court and to say does the issue estoppel extend to the point where in respect of another petty patent where the evidence in respect of entitlement to that one may be different, does the issue estoppel in relation to the fact that you can't say that George Stack, in his capacity as an inventor, can be granted the patent estop you from asserting, well, look, in a separate matter where the evidence is different that he may be able to be the grantee of a patent on the basis, if the evidence is sufficient, in his capacity as (b) or (c). 51 The submissions for the applicant contend that PP1 and PP2 are "separate and distinct pieces of property". The contention is, as expressed at p 52 of the transcript: How could issue estoppel in a separate and distinct proceeding in respect of evidence which may have been inadequate, there preclude you from saying in this one, well, we will lead that evidence and we will put that evidence before them and, therefore, say if we're bound by law in relation to saying, well, Stack couldn't hold it as inventor because he wasn't within 15(1)(a), he may hold it under 15(1)(b) or (c)? 52 In my opinion, Cooper J held, and indeed declared, that George Stack was not entitled, pursuant to s 15(1) of the Old Act, to a grant of a standard patent under Application No 85236/91. Since GST's entitlement to PP2 depends on Stack's entitlement to PP2, and since Stack's entitlement to PP2 depends on his entitlement to the standard patent under Application No 85236/91, of which PP2 was a divisional, GST is estopped, in these proceedings, from asserting an entitlement to PP2. In my judgment, the finding that Stack was not entitled to the Patent No 85236/91 is, in the words of Dixon J in Blair v Curran (supra) was "a matter necessary to decide and actually was decided, as the groundwork of the decision" that Stack was not entitled to PP1. 53 It follows that GST is not entitled to PP2 and that therefore an extension of PP2 would be futile. The delegate of the Commissioner was right to refuse the application for an extension of PP2 on this ground. 54 If, contrary to my finding, there was no issue estoppel binding on the applicant, the applicant claimed that having regard to the contents of the Deed of 22 October 1996, and the affidavit of Alan Joseph Grieves filed in these proceedings, there is evidence before the Court on which it might be concluded that Stack comes within s 15(1)(b) or (c) of the Old Act. 55 The document is styled "Agreement" and bears the date 22 October 1996. The applicant points to Recital No 7 which reads: Prior to that company becoming available, Stack had on the 30th day of August 1990 lodged a provisional patent application No. PK 2036 in respect of a water meter assembly. This application was lodged by Stack with the knowledge and consent of Grieves and with the common intention that any patent rights to be derived from that application would be transferred to the company to be incorporated. 56 The application there referred to is the Provisional Patent Application No PK 2036 in respect of a water meter assembly lodged on 30August 1990. The applicant's written submissions allege, first, that the delegate of the Commissioner "was in error in not allowing this document into evidence." And secondly, it was submitted by the applicant: The document shows that by virtue of Clause 7 of the Recitals that Stack lodged Application PK 2036 with the knowledge and consent of Grieves. This was tantamount to Grieves giving to Stack his interest in the rights to the patent and for Stack to hold it in trust until it was transferred to a company formed to exploit the inventions, the subject matter of the patent. It is clear from the membership structure of the company (when it was formed) that there was an agreement of some kind in place. 57 In my judgment, Clause 7 of the Recitals does not amount to an assignment or a gift to Stack of Grieves' interest in the rights to the patent. The statement is a recital to an agreement. The existence of that recital is not "tantamount to Grieves giving to Stack his interest in the rights to the patent", as was contended for the applicant, and a fortiori does not amount to a gift, or an assignment of those rights to Stack. 58 The same conclusion applies in respect of par 3 of the affidavit of Mr Grieves filed 16 January 2006, where he says: Prior to the 30th August 1990, I had agreed and have continued to agree, that the applicants for patents, concerning water meter assemblies and associated technology including petty patents arising from the filing of the provisional specification PK 2036, and application 85236/91 and Australian Petty Patent 645740 should proceed and the grant made in Mr Stack's name solely: that is, it was with my acknowledgement and consent that the grant be made in his name to the exclusion of my own. 59 Mr Grieves' acknowledgement and consent that the grant be made in the name of Mr Stack does not evidence a gift or assignment of Mr Grieves' interest in the patent to Mr Stack. 60 My conclusion is the same as the view of the Full Court about the document of 22 October 1996, which is set out in par 45 above, and consistent with the observations of Cooper J at [24] of the Second Set of Reasons, set out in par 37 above. Mr Stack is therefore not within s 15(1)(b) or s 15(1)(c) of the Old Act. 61 It was submitted for the applicant that the delegate was in error in not allowing this document into evidence, and that the Delegate Bruhn wrongfully refused to amend under s 69(4) of the Old Act. 62 The submissions seriously mis-state the position before Delegate Bruhn. The solicitor for the applicant before the delegate had sought leave to adduce further evidence into the proceedings, including material which had been exhibit 24 in the Federal Court proceedings concerning Petty Patent No 645740. Delegate Bruhn noted in his judgment ((2000) 50 IPR 202, 206): By a letter dated 22 July 1999 and received at the Patent Office on 26 July 1999, Mr Abaza for the patentee advised that the request for adducing further evidence was withdrawn, and further advised that the Commissioner could "now proceed without the benefit of the further documents … or any written or oral submission from my client or on its behalf". 63 At 229, Delegate Bruhn specifically refers to the deed of 22 October 1996. He noted that the deed had not been filed by the patentee in the s 28 proceedings for Petty Patent 662284, and that the patentee did not provide the deed in evidence in response to the invitation by the Commissioner to file any evidence in response to the notifier's original s 28 evidence, nor requested the Commissioner to grant leave for the patentee to adduce the deed as further evidence into the proceedings for Petty Patent No 662284. 64 As to the possible relevance of the deed, Delegate Bruhn said: … although Mr Abaza's submissions suggest that entitlement matters fall into place given the deed, from a brief perusal of the contents of the deed I do not believe that necessarily follows. In particular the deed does not seem to establish a prima facie case for Stack having entitlement to be granted petty patent No 662284. I do not believe that it is appropriate for me to admit the deed in question into the proceedings on my own motion. The patentee has had ample opportunity to formally seek to adduce the document into the proceedings but has not done so. Accordingly I will not have further regard to this deed. 65 Even if the applicant were not estopped from adducing evidence as to the entitlement of GST to PP2, it has not been established that Stack was entitled to the Parent Patent the subject of Application No 85236/91 pursuant to s 15(1)(b) or s 15(1)(c) of the Old Act on the evidence presently before this Court. However, this is a strike-out application, and I am not concerned to reach a final determination on this question on such an application. 66 Finally, the applicant contends that it is able to rely on the provision of s 105, in that there is power to amend in s 105, which can be used in a situation such as the present, and that the exercise of the Court's discretion to so amend would be proper. 67 Aldous J summarised the factors relevant to the exercise of the Court's discretion under s 105 in Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] 1 FSR 561 at 566: First, the onus to establish that amendment should be allowed is upon the patentee and full disclosure must be made of all relevant matters. If there is a failure to disclose all relevant matters, amendment will be refused. Secondly, amendment will be allowed provided the amendments are permitted under the Act and no circumstances arise which would lead the court to refuse the amendment. Thirdly, it is in the public interest that amendment is sought promptly. Thus, in cases where a patentee delays for an unreasonable period before seeking amendment, it will not be allowed unless the patentee shows reasonable grounds for his delay. Such includes cases where a patentee believed that amendment was not necessary and had reasonable grounds for that belief. Fourthly, a patentee who seeks to obtain an unfair advantage from a patent, which he knows or should have known should be amended, will not be allowed to amend. Such a case is where a patentee threatens an infringer with his unamended patent after he knows or should have known of the need to amend. Fifthly, the court is concerned with the conduct of the patentee and not with the merit of the invention. 68 Ms Helen Bowskill, counsel for the first respondent, emphasises the words "provided the amendments are permitted under the Act and no circumstances arise which would lead the court to refuse the amendment." Counsel also points to the third factor referred to by Aldous J, namely, "… it is in the public interest that amendment is sought promptly." 69 M Bowskill submitted that s 105 simply does not empower the Court to remedy a lack of entitlement by amendment of the patent request. It was further submitted that even if there were power, the amendment would not be allowed on the basis that is inconsistent with the findings and declarations made by Cooper J in his Honour's First Set of Reasons. Thirdly, even if it were possible, the amendment should not be allowed as a matter of discretion because of the lengthy delay on the part of the applicant in seeking the amendment. 70 In my view, as earlier indicated, the proposed amendment is inconsistent with the findings and declarations of Cooper J, which I have held constitute an issue estoppel. 71 The research of all counsel has not established any decision in which invalidity of a petty patent on the grounds that a patentee was not entitled to be granted the petty patent has been held to be capable of being remedied by amendment of the patent request under s 105 of the Old Act. 72 Mr Vasta for the applicant points to the instance where Mr Stack had made application No 32815, which "emanated from application of 85236 of 91", but before the grant of the patent, "the patent request was changed … to make the grantee Stack and Grieves." However, this was no contradictor, nor any consideration to the question of power to make that change. 73 Amendment has been held capable of curing or avoiding invalidity on other grounds. For example, where the invention is not a patentable invention because it does not comply with s 18(1)(a) or (b) or that the specification does not comply with s 40(2) or (3). Examples of amendment cases in this Court are: JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474 at [26] (Crennan J), Neurizon Pty Ltd v Jupiters Ltd [2005] FCA 1177 at [13] (Kiefel J); Novartis AG v Bausch & Lomb (Australia) Pty Ltd (2004) 62 IPR 71 at [67] and [68] (Merkel J); Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (1999) 48 IPR 625 at [69] (Tamberlin J) and Wimmera Industrial Minerals Pty Ltd v RGC Minerals Sands Ltd (No 3) (1997) AIPC 91-366 at 39,789 (Sundberg J). None of these supports amendment in circumstances such as those of the applicant here. 74 Relevant to this argument, is the distinction in tense in s 28(1)(a) of the Old Act with the tense in s 28(1)(b) and (c) of the Old Act. Subsection 28(1)(a) is concerned with the question of whether the patentee, being the person to whom the patent was granted, was entitled to be granted the petty patent at the time when it was granted. That ground of invalidity has to be considered by reference to whom the patent was actually granted. A purported amendment of a patent or a patent request, after grant, to substitute the name of another person or persons as patentee would not alter the fact that the patent had been granted to another person not entitled to the grant. In my view, there is nothing in the Act to suggest that an amendment, after grant, of the identity of the persons who applied for grant would operate nunc pro tunc. The proposed amendment would not affect the patent's invalidity as a consequence of s 28(1)(a) of the Old Act. 75 It was submitted by Ms Bowskill for the first respondent that the reason why an amendment of the kind here sought by the applicant is not allowable under s 105 is to be found in both the specific provisions of the Old Act dealing with amendments of a specification to save an otherwise invalid patent, as well as the consequences of utilising the remedy afforded by s 34 of the Old Act. 76 Where an amendment of a specification to save an otherwise invalid patent is granted, the Old Act provided safeguards in respect of priority dates and restrictions on the recovery of damages in respect of infringement predating the amendment: (see ss 114-115 and reg 3.14). 77 Section 34 of the Old Act provides: 34 Applications by eligible persons arising out of court proceedings (1) Where, in any proceedings in a court relating to a patent, the court is satisfied that a person other than the patentee is an eligible person in relation to the invention, so far as claimed in any claim, the court may, in addition to any other order it may make in the proceedings, by order, declare the person to be an eligible person in relation to that invention, so far as so claimed. (2) The Commissioner must, if a complete application is made under section 29 by a person so declared, grant the person a patent for the invention, so far as claimed in any claim of the patent mentioned in subsection (1), and the claims of that patent have the same priority date as that of the first-mentioned claim. 78 The consequence of that regime is that the new patent granted under s 34(2) would have the same priority date and "date of patent" as the s 34(1) patent: (see s 65 and reg 6.3(4)), and in the case of the standard patent, a term ending on the same date,(s 67), or in the case of a petty patent, a maximum term ending on the expiration of the maximum term,(s 68). 79 An action for infringement of the new patent granted under s 34(2) would lie only from the date of publication of the complete specification relating to the application of that new patent: (see s 51(1) and (2) of the Old Act) Thus use by a person which was lawful at the time does not become an infringement through the operation of s 34. The "rectified grantee" acquires rights in respect of infringement only prospectively. 80 I accept the submission on behalf of the first respondent that the applicant's application to amend pursuant to s 105 misconceives s 28 of the Old Act, and in turn the true extent and proper purpose of the power of amendment in s 105. Further, I accept that the distinction between pre and post-grant amendments is also demonstrated by ss 106 and 107 of the Old Act. 81 Section 106 deals with the situation where a patent has been granted, and the Commissioner is satisfied that the patent is invalid on grounds that could be removed by appropriate amendments of the specification. Under s 107, where a complete application for a standard patent has been made, but the patent has not yet been granted, and the Commissioner is satisfied that there are lawful grounds of objection to the patent request or complete specification but that those grounds of objection could be removed by appropriate amendments of the request or specification, the Commissioner may direct the applicant to file a statement of proposed amendments. Post-grant, no provision is made for amendment of the patent request. 82 Section 113 makes provision, before a patent is granted, for another person to be added to the patent request as a nominated person. The position is now put beyond doubt in respect of applications filed on or after 24 May 2001 by reg 10.3(9) of the Patent Regulations 1991 (Cth) which relevantly provides that, "A proposed amendment of a patent request is not allowable after the patent has been granted ". 83 I accept the submission on behalf of the first respondent that this regulation merely declares the law as it stood previously. I am satisfied that there is no power under s 105 to amend the patent request. If there were power, the applicant is estopped by the findings and declarations of Cooper J in his Honour's First Set of Reasons from contending as the proposed amendment would wish. 84 Finally, even if it were within power and not the subject of a binding estoppel, to amend the patent as foreshadowed by the applicant in the present matter ought not be allowed having regard to the length of time taken by the applicant to seek the amendment which it has foreshadowed. As the Full Court pointed out, "The failure to nominate Grieves in the patent request was not an oversight." ([2001] FCA 501, [49]). 85 The applicant has persisted for nearly 10 years to assert that it is entitled to Petty Patent No 662284. Extensive and expensive litigation have been fought and lost on that basis, with the consequence that extensive costs have been incurred by, amongst others, the first and second respondents. It is only in very recent times that the applicant has sought to invoke s 105. Previously, it elected to pursue what it asserted was its own entitlement to Petty Patent No 662284, a course inconsistent with the mooted application under s 105. Stack and Grieves have not sought to assert a claim to Petty Patent No 662284, preferring to sit behind the claims made by the applicant. 86 For all of the above reasons, the foreshadowed amendment pursuant to s 105 ought not be permitted. 87 In all the circumstances, it is right to order that Petty Patent No 662284 be revoked. The patent has expired, and if it is not revoked, further litigation is possible. An application for revocation of the patent has now been made and pursuant to s 138(3) of the Old Act, the Court has power, and, in my opinion, should revoke Petty Patent No 662284 on the ground that the patentee is not entitled to the patent. 88 I propose to make the following orders: on the Notice of Motion of the applicant for leave to file an Amended Statement of Claim, leave is refused. Pursuant to O 20 r 2 of the Federal Court Rules, proceeding QUD 46 of 2000 should be dismissed. Australian Petty Patent No 662284 should be revoked. 89 I will hear the parties on costs. My present view is that the applicant should pay the costs of the first respondent of and incidental to the proceeding, including the costs of and incidental to the Amended Notice of Motion filed by the first respondent on 13 December 2005, and the costs of and incidental to the Notice of Motion filed by the applicant on 16 January 2006 and the applicant should pay the costs of the second respondent of an incidental to the proceeding, including the costs of and incidental to its Amended Notice of Motion, filed 5 December 2005, and the costs of and incidental to the Notice of Motion filed by the applicant on 16 January 2006. I certify that the preceding eighty-nine (89) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Spender.

Counsel for the Applicant: Mr A Vasta QC with Mr DG Eliades

Counsel for the First Respondent: Ms H Bowskill

Solicitor for the First Respondent: Blake Dawson Waldron Lawyers

Counsel for the Second Respondent: Mr S O'Bryan SC

Solicitor for the Second Respondent: Peter Black & Associates

Date of Hearing: 9 February 2006

Date of Further Submissions: 15 February 2006, 17 March 2006, 20 April 2006, 28 April 2006

Date of Judgment: 18 January 2008