Consideration
85 I reject Spirit's arguments. First, Mason ACJ, Wilson and Dawson JJ in Sanofi 152 CLR at 7 (with Brennan J agreeing on this aspect at 18) held that the definition of "patentee" in the Patents Act 1952 (Cth) was not necessarily limited to identifying only the person who was patentee of a patent that was in force. In that case, after its patent had expired, the patentee applied for an extension on the basis that it considered it had been inadequately remunerated. Their Honours held that, reading the 1952 Act as a whole, and in particular Pt IX, which dealt with extensions, the word "patentee" had an extended meaning beyond its defined meaning so that it included the proprietor of an expired patent. They did not discuss the position of an unregistered assignment.
86 Spirit fell back on a remark by the trial judge in Re Sanofi's Patent Extension Petition [1983] 1 VR 25 at 30. There, Fullagar J (whose decision was upheld in Sanofi 152 CLR 1) said in an obiter dictum that:
"An assignment of 'the patent', or of all patent rights, or of all property, carries the right to apply for prolongation, whether the assignment takes place before or after expiry of the patent in question."
87 In that case, the previous patentee had ceased to exist in 1975 and all its property, including the patent, vested in Sanofi as a result of the equivalent of a scheme of arrangement or merger under French law. The patent expired in 1979 ([1983] 1 VR at 26). As I have explained, Sanofi [1983] 1 VR 25 and 152 CLR 1 dealt with a different factual and legal situation to that here. The Courts were dealing with the right of a person who had been registered as patentee of an expired patent to apply for its extension after its expiry. They were not dealing with a situation where, as here, a separation had occurred between legal and equitable interests in the patent at the time an application for an extension was made by the registered patentee. Nor did their Honours consider the issues raised by any analogue in the 1952 Act of the express recognition in s 189 of the 1990 Act of the validity of bona fide separate dealings in and rights in respect of legal and equitable estates in a patent. An argument similar to that advanced by Spirit in relation to a beneficial owner allowing a bare trustee to hold the trustee's name shares in a company, where no third party's rights were affected was debunked, with his usual elegance, by Lord Cairns LC in Shropshire Union Railways and Canal Company v The Queen (1875) LR 7 HL 496 at 507-510: see too Meagher, Gummow & Lehane's: Equity: Doctrines and Remedies (4th ed) at [8-025].
88 Secondly, the decision in Health World 240 CLR at 597 [22]-[23] does not assist Spirit's argument. There, French CJ, Gummow, Heydon and Bell JJ remarked on the legislative scheme of the Trade Marks Act being concerned to protect the "integrity" and "purity" of the Register of Trade Marks so as "to ensure that the Register is maintained as an accurate record of remarks which perform their statutory function - to indicate the trade origins of the goods to which it is intended that they be applied" (footnote omitted). Their Honours explained that the Trade Marks Act afforded three means of ensuring that the Register was pure (examination of the application to register by the Registrar, advertising of the decision to accept and the right of a person aggrieved to apply to correct the Register: 240 CLR at 597-598 [24]-[26]). But, their Honours said that this concept of Register being "pure" was used "in a sense that no mark is to be registered unless valid, and no registration of a mark is to continue if it is not valid" (240 CLR at 598 [27]).
89 Here, the Act did not specify any time in which an assignee had to be registered as patentee. Instead, it expressly provided in s 189(1) that a patentee could deal with the patent as its absolute owner, subject only to any rights appearing in the Register to be vested in another person. The Register was prima facie evidence of any particulars registered in it by force of s 195(1). While, s 187 required particulars, including prescribed particulars, relating to a patent to be registered, reg 19.1(2) suggested that the person requesting registration of particulars had to prove its entitlement to the reasonable satisfaction of the Commissioner. And, s 191 created criminal offences for knowingly or recklessly making, or causing to be made, a false entry in the Register. Notably, no offence was created for failure to update an entry with particulars of a subsequent assignment.
90 Of course, the reason why an assignee would seek to update the Register under s 187 and reg 19.1 is not far to seek. Unless and until the assignee did so, its assignor had and continued to enjoy all the rights of being registered as patentee. Furthermore, s 189(3) expressly provided that equities in a patent could be enforced against the patentee except if to do so would prejudice a purchaser in good faith for value. That provision showed that, first, third parties, including unregistered assignees, could enforce equities in relation to the patent against the patentee and, secondly, a purchaser in good faith for value, who, ex hypothesi, was not then registered as patentee, did not lose its rights because the registered patentee created an equity against the patent.
91 The express provisions of the Act were in the teeth of Spirit's second argument and I reject it. In addition, the Court in Health World 240 CLR at 597 [22] referred to over a century of trade marks jurisprudence beginning with Powell v Birmingham Vinegar Brewery Co Ltd [1894] AC 8 in support of the need for purity of that register. Spirit was unable to cite any case in any jurisdiction in support of its argument in relation to the Register of Patents. There was no suggestion of any intentional or deliberate conduct to mislead by any of the Sackler entities or that any person, including Spirit, had acted to its detriment as a result of the failure to register Mundi Medical as patentee after the 1999 assignment.
92 I am of opinion that Mr Roncalli could give admissible evidence of his knowledge of the sources of his instructions and authority to act on behalf of companies apparently in the Sackler family's group, including Euro-Celtique and Mundi Medical and the other Sackler entities. I accept that Mr Strassburger had knowledge of the files relating to Euro-Celtique's dealings in the patent. However, there is no evidence that Euro-Celtique had acted, in relation to the extension, in a way that somehow precluded it from being able to exercise its legal rights as registered patentee to apply for and obtain the extension of the patent.
93 It would be contrary to common sense to find that Euro-Celtique, as one company in a solvent corporate group, in the present circumstances, was acting in some way that was not consistent with its position as bare trustee for Mundi Medical at the time of the extension application. The three 2005 agreements and 2011 deed show that the 1999 assignment had been overlooked accidently by the Sackler entities. But there is no evidence of any improper dealing or lack of bona fides in Euro-Celtique's conduct. Nor is there any evidence of complaints by any party affected by it. The 2011 deed ratified the earlier dealings after the Sackler entities became aware of the anomaly created by them.
94 Spirit had the onus of proving that Euro-Celtique had no right to make each application or to be granted the extension. Euro-Celtique made the extension application very shortly after the 1999 assignment. At that time when both Euro-Celtique and Mundi Medical were aware of the assignment and that neither of them had applied to enter Mundi Medical in the Register as patentee. Euro-Celtique was the legal owner of the patent and was a bare trustee of it for Mundi Medical. The application for an extension could only have benefitted the person or persons with an interest in the patent.
95 However, after the 1999 assignment, Euro-Celtique could not deal with rights in the patent contrary to Mundi Medical's beneficial interest, but it could and, I find, did act on Mundi Medical's behalf in applying for and obtaining the extension. And s 189 of the Act expressly provided for and contemplated that there can be separate, bona fide, legal and equitable owners of a patent. The Act provided that separate legal and equitable interests in a patent were valid and not contrary to any public policy.
96 The obvious inference here is that somehow registration of Mundi Medical as new legal owner of the patent was overlooked after the 1999 assignment was made. But, as the events in 2005 showed, neither Euro-Celtique nor Mundi Medical ever intended that Euro-Celtique could not act as legal owner from the time of the 1999 assignment in taking bona fide steps to protect and enhance the value of the patent. And the position was regularised by the 2011 deed in which Mundi Medical effectively ratified what had occurred in the inter group dealings in 2005 when its position as beneficial owner of the patent was overlooked.
97 By force of s 71(2)(b), an application for extension of the patent had to be made within 6 months of the first inclusion of OxyContin on the ARTG. That occurred on 23 July 1999. Mundipharma sponsored the registration of OxyContin on the ARTG at that time. It is safe to infer from the evidence that at the time of the 1999 assignment and thereafter each of Euro-Celtique, Mundi Medical, Mundi Laboratories Purdue and Mundipharma had related commercial interests, at least in exploiting OxyContin and the patent. There is no reason to think that Euro-Celtique's application for the extension was done otherwise then for the benefit of its cestui que trust, Mundi Medical. Indeed, commercial common sense, and the apparent relationship between those interested in the patent, suggests that Euro-Celtique was acting for, and with the authority of, the beneficial owner, when it exercised its legal right, under s 70(1), as patentee, to make the application. In any event, as registered patentee, Euro-Celtique had the right to apply for and obtain the extension and held it beneficially for Mundi Medical.
98 Euro-Celtique, as registered patentee, had the legal right under s 189(1) of the Act to make the application for the extension on 19 January 2000 and, while it remained registered, it had the legal right to be granted the extension. The application under s 70(1) and the extension under s 76(1) in Euro-Celtique's name were valid and effectual.