Polwood Pty Ltd v Foxworth Pty Ltd

REASONS FOR JUDGMENT 1 In our reasons for decision in Polwood v Foxworth (No 2) [2008] FCAFC 168 we refused to make either of the alternate declarations sought by the Polwood and Foxworth 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 Polwood interests' eligible person(s) and the Foxworth 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 Polwood interests, the affidavits of the second appellant, Mr Rampton, and of a Ms Pamela Gregory clarify the position insofar as the appellants are concerned. 3 Whatever interests in the patent that Mr Rampton and Mr Connick may have had in the patent applications were assigned to Polwood Aussie Bark Pty Ltd in July of 2002 under a Deed of Assignment. While the Polwood interests have not put on any evidence discounting the possibility that Polwood Pty Ltd was an eligible person, there is evidence in the principal proceeding that Mr and Mrs Rampton were at all relevant times the Directors and shareholders of Polwood Pty Ltd as well as being the Directors and shareholders of Polwood Aussie Bark. Further, the July 2002 Deed of Assignment recites that the inventors were Mr Rampton and Mr Connick. Mr Connick was not an employee or otherwise engaged by either Mr Rampton or Polwood Pty Ltd. In these circumstances it is appropriate to infer that Polwood Pty Ltd asserts no interest in the patents as an eligible person. 4 In relation to the Foxworth interests the evidence that has been put on by Mr Power establishes clearly that Mr Kemp was an employee of Peachester Thoroughbreds Pty Ltd (the third respondent) and that Mr Power was a Director of that company. Mr Power's evidence is that he employed Mr Kemp to design and construct a sophisticated sterilising unit which was portable. Mr Power also assisted in the design of the PSU. Mr Kemp's evidence is to like effect. Insofar as Mr Kemp's participation in the process was concerned, it is clear that Peachester is the relevant eligible person, Mr Kemp having been employed by it for this very purpose: see Patchett v Stirling Engineering Co Ltd (1955) AC 534; and see also Patents Act, s 15(1)(b). Additionally, there is no evidence before us that Mr Kemp 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. Although Mr Power'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 Polwood Aussie Bark Pty Ltd on the one hand, and Peachester Thoroughbreds Pty Ltd and Paul David Power 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 Honourable Justices Finn, Bennett and Greenwood. Associate: Dated: 24 December 2008 Counsel for the Appellants: Mr M P Amerena Solicitor for the Appellants: Deacons Counsel for the Respondents: Mr A Musgrave Solicitor for the Respondents: Hawthorn Cuppiadge & Badgery Date of Hearing: 30 October 2008 Date of Judgment: 24 December 2008