Case: Stack v Davis Shephard Pty Ltd [2001] FCA 501 ; (2001) 51 IPR 513
Outcome: followed
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 . 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.