mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Re Application of Vouris and Anor (2004) 49 ACSR 543; [2004] NSWSC 384
Outcome: followed
first is the fact that the order is sought to be made prospectively, that is, a replacement in anticipation of a pending resignation. Counsel has referred me to several authorities which provide clear authority for reading the relevant section in that way, namely, Re Application of Vouris and Anor (2004) 49 ACSR 543; [2004] NSWSC 384 ; Re Wily and Anor (2003) 49 ACSR 94; [2003] NSWSC 1260 and Re McGrath and Anor (as liqs of HIH Insurance Ltd) (in liq) (2005) 54 ACSR 55; [2005] NSWSC 506. I am satisfied that there is power to make the order sought and there being power, it is clearly convenient to do so, subject to the other aspect. My concern in a nutshell is that the suspension of a liquidator may not achieve very much if the firm of which he is a member continues in practice, to do the work. My concern, however, is alleviated very considerably because counsel is able to point out that in the matters of both Vouris and Wily , to which I have referred, experienced corporations judges in the Supreme Court, Palmer J and Barrett J, have each permitted the replacement of one liquidator by another in very similar circumstances. Whilst there is no real discussion in those decisions of the point that troubles me, I am certain that it would not have escaped the attention of either of those judges. The fact that they made the respective appointments in question is an indication that in situations like this, because of the practical consequences, the judges have been prepared to rely upon the professional responsibility of the replacement liquidator. I am, therefore, in sound company in so doing.
Case: Re McGrath and Anor (as liqs of HIH Insurance Ltd) (in liq) (2005) 54 ACSR 55; [2005] NSWSC 506
Outcome: followed
first is the fact that the order is sought to be made prospectively, that is, a replacement in anticipation of a pending resignation. Counsel has referred me to several authorities which provide clear authority for reading the relevant section in that way, namely, Re Application of Vouris and Anor (2004) 49 ACSR 543; [2004] NSWSC 384 ; Re Wily and Anor (2003) 49 ACSR 94; [2003] NSWSC 1260 and Re McGrath and Anor (as liqs of HIH Insurance Ltd) (in liq) (2005) 54 ACSR 55; [2005] NSWSC 506. I am satisfied that there is power to make the order sought and there being power, it is clearly convenient to do so, subject to the other aspect.
Case: Re Wily and Anor (2003) 49 ACSR 94; [2003] NSWSC 1260
Outcome: followed
first is the fact that the order is sought to be made prospectively, that is, a replacement in anticipation of a pending resignation. Counsel has referred me to several authorities which provide clear authority for reading the relevant section in that way, namely, Re Application of Vouris and Anor (2004) 49 ACSR 543; [2004] NSWSC 384 ; Re Wily and Anor (2003) 49 ACSR 94; [2003] NSWSC 1260 and Re McGrath and Anor (as liqs of HIH Insurance Ltd) (in liq) (2005) 54 ACSR 55; [2005] NSWSC 506. I am satisfied that there is power to make the order sought and there being power, it is clearly convenient to do so, subject to the other aspect. My concern in a nutshell is that the suspension of a liquidator may not achieve very much if the firm of which he is a member continues in practice, to do the work. My concern, however, is alleviated very considerably because counsel is able to point out that in the matters of both Vouris and Wily , to which I have referred, experienced corporations judges in the Supreme Court, Palmer J and Barrett J, have each permitted the replacement of one liquidator by another in very similar circumstances. Whilst there is no real discussion in those decisions of the point that troubles me, I am certain that it would not have escaped the attention of either of those judges. The fact that they made the respective appointments in question is an indication that in situations like this, because of the practical consequences, the judges have been prepared to rely upon the professional responsibility of the replacement liquidator. I am, therefore, in sound company in so doing.
Case: American Electrical Novelty &amp; Manufacturing Co v Newgold , 108 F 957 (1901) aff'd 113 F 877 (1902)
Outcome: cited
The application of these principles leads inevitably to the following rules which, I am entitled to assume, were likely known to Mr Higgins. First, a valid patent can only be granted to the real inventor and if there be more than one inventor it must be granted to all: Thomas v Weeks , 2 Paine 92 (1827); Barrett v Hall , 2 F Cas 914 (1818); Carter v Perry , 8 OG 518 (1875). Second, in the case of a joint invention, a patent issued to only one of the inventors is void: Ex parte Barsaloux, James and Lyon , 16 OG 233 (1878); American Electrical Novelty &amp; Manufacturing Co v Newgold , 108 F 957 (1901) aff'd 113 F 877 (1902). Third, a patent issued in the names of joint patentees will, unless all of them are the inventors, also be void: Stewart v Tenk , 32 F 665 (1887); Hotchkiss v Greenwood , 12 F Cas 551 (1848); Welsbach Light Co v Cosmopolitan Incandescent Gaslight Co , 100 F 648 (1900). See also W Robinson, The Law of Patents , vol 1 (1890) 570-573.
Case: Agawam Company v Jordan , 74 US 583 (1868)
Outcome: discussed
The final case from the Supreme Court is Agawam Company v Jordan , 74 US 583 (1868). It is a leading case. There is a passage in the judgment of Justice Clifford which is regarded as a classic statement of the applicable principle. It reads (at 602-603): "No one is entitled to a patent for that which he did not invent unless he can show a legal title to the same from the inventor or by operation of law; but where a person has discovered an improved principle in a machine, manufacture, or composition of matter, and employs other persons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general to be regarded as the property of the party who discovered the original improved principle, and may be embodied in his patent as a part of his invention. Suggestions from another, made during the progress of such experiments, in order that they may be sufficient to defeat a patent subsequently issued, must have embraced the plan of the improvement, and must have furnished such information to the person to whom the communication was made that it would have enabled an ordinary mechanic, without the exercise of any ingenuity and special skill on his part, to construct and put the improvement in successful operation."
Case: Barrett v Hall , 2 F Cas 914 (1818)
Outcome: cited
The application of these principles leads inevitably to the following rules which, I am entitled to assume, were likely known to Mr Higgins. First, a valid patent can only be granted to the real inventor and if there be more than one inventor it must be granted to all: Thomas v Weeks , 2 Paine 92 (1827); Barrett v Hall , 2 F Cas 914 (1818); Carter v Perry , 8 OG 518 (1875). Second, in the case of a joint invention, a patent issued to only one of the inventors is void: Ex parte Barsaloux, James and Lyon , 16 OG 233 (1878); American Electrical Novelty &amp; Manufacturing Co v Newgold , 108 F 957 (1901) aff'd 113 F 877 (1902). Third, a patent issued in the names of joint patentees will, unless all of them are the inventors, also be void: Stewart v Tenk , 32 F 665 (1887); Hotchkiss v Greenwood , 12 F Cas 551 (1848); Welsbach Light Co v Cosmopolitan Incandescent Gaslight Co , 100 F 648 (1900). See also W Robinson, The Law of Patents , vol 1 (1890) 570-573.
Case: Carter v Perry , 8 OG 518 (1875)
Outcome: cited
The application of these principles leads inevitably to the following rules which, I am entitled to assume, were likely known to Mr Higgins. First, a valid patent can only be granted to the real inventor and if there be more than one inventor it must be granted to all: Thomas v Weeks , 2 Paine 92 (1827); Barrett v Hall , 2 F Cas 914 (1818); Carter v Perry , 8 OG 518 (1875). Second, in the case of a joint invention, a patent issued to only one of the inventors is void: Ex parte Barsaloux, James and Lyon , 16 OG 233 (1878); American Electrical Novelty &amp; Manufacturing Co v Newgold , 108 F 957 (1901) aff'd 113 F 877 (1902). Third, a patent issued in the names of joint patentees will, unless all of them are the inventors, also be void: Stewart v Tenk , 32 F 665 (1887); Hotchkiss v Greenwood , 12 F Cas 551 (1848); Welsbach Light Co v Cosmopolitan Incandescent Gaslight Co , 100 F 648 (1900). See also W Robinson, The Law of Patents , vol 1 (1890) 570-573.
Case: Clothworkers of Ipswich Case, The (1615) 1 Godb 252
Outcome: cited
The patent system in England had its origins in the royal grants by which monopolies in trade and manufacture were conferred by the Crown in the exercise of the prerogative. These monopolies were granted to "any man [who] by his own charge and industry, or by his own wit or invention, doth bring any new trade into the realm": Darcy v Allin (1602) Noy 173, 182. In his Institutes , Sir Edward Coke said: "The reason wherefore such a privilege is good in law is because the inventor bringeth to and for the common wealth a new manufacture by his invention, costs and charges, and therefore it is reason, that he should have a privilege for his reward (and the encouragement of others in the like) for a convenient time": 3 Coke's Institutes 184. The monopoly could be granted not only to the inventor but also to the person who first brought the new invention into England: The Clothworkers of Ipswich Case (1615) 1 Godb 252; Shepherd's Abridgment , Pt III, Prerog, 61; Hawkins Pleas of the Crown , vol 1, c 29, s 20.
Case: Darcy v Allin (1602) Noy 173
Outcome: cited
The patent system in England had its origins in the royal grants by which monopolies in trade and manufacture were conferred by the Crown in the exercise of the prerogative. These monopolies were granted to "any man [who] by his own charge and industry, or by his own wit or invention, doth bring any new trade into the realm": Darcy v Allin (1602) Noy 173, 182. In his Institutes , Sir Edward Coke said: "The reason wherefore such a privilege is good in law is because the inventor bringeth to and for the common wealth a new manufacture by his invention, costs and charges, and therefore it is reason, that he should have a privilege for his reward (and the encouragement of others in the like) for a convenient time": 3 Coke's Institutes 184. The monopoly could be granted not only to the inventor but also to the person who first brought the new invention into England: The Clothworkers of Ipswich Case (1615) 1 Godb 252; Shepherd's Abridgment , Pt III, Prerog, 61; Hawkins Pleas of the Crown , vol 1, c 29, s 20.
Case: Davies Shephard Pty Ltd v Stack [2001] FCA 501 ; (2001) 51 IPR 513
Outcome: cited
Now it is clear that when Parliament enacted s 32 of the 1903 Act it intended that a patent would be granted only to the true (Parliament used the word "actual") inventor or a person claiming under him. In particular, "capitalists" could no longer take an interest in a patent, save as assignee. Nor could a patent be granted to the "importer" of an invention unless he had the consent of the inventor. Moreover, one necessary consequence of the adoption (with the limited exception of the importer with consent) of the US model was that a patent that was granted to one of two inventors was not granted to the "actual inventor". Nor was a patent granted to the "actual inventor" if it was granted jointly to two or more persons one of whom was not the inventor. The position must be the same under the 1990 Act for there is no material difference in language. This conclusion accords with the result in Davies Shephard Pty Ltd v Stack [2001] FCA 501 ; (2001) 51 IPR 513, although I have reached it by a different process of reasoning. 17 The respondents say that even if the grant be contrary to s 15, the patents in suit cannot be revoked. They put the argument as follows. First, the power to revoke is to be found in s 138(3). That sub-section provides that the court may revoke a patent on any of the following grounds: (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). The next step is that, seeing that it is permissible to issue a patent to joint inventors, the words "the patentee is" in s 138(3)(a) must, in the case of a joint grant, be read as "the patentees are" (see also s 23 of the Acts Interpretation Act 1901 (Cth)). The conclusion that is then said to follow is that a patent can only be revoked under paragraph (a) if all "the patentees [are] not entitled to the patent." 18 I do not agree with this construction of s 138(3)(a). I accept, as I obviously must, that in the case of a joint patent it is proper to read s 138(3)(a) as covering joint patentees. Nonetheless, such a reading does not carry the respondents' argument. If one of several patentees is not entitled to the patent, then it is still correct to say (as it would be in the case where none of the patentees were entitled) that "the patentees are not entitled to the patent".
Case: Earl of Devonshire's Case (1687) 11 Co 90
Outcome: cited
In any event, if s 138(3)(a) were not available to the applicant, it might rely on s 138(3)(d) and contend that if its assertions of fact are proven at trial the grant was obtained by "false suggestion or misrepresentation". As to the availability of false suggestion in the circumstances see Minter v Wells (1834) 1 WPC 127; R v Mussary (1834) 1 WPC 41; Earl of Devonshire's Case (1687) 11 Co 90.
Case: Ex parte Barsaloux, James and Lyon , 16 OG 233 (1878)
Outcome: cited
The application of these principles leads inevitably to the following rules which, I am entitled to assume, were likely known to Mr Higgins. First, a valid patent can only be granted to the real inventor and if there be more than one inventor it must be granted to all: Thomas v Weeks , 2 Paine 92 (1827); Barrett v Hall , 2 F Cas 914 (1818); Carter v Perry , 8 OG 518 (1875). Second, in the case of a joint invention, a patent issued to only one of the inventors is void: Ex parte Barsaloux, James and Lyon , 16 OG 233 (1878); American Electrical Novelty &amp; Manufacturing Co v Newgold , 108 F 957 (1901) aff'd 113 F 877 (1902). Third, a patent issued in the names of joint patentees will, unless all of them are the inventors, also be void: Stewart v Tenk , 32 F 665 (1887); Hotchkiss v Greenwood , 12 F Cas 551 (1848); Welsbach Light Co v Cosmopolitan Incandescent Gaslight Co , 100 F 648 (1900). See also W Robinson, The Law of Patents , vol 1 (1890) 570-573.
Case: Gibbons v Ogden , 22 US 1 (1824)
Outcome: discussed
In light of what was said by Mr Higgins during the debate on the 1903 Act, to ascertain the meaning of "inventor", as well as the intended effect of s 32, it is necessary to look at the "decisions in the United States" that Mr Higgins most likely had in mind. They are decisions which consider the Patents clause of the US Constitution , Art I SS 8 , cl 8 (giving Congress the power to secure to "inventors" the "exclusive right to their discoveries") and, in some instances, the early US patent statutes (under which a patent could be granted to the person who "hath or have invented or discovered" (1790), or had "invented" (1793), or had "discovered or invented" (1836), a new and useful art). There are three decisions of the US Supreme Court that are likely candidates. The first is Gibbons v Ogden , 22 US 1 (1824). This was not a patent case but it did discuss the Patents clause in the following passage from the judgment of the court (at 58-59) delivered by Chief Justice Marshall: "The power, as granted in the constitution, is a limited power. It is a clear principle, that when the means of executing any given power are specified in the grant, Congress cannot take, by implication, any other means, as being necessary and proper to carry that power into execution. This power, then, is limited: (1) As to the persons and objects in regard to which it may be exercised: these are, 'authors and inventors, writings and discoveries.' This enumeration excludes all right in Congress to legislate on the subject of any improvement, which is not an 'invention', either domestic or foreign. It excludes also all right to legislate for the benefit of any person who is not himself 'the inventor'. (2) As to the means of executing the power, and the time during which those means may be exercised. They are by 'securing the exclusive right for limited times.'"
Case: Hotchkiss v Greenwood , 12 F Cas 551 (1848)
Outcome: cited
The application of these principles leads inevitably to the following rules which, I am entitled to assume, were likely known to Mr Higgins. First, a valid patent can only be granted to the real inventor and if there be more than one inventor it must be granted to all: Thomas v Weeks , 2 Paine 92 (1827); Barrett v Hall , 2 F Cas 914 (1818); Carter v Perry , 8 OG 518 (1875). Second, in the case of a joint invention, a patent issued to only one of the inventors is void: Ex parte Barsaloux, James and Lyon , 16 OG 233 (1878); American Electrical Novelty &amp; Manufacturing Co v Newgold , 108 F 957 (1901) aff'd 113 F 877 (1902). Third, a patent issued in the names of joint patentees will, unless all of them are the inventors, also be void: Stewart v Tenk , 32 F 665 (1887); Hotchkiss v Greenwood , 12 F Cas 551 (1848); Welsbach Light Co v Cosmopolitan Incandescent Gaslight Co , 100 F 648 (1900). See also W Robinson, The Law of Patents , vol 1 (1890) 570-573.
Case: JMBV Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474
Outcome: cited
The respondents also contend that, having regard to the use of the present tense in s 138(3)(a), a condition precedent to a revocation order is a finding that the patentees were not entitled to the patent at the time of the application for revocation (or perhaps at the time of the hearing). I am far from persuaded that this construction is correct and it seems to be contrary to the views of Cooper J in Stack v Brisbane City Council (1999) 47 IPR 525, 536 and Crennan J in JMBV Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474 , [130]-[131]. But even if this construction were correct, the way in which I would read the section is that if a person were not entitled to the patent at the time of grant then, at least in most cases, that non-entitlement would be (as here) a continuing state of affairs. So there is really nothing in the point.
Case: Jones v Pearce (1831) 1 WPC 121
Outcome: cited
The first statute which regulated the grant and sole use and exercise of an invention was the now famous Statute of Monopolies, 21 Jac 1, c 3. By this statute, which was declaratory of the common law, it was provided, in the sixth section, that a patent could be granted to the "true and first inventor or inventors" of any new manufacture. The inventor was the person who made the discovery; that is, the idea for it originated in his own mind: Jones v Pearce (1831) 1 WPC 121, 124. The inventor was also the person who first introduced the invention into the realm: Edgeberry v Stephens (1693) 2 Salk 447. It sometimes was said that the grant to a person not the inventor but the importer of the invention should be regarded "as a sort of anomalous decision": Marsden v Saville Street Foundry and Engineering Co, Ltd (1878) 3 Ex D 203, 205 per Jessel MR.
Case: Kennedy v Hazelton , 128 US 667 (1888)
Outcome: discussed
The second case is Kennedy v Hazelton , 128 US 667 (1888). This was an action for the specific performance of an agreement to assign a patent. The defendant, however, was not the true inventor. The action failed. Justice Gray delivered the opinion of the court. He said (at 672): "The patent law makes it essential to the validity of a patent, that it shall be granted on the application, supported by the oath, of the original and first inventor, (or of his executor or administrator,) whether the patent is issued to him or to his assignee. A patent which is not supported by the oath of the inventor, but applied for by one who is not the inventor, is unauthorized by law, and void, and, whether taken out of the name of the applicant or of any assignee of his, confers no rights as against the public."
Case: Edgeberry v Stephens (1693) 2 Salk 447
Outcome: cited
The first statute which regulated the grant and sole use and exercise of an invention was the now famous Statute of Monopolies, 21 Jac 1, c 3. By this statute, which was declaratory of the common law, it was provided, in the sixth section, that a patent could be granted to the "true and first inventor or inventors" of any new manufacture. The inventor was the person who made the discovery; that is, the idea for it originated in his own mind: Jones v Pearce (1831) 1 WPC 121, 124. The inventor was also the person who first introduced the invention into the realm: Edgeberry v Stephens (1693) 2 Salk 447. It sometimes was said that the grant to a person not the inventor but the importer of the invention should be regarded "as a sort of anomalous decision": Marsden v Saville Street Foundry and Engineering Co, Ltd (1878) 3 Ex D 203, 205 per Jessel MR.
Case: Marsden v Saville Street Foundry and Engineering Co, Ltd (1878) 3 Ex D 203
Outcome: cited
The first statute which regulated the grant and sole use and exercise of an invention was the now famous Statute of Monopolies, 21 Jac 1, c 3. By this statute, which was declaratory of the common law, it was provided, in the sixth section, that a patent could be granted to the "true and first inventor or inventors" of any new manufacture. The inventor was the person who made the discovery; that is, the idea for it originated in his own mind: Jones v Pearce (1831) 1 WPC 121, 124. The inventor was also the person who first introduced the invention into the realm: Edgeberry v Stephens (1693) 2 Salk 447. It sometimes was said that the grant to a person not the inventor but the importer of the invention should be regarded "as a sort of anomalous decision": Marsden v Saville Street Foundry and Engineering Co, Ltd (1878) 3 Ex D 203, 205 per Jessel MR.
Case: Minter v Wells (1834) 1 WPC 127
Outcome: cited
In any event, if s 138(3)(a) were not available to the applicant, it might rely on s 138(3)(d) and contend that if its assertions of fact are proven at trial the grant was obtained by "false suggestion or misrepresentation". As to the availability of false suggestion in the circumstances see Minter v Wells (1834) 1 WPC 127; R v Mussary (1834) 1 WPC 41; Earl of Devonshire's Case (1687) 11 Co 90.
Case: R v Mussary (1834) 1 WPC 41
Outcome: cited
In any event, if s 138(3)(a) were not available to the applicant, it might rely on s 138(3)(d) and contend that if its assertions of fact are proven at trial the grant was obtained by "false suggestion or misrepresentation". As to the availability of false suggestion in the circumstances see Minter v Wells (1834) 1 WPC 127; R v Mussary (1834) 1 WPC 41; Earl of Devonshire's Case (1687) 11 Co 90.