Stack v Davies Shephard

His Honour erroneously said that paragraphs 5 - 8 of Grieves's statement were included. It is clear from TS 1772 and TS 1775 that only paragraphs 5 and 8 were received in evidence.

6 In his witness statement Stack asserted: "4. On 30 August 1990 a provisional patent application was filed for an invention entitled "Water Meter Assemblies". Alan Grieves and I were the inventors of the inventions contained therein. 5. It was our common intention that rights in respect of the inventions and other intellectual property rights would be held by a Company in which we would each hold an interest. This was the subject of discussions and agreements between us in August and September 1990. At that time we did not have a suitable company and by agreement, the patent applications were made in my name with the intention that when a Company was established, and a patent issued those patents would be transferred to the Company. The applications for patents were made in my name with the knowledge and consent of Alan Grieves." 7 It appears from his Honour's reasons that an application for a standard patent was filed in Stack's name on 26 March 1991. On 30 August 1991 Stack and Grieves filed an international application pursuant to the Patent Co-operation Treaty. Stack was identified as the inventor and as applicant for all designated countries. Grieves was also identified as the inventor but was the applicant only for the United States of America. On 25 August 1993, Stack applied for a petty patent in his own name. On 10 November 1993 he filed a notice of entitlement which recited that he and Grieves were the inventors. On 17 February 1994 Stack applied for what the primary judge called "the second petty patent application" in his own name, again naming himself and Grieves as the inventors. On 9 June 1995 a further notice of entitlement was filed, again naming Stack and Grieves as inventors. It stated that "[t]he person nominated is entitled to the grant of the patent." This appears to have related to the application for a petty patent. The person nominated in that application was, of course, Stack. On 22 June 1995 a further notice of entitlement was filed, again naming Stack and Grieves as inventors and stating: "Persons nominated for the grant of the patent are the applicants of the original application." 8 This appears to have meant that the persons nominated for the grant of the petty patent were the applicants for the standard patent. As his Honour has observed, this was incorrect in that there was only one nominee in each case, and that was Stack. On 28 June 1995 a further notice of entitlement was filed, again with respect to the petty patent, as follows: "1. George Stack and Alan Grieves are the actual inventors. 2. The person nominated for the grant of the patent is the applicant of the original application. 3. The person nominated is entitled to the grant of a patent." 9 Proceedings before Cooper J were conducted pursuant to grounds of opposition and particulars thereof which were supplied by the cross-respondents. They alleged that Stack was not the inventor, that Stack and Grieves were joint inventors and that they had been acting as employees of GST or another company, Russell Plastics Pty Ltd ("Russell Plastics"). Alternatively it was alleged that one "Williams" and/or one "Cornish" were the inventors. Williams was an employee of Reliance Manufacturing Company ("RMC") which was a trading division of GSA. His Honour found that neither Williams nor Cornish was the inventor. We do not understand that finding to be presently in dispute. 10 As appears from [31] and [32] of his Honour's reasons: "31. Stack and GST filed a written response to the grounds of objection. In paragraph 2 of that document they allege that Stack was entitled to the grant of the petty patent because : (a) Stack and Grieves were the inventors; (b) Stack was a person to whom Grieves had agreed to assign his interest in the invention; Alternatively: (c) Stack derived title to the invention from the inventors in that: (i) Stack applied for the petty patent with the knowledge and consent of Grieves, the other inventor; (ii) the application was done with the common intention that once the patent was obtained in Stack's name it would be assigned to GST; (iii) it was at all material times the common intention of Stack and Grieves that the petty patent (and all patent rights obtained by Stack in water assemblies invented by Stack or Grieves or either of them) would be transferred to GST; (iv) on 30 August 1990, the date of filing PK2036, GST was not available, so the application was made in the name of Stack with the knowledge and consent of Grieves, with the intention that any patents granted in consequence of that application would be assigned to a company to be incorporated; (v) the divisional application upon which the petty patent was based was number 85236/91 filed 30 August 1991 which in turn was based on PK2036 filed 30 August 1990; (vi) application 85236/91 was made in the name of Stack because of the terms of s 39(1) of the Act." 32. Further, Stack and GST submit that GST, having been registered as the patentee in the Register of Patents ('the Register') kept in the Patents Office (s 186), is for the purpose of s 138(3)(a) the patentee entitled to the patent. Thus, they submit the petty patent cannot be revoked under s 138 on the ground that the patentee is not entitled to the patent: s 138(3)(a). This follows, they submit, from the definition of 'patentee' in the Dictionary: Schedule 1 to the Act. In the Dictionary, 'patentee' means 'The person for the time being entered in the Register as the grantee or proprietor of a patent'. Whether or not Stack was entitled to the original grant of the petty patent they submit becomes irrelevant upon registration of GST as proprietor of the patent by assignment." 11 Stack and GST assert that the petty patent was valid, both at the time of the original grant and at the time at which an extension was sought, implying that the grant to Stack was valid and that GST received a valid assignment. These issues should be considered separately.

12 Cooper J found that Stack and Grieves were the inventors (subject to any claim by Russell Plastics) in the sense that they performed the intellectual and practical work involved in the development of the invention. We do not understand this finding to be challenged by Stack or GST. The matter in issue is whether or not Stack was, in the circumstances, solely entitled to a grant. Cooper J concluded that he was not. Sections 15 and 16 of the Patents Act 1990 (Cth) ("the Act") provide as follows: "15 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). (2) A patent may be granted to a person whether or not he or she is an Australian citizen. 16 Co-ownership of patents (1) Subject to any agreement to the contrary, where there are 2 or more patentees: (a) each of them is entitled to an equal undivided share in the patent; and (b) each of them is entitled to exercise the exclusive rights given by the patent for his or her own benefit without accounting to the others; and (c) none of them can grant a licence under the patent, or assign an interest in it, without the consent of the others. (2) Where a patented product, or a product of a patented method or process, is sold by any of 2 or more patentees, the buyer, and a person claiming through the buyer, may deal with the product as if it had been sold by all the patentees. (3) This section does not affect the rights or obligations of a trustee or of the legal representative of a deceased person, or rights or obligations arising out of either of those relationships." 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)). 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. In the 8th edition of Terrell on Patents (published in 1934) at pp 13 - 22, there is discussion of the meaning of the expression "true and first inventor" in s 6 of the Statute of Monopolies and equivalent terms in later legislation. Of particular interest are the observations of Jessel MR in Plimpton v Malcomson (1876) 3 ChD 531 and in Marsden v The Saville Street Foundry and Engineering Co Ltd (1878) 3 ExD 203. In Plimpton his Lordship said (at 555 - 6): "In order that those who may have to consider my judgment hereafter may know the view that I take of the statute combined with decisions, I will state the result at which I have arrived. As I understand, shortly after the passing of the statute, the question arose whether a man could be called a first and true inventor who, in the popular sense, had never invented anything, but who, having learned abroad (that is, out of the realm, in a foreign country, …) that somebody else had invented something, quietly copied the invention, and brought it over to this country, and then took out a patent. As I said before, in the popular sense he had invented nothing. But it was decided, and now, therefore, is the legal sense and meaning of the statute, that he was a first and true inventor within the statute, if the invention, being in other respects novel and useful, was not previously known in this country - "known" being used in that particular sense, as being part of what had been called the common or public knowledge of the country. That was the first thing. Then there was a second thing. Suppose there were two people, actual inventors in this country, who invented the same thing simultaneously, could either be said to be the first and true inventor? It was decided that the man who first took out the patent was the first and true inventor. Then there was another point. If the man who took out the patent was not, in popular language, the first and true inventor, because somebody had invented it before, but had not taken out a patent for it, would he still, in law, be the first and true inventor? It was decided he would, provided the invention of the first inventor had been kept secret, or, without being actually kept secret, had not been made known in such a way as to become a part of the common knowledge, or of the public stock of information. Therefore, in that case also, there was a person who was legally the first and true inventor, although, in common language, he was not, because one or more people had invented it before him, but had not sufficiently disclosed it." 15 The emphasis upon actual invention is clear. In Marsden a deceased inventor had not patented the invention during his lifetime. His personal representative did so after his death. The validity of the patent was later challenged. Jessel MR said (at 204 - 5): "This is a mere experiment. From the time of the passing of the Statute … down to the present time, no one, so far as I know, has contended in a court of law, much less has any court of law allowed, the validity of such a contention as that a communication made in England by one British subject to another British subject can be patented by the receiver of the communication, so as to make the receiver the true and first inventor within the meaning of the patent laws. It has been argued that before the statute of James, such patents were valid and were allowed by the judges, and that the statute merely restricts the duration of the patent, and does not destroy the right as it previously existed. Even supposing that were so, the statute defines who are considered to be worthy recipients of the grant of such a monopoly, as it was then called, and the definition so given has been followed ever since. It is difficult to say ŕ priori on what principle a person who did not invent anything, but who merely imported from abroad into this realm the invention of another, was treated by the judges as being the first and true inventor. I have never been able to discover the principle, and although I have often made inquiry of others, and of some who are more familiar with the patent law than even I am, although I cannot pretend not to possess a considerable familiarity with it, I could never get a satisfactory answer. The only answer was, It has been so decided, and you are bound by the decisions. But it is an anomaly as far as I know, not depending on any principle whatever. It has never been declared by any judge or authority that there is such a principle, and, not being able to find one, all I can say is, that I must look upon it as a sort of anomalous decision which has acquired by time and recognition the force of law." 16 His Lordship then referred to the decision in The Clothworkers of Ipswich Case (1615) Godb 252; 78 ER 147 and continued (at 206): "Therefore the decision goes no further than this - that at that time, considering the difficulty which then attended communication from abroad, a man who brought in anything from abroad did it at the peril of his life (for travelling was not without danger in the time of Henry VIII) and consumption of his estate and stock, and it was therefore such a meritorious service done to this kingdom, that the king might lawfully grant him a monopoly. That is the ground that it is put upon. Now, there is some reason in that. It does not make him the true and first inventor, but it does shew a meritorious consideration which warranted an exception from the general rule that monopolies could not be granted. How that applies to a gentleman in Leeds whispering in his neighbour's ear in a street in Leeds, I do not know. At all events it does not appear to me that such a case as this is within the grounds I have mentioned." 17 After reference to other similar cases his Lordship continued (at 207 - 8): "Now that is the origin of the decisions, and that being the origin of them, what possible right have we to say that we can now extend that privilege, beyond the importation of an invention from beyond the seas, to the case of a man (I am dealing with the real case as told us and not the case as appears by the statement of claim) who dies before taking out a patent and whose legal personal representative, finding the invention sufficiently described amongst his papers, thereupon obtains a patent as upon a communication from him. Whether or not there should be legislative provision for such a case it is not for us to say. But there is none. He is neither the first nor the true inventor within the ordinary or existing legal meaning of the term." 18 Thus it can be seen that the courts have taken a narrow view of entitlement to a patent, looking to the legislative intention to encourage commercial activity. Marsden establishes that in the absence of express statutory provision, a personal representative could not obtain a grant on behalf of the estate of a deceased inventor because the representative would not be the true inventor. Obviously, the decision also excludes any claim by a person who, not being the true inventor, bases his claim upon knowledge derived from that inventor. This is similar in principle to the present case. It is also presently relevant that in Marsden the patentee had sought to restrain the infringement of a patent. The defendant, in reply, challenged its validity. 19 Returning to Terrell, the author says (at 18 - 20): "It must be remembered that the question 'Is the patentee true and first inventor?' is entirely separate and distinct from the question 'Is the invention itself new?' In the former case we are dealing with the history of an idea in the mind of a particular man; in the latter with the history of a manufacture. The difference was pointed out by Tindal CJ in Gibson and Campbell v Brand (1 WPC 627 - 628): 'The defendant next says that these letters patent have not been granted to the true and first inventors, which you are aware is a condition required by the statute. Now a man may publish to the world that which is perfectly new in all its use, and has not before been enjoyed, and yet he may not be the first and true inventor; he may have borrowed it from some other person, he may have taken it from a book, he may have learnt it from a specification; and then the Legislature never intended that a person who had taken all his knowledge from the act of another, from the labours and assiduity or ingenuity of another, should be the man who was to receive the benefit of another's skill. … ' In Tennant's Case (1 WPC 125, n.) a material part of the invention claimed was found to have been suggested to the patentee by a chemist at Glasgow. Lord Ellenborough held that the patent was invalid, inter alia, because the grantee was not the inventor. It will be observed in this case, that although it is possible that the patentee was the first person to use the particular method for making bleaching liquor, nevertheless he was held not to be the inventor, because the particular method of producing this bleaching liquor was thought out by someone else and communicated to him. In Cornish v Keene (1 WPC 501 at 507), Tindal CJ said: 'Sometimes it is a material question to determine whether the party who got the patent was the real and original inventor or not; because these patents are granted as a reward, not only for the benefit conferred upon the public by the discovery, but also to the ingenuity of the first inventor; and although it is proved that it is a new discovery, so far as the world is concerned, yet if anybody is able to show that although that (ie the publication to the world) was new, that the party who got the patent was not the man whose ingenuity first discovered it, that he borrowed it from A or B, or had taken it from a book that was printed in England, and which was open to all the world - then, although the public had the benefit of it, it would be an important question whether he was the first and original inventor of it.' There is no doubt that, in the circumstances stated by the Chief Justice, the person obtaining the patent would not be the true and first inventor. The principle laid down in the cases cited above has invariably been followed. A may have invented something; he made have made a few experiments with the invention, and then abandoned it (without publication). B may subsequently have invented the same thing, altogether independently of A. If B applies for letters patent he is at law the first inventor; but if it is shown that the process of invention was not carried on in B's mind at all, but that A communicated his ideas to B, although with the full intention of abandoning them, B will not be the first inventor. … In Lewis v Marling (1 WPC 490 at 496) Bayley J, said: 'If I discover a thing for myself, it is no objection to my claim to a patent that another also has made the discovery, provided I first introduce it into public use.' (ie communicate the invention to the public in a specification.) The suggestion in that case was that the patentee had acquired his invention by seeing a model of a similar machine which had been brought from America. It was disproved that he had seen the model, and consequently he was held to be the first and true inventor. (And see Permutit Co v Borrowman 43 RPC 356 (PC) at 359)."

"In Minter v Wells and Hart (1 WPC 127 at 129) Alderson B said: 'The patentee claims under the patent, stating, in his petition to the Crown, that he is the true inventor of the machine in question; and if it could be shown that he was not the true inventor, but that someone else had invented it, the Crown is deceived in that suggestion, which was the foundation on which it granted the patent; and then the law is, that the patent obtained under such circumstances would be void. …' " 21 A patent may only be granted to the inventor or somebody claiming through the inventor. For historical reasons the term "inventor" has been extended to include somebody bringing another's invention into the realm, but it does not include a person who publishes for the first time another's invention which has been communicated to him. It follows that one of two inventors each responsible for a part of the invention cannot claim a patent over the total invention. That is because such a patent would confer upon him or her the benefit of that part of the invention for which he or she was not responsible. A grant of a patent to such a person is liable to be set aside at the suit of any person against whom the patentee seeks to enforce it. As to the latter point, see also Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543 at 549 - 50 (per Emmett J). 22 There is a useful discussion of the American position in Chisum on Patents at s 2.02 which is concerned with joint and sole inventorship. The relevant passages are as follows: "The concepts of sole inventorship and joint inventorship are critical elements of originality. Sole inventorship occurs when one person conceives the solution to the problem, the means to the desired end, which constitutes the subject matter of the invention. Joint inventorship occurs when more than one person contributes to the conception of the solution. It is frequently difficult to determine who has in fact contributed to the conception of a given invention because the contribution must consist of more than suggesting a desired result or following the instructions of another. [1] - Historical Development The early patent statutes clearly contemplated the possibility of joint as well as sole invention … Justice Story, sitting on the Circuit Court of Massachusetts, discussed joint inventorship in two early related cases." They are identified in a footnote as Stearns v Barrett (1816) 22 F Cas 1175 (No 13,337) and Barrett v Hall (1818) 2 F Cas 914 (No 1,047). 23 The author then cites the following observations of Story J from Stearns v Barrett (at 1181): "When the jury declare, that both were concerned in the invention, the natural meaning of the words is, that the invention was the result of their joint, and not of their several and independent labours. … If the plaintiff and defendant separately and independently invented several parts of the machine, capable of a distinct use, then those parts might be considered as separate inventions, for which each inventor might, perhaps, be entitled to a separate patent. But the present patent claims the invention, as a whole; and the jury find, that in this invention they were both concerned; which I cannot understand in any other sense, than as verifying the intention to be a joint, simultaneous production of the genius and labour of both parties." 24 The author continues: "Justice Story then granted a new trial on the ground that the verdict was internally inconsistent. If the invention was joint, the defendant's patent in his sole name was invalid." 25 The author then quotes further observations of Story J from Stearns v Barrett (at 1181) as follows: "By the patent act, no person could entitle himself to a patent for any machine, unless he was the true inventor of it, and would make oath to that fact before some competent authority. By the expression of the statute, 'true inventor', is undoubtedly meant the sole and exclusive inventor; for if the machine were the joint invention of several persons, neither of them could claim to be the true inventor, having an exclusive title to the patent; but the interest would be a joint or common interest in the whole." 26 In addition to the above it is interesting to observe that in Barrett v Hall Story J said (at 923 - 4): "… a joint patent may well be granted upon a joint invention. There is no difficulty in supposing in point of fact, that a complicated invention may be the gradual result of the combined mental operations of two persons acting together, pari passu, in the invention. And if this be true, then as neither of them could justly claim to be the sole inventor in such a case, it must follow that the invention is joint, and that they are jointly entitled to a patent." 27 All of these observations are, in principle, consistent with the historical English position which emphasized the entitlement of the inventor to the product of his own inventiveness and to no more, subject to the special exception in the case of inventions brought into the realm. 28 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.

29 His Honour found that Stack and Grieves had developed the invention whilst employed by Russell Plastics. It is not clear why that should be relevant for present purposes. Prima facie we would have thought that it was not open to those challenging the validity of the petty patent to assert a matter which arose entirely out of the relationship between Russell Plastics on the one hand and Stack and Grieves on the other. The reasons which lead to the conclusion that a third party may assert the entitlement of Grieves as joint inventor in support of a claim to revoke the patent granted in favour of Stack do not justify a third party in asserting the rights of an employer against an inventor/employee. Special policy considerations have led to a narrow construction of the term "inventor". Those considerations would not be advanced if a person other than the true inventor were to receive the benefit of a grant. In some circumstances an employer may be the true inventor, the employee having merely carried out some aspect of the process under supervision. However that is not the present case. Here there is a finding of fact that Stack and Grieves are the true inventors. In those circumstances Russell Plastics can only derive title from them. An inventor may assign his right to apply for a patent. See George C Warner Laboratories Pty Ltd v Chemspray Pty Ltd (1967) 41 ALJR 75. See also Speedy Gantry (supra) at 553. Paragraphs 15(1)(b) and (c) obviously contemplate such a step. However the assignee does not become the inventor. An employer of the inventor can claim only pursuant to par 15(1)(b) or 15(1)(c).

30 GST submits that its interest as assignee of the patent cannot be adversely affected by invalidity at the time of grant. It relies in justification of this assertion upon the provisions of s 189 of the Act which provide: "(1) A patentee may, subject only to any rights appearing in the Register to be vested in another person, deal with the patent as the absolute owner of it and give good discharges for any consideration for any such dealing. (2) This section does not protect a person who deals with a patentee otherwise than as a purchaser in good faith for value and without notice of any fraud on part of the patentee. (3) Equities in relation to a patent may be enforced against the patentee except to the prejudice of a purchaser in good faith for value." 31 As far as we can see, the issues of good faith and value were not ventilated in the course of the proceedings. His Honour considered the section to be concerned with protection of title, not validity. We agree. Subsection 189(1) cannot have been intended to allow an original patentee to give title to the patent free from liability to revocation if he or she holds subject to such liability. The possibility of revocation does not deprive the patentee of his or her capacity to deal with the patent as "absolute owner". All patents are subject to that possibility. However GST did not rely solely upon s 189. To understand its argument, it is necessary to keep in mind that Cooper J was concerned with both an appeal from a decision of the Commissioner, declining to extend the term of the petty patent and an application to revoke it. In determining whether or not to extend the term pursuant to s 69, the Commissioner was obliged to hear any person who had given notice pursuant to s 28. That section provides relevantly: "(1) A person may, within the prescribed period after the grant of a petty patent, notify the Commissioner … that the person asserts, for reasons stated in the notice, that the petty patent is invalid on one or more of the following grounds: (a) that the patentee was not entitled to be granted the petty patent; (b) that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b); (c) that the specification does not comply with subsection 40(2) or (3)." It is implicit in this arrangement that these are grounds for refusing to extend a petty patent. Clearly, the reference to a patentee who "was not entitled to be granted the petty patent" must be a reference to the original grantee. 32 Section 138 deals with revocation, relevantly providing: "(1) The Minister or any other person may apply to a prescribed court for an order revoking a patent. (2) … (3) After hearing the application, the court may, by order, revoke the patent, either wholly or so far as it relates to a claim, on one or more of the following grounds, but on no other ground: (a) that the patentee is not entitled to the patent; (b) that the invention is not a patentable invention; (c) that the patentee has contravened a condition in the patent; (d) that the patent was obtained by fraud, false suggestion or misrepresentation; (e) that an amendment of the patent request or the complete specification was made or obtained by fraud, false suggestion or misrepresentation; (f) that the specification does not comply with subsection 40(2) or (3)." 33 The term "patentee" is defined in the dictionary as: "The person for the time being entered in the Register as the grantee or proprietor of a patent …" 34 GST submits that as it was, at the time of the application for revocation, the patentee, the question must be as to its current entitlement, and not Stack's entitlement at the time of grant. It then relies on s 189 to provide validity. We have already observed that the section deals with title rather than validity, but there are a number of other reasons why this argument must fail. Firstly, there seems to be no reason why an assignee should be deprived of an extension pursuant to s 69 upon the ground that the original patentee was not entitled, but not be exposed to the possibility of a revocation of the patent pursuant to s 138. It is true that there is a minor difference in the wording, but we do not believe that to be of any relevance for present purposes. Secondly, the reference to entitlement in par 138(3)(a) and in par 28(1)(a) must be to the conditions for the grant of a patent contained in s 15. We cannot see how it can refer to anything else in view of the express references to "patentable invention" and adequacy of the specification in other paragraphs of the relevant subsections. If this view is correct, then the subject matter of par 138(3)(a) must be the entitlement of the original inventor to the patent. Further, of the various grounds specified in subs 138(3), only pars (a) and (c) refer to the "patentee". Thus, if this argument were valid, an assignee would be protected from revocation pursuant to pars 138(3)(a) or (c), but not from revocation on some other ground. We also point out that s 138, on its face, applies to all patents, not merely to those which have not been assigned in good faith and for value. 35 These conclusions lead inevitably to the dismissal of the cross-appeal.

36 On the twenty-ninth day of the trial of the issues of validity and entitlement, after the cross‑claimants had closed their case, Stack and GST applied to the primary judge for leave to make a no case submission. His Honour refused to entertain the submission. Thereupon the solicitor for Stack and GST informed the judge that his clients did not intend to call evidence on the validity and entitlement issues, and sought to withdraw witness statements that had been tendered in their case at the commencement of the trial. That course was objected to by the cross‑respondents on the ground that they had relied on evidence in those statements and had conducted and closed their case on the basis that the material was in evidence. The primary judge refused leave to withdraw the statements. The cross-respondents then objected to parts of the material in the statements on the basis that the maker of the statement was not produced for cross-examination. The primary judge gave the solicitor for Stack and GST time to consider the material objected to. Having done so, he said that the proposed deletions were acceptable to his clients, and the judge then struck out that material.

37 On 15 September 1999 the primary judge made the declarations set out in [1] above. On 21 October 1999 Stack and GST filed a notice of motion seeking the following relief: "1. That it be Declared that GS Technology Pty Ltd is and was at all material times an eligible person in relation to the invention the subject of the following and entitled under s 15 or s 34 of the Patents Act 1990 (Cth) to the grant to it: (a) of a patent in consequence of the filing of the provisional specification PK 2036; (b) of a standard patent in consequence of the filing of application 85236/91; (c) of Australian Petty Patent 645740. 2. Alternatively, it be Declared that Russell Plastics Pty Ltd is and was at all material times an eligible person in relation to the invention the subject of the following and entitled under s 15 or s 34 of the Patents Act 1990 (Cth) to the grant to it: (d) of a patent in consequence of the filing of the provisional specification PK 2036; (e) of a standard patent in consequence of the filing of application 85236/91; (f) of Australian Petty Patent 645740. 3. As a consequence of orders in 1 and/or 2 above an amendment of the Patent, Petty Patent and/or Patent Request (as the case may be) to record the Patentee pursuant to s 105 of the Patents Act 1990 (Cth). 4. That the Registrar serve an office copy of this Order upon the Commissioner of Patents. 5. Upon service of this Order the Commissioner of Patents grant a petty patent or patent, as the case may be, in accordance with this Order pursuant to s 34 of the Patents Act 1990 (Cth). 6. That in so far as it is necessary to give effect to the Orders in 1 to 5 above: (a) Alan Joseph Grieves be added as a Fifth Respondent; (b) Russell Plastics Pty Ltd be added as a Sixth Respondent; (c) leave be given to amend the Application and Statement of Claim in QG28 of 1994 and GQ21 of 1996."

Proceeding QG 21 of 1996 involves petty patent number 662284 and continues against the State of Queensland alone.

38 In support of the motion Stack and GST relied upon an affidavit of Grieves, consenting to be joined as a respondent and setting out his dealings with Stack in relation to the patent applications in suit. Exhibited to the affidavit was a Deed of Agreement dated 22 October 1996 between GST, Stack, Russell Plastics and Grieves, the effect of which is that any patents granted in consequence of the filing of provisional specification PK 2036 and application 85236/91 should be granted to GST. Reliance was also placed on an affidavit of Hugh Russell Tweedale, a director of Russell Plastics, recording a resolution of its Board of Directors of 19 October 1999 that in consequence of the filing of provisional specification PK 2036, the filing of application 85236/91 and the grant of Australian Petty Patent 645740, a patent should be granted to GST. It was further resolved that in default of the Court ordering a grant to GST, Russell Plastics seek the grant of the patent and that it be joined as a party in QG 28 of 1994 and QG 21 of 1996. Affidavits of Stack and Gordon Lambert Miles were also relied on in support of the motion. A copy of the Deed of Agreement was one of the documents exhibited to the witness statements of Stack and Grieves the contents of which were in part struck out on the twenty‑ninth day of the trial. The Deed itself was struck out. 39 The primary judge described the effect of the relief sought in the motion as follows: "What GST and Stack now seek to do is to go into evidence again, after the trial has been concluded and judgment given, to make out a case which denies the entitlement of Russell Plastics, as employer, to the invention, and its entitlement to the grant of a patent in respect of the said invention. They now seek to prove that ownership of and property in, the invention, at the time of its making, vested in Stack and Grieves alone. They then seek, by a series of alleged assignments, to assign the interest of Grieves in the invention to Stack, or, to have Stack acting as trustee of Grieves' interest, when making the various patent applications, to regularise his conduct in seeking a grant in his own name prior to the acquisition of GST. The title of GST to the petty patent which remains sourced in Stack is, it is said, relieved of any defect which may have arisen because of the interests of Grieves or Russell Plastics by operation of the Deed of Agreement dated 22 October 1996, and by the resolution of the Board of Directors of 19 October 1999. This is because Russell Plastics denies, waives or assigns any intellectual property it may have had in the invention to GST and Grieves assigns any interest he had to GST." 40 The orders made on 15 September 1999 included declarations that GST was not entitled under s 15 of the Act to a grant of petty patent 645740, and that GST was not entitled to that petty patent within the meaning of par 138(3)(a) of the Act. The primary judge pointed out that the relief sought in paragraph 1 of the notice of motion was totally inconsistent with those declarations, and that to the extent that GST relied on the entitlement of Stack as the source of its title, the declaration sought in paragraph 1 of the notice of motion was inconsistent with the first three declarations made on 15 September 1999 denying that Stack was entitled under s 15 of the Act to the grant in consequence of the filing of provisional specification PK 2036 or the filing of application 85236/91, or that he was entitled under s 15 to the grant of petty patent 645740. 41 His Honour rejected the submission that declarations 1 - 5 of 15 September 1999 should be set aside under Order 35 subr 7(1) of the Rules and that Stack and GST have leave to re‑open their case and call further evidence on entitlement. That rule empowers the Court to set aside a judgment or order before it has been entered. At the time the motion was heard the declarations had not been entered as orders of the Court. In exercising his discretion under Order 35 subr 7(1) against Stack and GST the primary judge noted the following matters: · by their motion Stack and GST sought to set aside all findings of fact on the entitlement issue, to re‑open their case to tender the evidence that had previously been struck out, and to call evidence that was available at the time of the trial; · by the motion they sought to overcome matters decided adversely to them after judgment had been given; · the decision not to call Grieves and Stack was a tactical decision taken at the trial; · there was no reasonable basis to suggest that Stack and GST and their legal advisers did not understand what was being done or the consequences of not producing the witnesses for cross-examination; · no explanation had been offered as to why the evidence filed in support of the motion was not left to the Court at the trial; · while wanting to set aside the declarations adverse to them, Stack and Grieves sought to retain the benefit of those in their favour (that the invention was a patentable invention within s 18 and that the specification complied with subss 40(2) and (3)); · to set aside all declarations and findings would involve a substantial waste of time and costs thrown away which Stack and GST had not offered to pay; and · the material filed in support of the motion would not lead to a different result so far as the entitlement of Stack or GST to the grant of the petty patent was concerned. 42 It followed from the primary judge's refusal to set aside the earlier declarations adverse to Stack and GST that the relief sought in paragraph 1 of the notice of motion could not be granted under s 15 of the Act. That was because of the subsistence of the earlier declaration that GST was not entitled under s 15 to the grant of petty patent 645740. Section 34, the other provision relied on in paragraph 1 of the notice of motion, provides: "(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."

The primary judge gave two reasons for concluding that s 34 did not support the relief sought. The first was that his earlier declaration that GST was not entitled under s 15 to a grant carried with it the finding that GST was not an "eligible person". That was because "eligible person" is defined, in relation to an invention, as a person to whom a patent for the invention may be granted under s 15. His Honour's second reason was that GST was not "a person other than the patentee". GST was the patentee.

43 The primary judge then considered the alternative claim in paragraph 2 of the notice of motion that Russell Plastics should be declared to be an eligible person and entitled under s 15 or s 34 to a grant. This claim was based on the second part of the resolution of Russell Plastics' Board of Directors. His Honour was not satisfied that the material filed in the affidavits relied on showed that Russell Plastics was an eligible person for the purposes of s 34. The relief sought in paragraphs 3 - 6 of the notice of motion was consequential on relief being granted under paragraphs 1 and 2. As no such relief was granted, his Honour dismissed the motion to the extent that it sought orders in terms of paragraphs 1 - 6. Finally his Honour said he was satisfied that, in consequence of the declarations made on 15 September 1999, he should order that the petty patent be revoked.

Conduct of appeal 44 The twenty-two page notice of appeal contains twenty-eight grounds of appeal. Although the appeal purports to be from the order dismissing paragraphs 1 - 6 of the notice of motion (as well as against the revocation order), the notice of motion is the subject of only two passing references in the notice of appeal. The first occurs in paragraph 16. Having in paragraph 15 attacked the primary judge's treatment of an issue in the principal judgment and asserted that declarations 1 - 5 made on 15 September 1999 were inappropriate, ground 16 claims that because of those errors his Honour "ought to have considered and acted upon the evidence filed with the Motion of 21 October 1999 making appropriate Orders on that Motion". The second reference is in paragraph 18 where it is claimed that the primary judge erred in finding that the decision not to call Grieves and Stack was a "tactical decision". The notice of appeal does not directly attack the primary judge's exercise of discretion under Order 35 subr 7(1) in refusing to set aside the earlier declarations. The bulk of the notice of appeal is devoted to the revocation order. But it attacks that order primarily by reference to alleged errors in the principal judgment. Thus in paragraph 3 it is claimed that in the primary judge's reasons of 15 September 1999 at [44] - [45] his Honour erred in the meaning he attributed to the words "the patentee" in par 28(1)(a) of the Act. In paragraph 10 it is claimed that the primary judge erred in those reasons at [53] in asking whether Stack was an "eligible person" within s 15 and in failing to ask whether GST was an "eligible person". Another claim is that the primary judge erred in striking out the appellants' witness statements and documents. In paragraph 28 it is claimed that the primary judge erred in not dismissing the cross claim for revocation. If the primary judge erred in the respects complained of, the errors were committed in the reasons for decision of 15 September. Those reasons are the subject of their own appeal (Q 243 of 1999) and have been dealt with in [2] to [35] above. The relief sought in the notice of appeal includes orders that: · the declarations made in September be set aside; · the decision of the Deputy Commissioner of Patents refusing to extend the term of the petty patent be reversed; · the term of the patent be extended; and · the cross-claim for revocation in QG 28 of 1994 be dismissed.

This relief is not available in the instant appeal.

45 On 31 May 2000 Cooper J gave directions as to the preparation of the appeals for hearing. One of them was that the parties file written submissions of not more than twenty-five pages. Presumably in order to avoid complying with this direction the appellants filed an eighty-six page "affidavit" sworn by Stack. It purports to be an affidavit, but is in fact a detailed exposition of the appellants' legal argument. In paragraph 170 the deponent asserts that the discretion not to declare GST an eligible person (as sought in the motion) was wrongly exercised. The appellants also relied on an Outline of Submissions in Reply in which exception is taken to the primary judge's statements that the decision not to call Grieves and Stack was a "tactical decision" and that the appellants' conduct "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".

46 The solicitor for the appellants made no submissions in chief about the dismissal of the notice of motion. Counsel for the Davies Shephard respondents relied substantially on written submissions dealing with that part of the appeal. The appellants' solicitor did not mention the matter in reply. In those circumstances, all we need say is that no case has been made for impugning the primary judge's exercise of discretion in refusing to set aside his earlier declarations. In our view the matters listed in [41] above amply justify the course his Honour took. It followed from the fact that the earlier declarations remained on foot that the order sought in paragraph 1 of the notice of motion and the consequential orders could not be made. GST was not an "eligible person" for the purposes of s 15 or s 34. 47 The primary judge noted that Russell Plastics was not itself an applicant for the relief sought in paragraph 2 of the notice of motion, but did not express a concluded view as to whether Stack and GST had standing to seek that relief. The primary judge said he was not satisfied on the basis of the material before him that Russell Plastics was an eligible person for the purposes of s 34. No attempt was made to persuade us that his Honour was wrong. In any event, s 34 could not support the relief sought in paragraph 2 of the notice of motion. As his Honour said, for the purposes of that section GST was not "a person other than the patentee". Further s 34 is plainly concerned with a patent that is still on foot. It was common ground that, if an extension of the term of the petty patent here in question had been granted, its term would have ended on 30 August 1997. The application for orders under s 34 was filed on 21 October 1999. 48 All that was said by the appellants in oral argument on this point was that the primary judge gave no "particular reasons" for revoking the patent. It is clear that his Honour regarded that order as appropriate in light of the declarations he had made in September. No attempt was made to persuade us that the revocation order should not have been made. In Stack's eighty-six page affidavit it is said that "there has never been a case where a good patent has been revoked on a basis as asserted that it ought to have been granted to A & B rather than B". Given the declarations that neither Stack (the patentee) nor GST (the registered patentee by assignment) was entitled to a grant, the refusal of a declaration that Russell Plastics was an eligible person in relation to the patent, and the dismissal of the claim that the patent be amended to record GST or Russell Plastics as patentee, we are not satisfied that his Honour was in error in revoking the petty patent.

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. 50 Stack and GST instituted these two appeals by filing, respectively, a notice of cross-appeal on 9 December 1999 and a notice of appeal on 31 May 2000. On those dates they also filed applications for leave to appeal under s 158(2) of the Act because some of the matters being heard concurrently by Cooper J involved appeals from decisions or directions of the Commissioner. Plainly no leave is required to appeal against the order revoking the petty patent, but to the extent that leave is required in respect of the other orders of Cooper J it should be given. The appeals will be dismissed with costs. I certify that the preceding fifty (50) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Court.

Associate: Dated: 4 May 2001 Mr A P Abaza Solicitor for George Stack and G S Technology Pty Ltd:

Counsel for Davies Shephard Pty Ltd, P McMurdo QC with GA Thompson SC Davies Shephard (Queensland) Pty Ltd and G S A Industries (Aust) Pty Ltd:

Solicitors for Davies Shephard Pty Ltd, Minter Ellison Davies Shephard (Queensland) Pty Ltd and G S A Industries (Aust) Pty Ltd:

Solicitors for Brisbane City Council: Brisbane City Council Legal Practice

Dates of Hearing: 17 and 18 August 2000

Date of Judgment: 4 May 2001