FEDERAL COURT OF AUSTRALIA

University of British Columbia v Conor Medsystems, Inc [2006] FCAFC 154

INTELLECTUAL PROPERTY – Patents – joint patentees – whether patent is invalid and to be revoked on the basis that the patentee is not entitled to the patent – whether the patentees derived title to the patent from an inventor

PRACTICE AND PROCEDURE – separate question – question reformulated on appeal – whether Full Court should determine either original or reformulated question

Acts Interpretation Act 1901 (Cth) s 23

Federal Court Rules order 29 rule 2

Patents Act 1990 (Cth) ss 3, 15, 16, 17, 18, 29, 31, 32, 33, 34, 35, 36, 40, 44, 45, 49, 59, 60, 61, 63, 104, 113, 138, 143, 186, 187, 189, 192

Patents Regulations 1991 (Cth) reg 3.1, 3.18

Patents Act 1977 (UK) s72

Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543 referred to

Stack v Davies Shephard Pty Ltd (2001) 108 FCR 422 referred to

THE UNIVERSITY OF BRITISH COLUMBIA & ANOR v CONOR MEDSYSTEMS, INC

VID104 OF 2006

EMMETT, STONE & BENNETT JJ

31 OCTOBER 2006

SYDNEY (HEARD IN MELBOURNE)

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

THE COURT ORDERS THAT:

1.                  Order 9 made on 22 September 2005 and Orders 1 and 2 made on 3 February 2006 in proceeding VID 254 of 2005 be set aside.

2.                  The costs of the preliminary question and the costs of the appeal be the parties’ costs of the proceeding.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT

EMMETT J:

1                     This appeal raises questions concerning the meaning of s 138(3)(a) of the Patents Act 1990 (Cth) (‘the Act’). Section 138(3)(a) relevantly provides that the Court may revoke a patent on the ground that the patentee is not entitled to the patent. The appellants, the University of British Columbia (‘UBC’) and Angiotech Pharmaceuticals, Inc (‘Angiotech’), are joint patentees of three Australian patents. The respondent to the appeal, Conor Medsystems, Inc (‘Conor’), has commenced a proceeding for revocation of the three patents. It relies upon a number of grounds, including the ground referred to in s 138(3)(a). The same issue arises in relation to each of the three patents and it is convenient to deal with only one of them, namely Australian Patent No. 693797 (‘the Patent’).

ALLEGED GROUND OF INVALIDITY

2                     By its Further Amended First Particulars of Invalidity, dated 26 September 2005 (‘the Invalidity Particulars’), Conor formulated the ground of revocation of the Patent based on s 138(3)(a) as follows:

‘7. The … Patent is invalid and liable to be revoked insofar as [it is not clear if one or either of the co-patentees] was entitled to the …Patent within the meaning of section 138(3)(a) of [the Act].

PARTICULARS

7.1 As at the date of grant of the … Patent, the listed patentee(s) was/were …UBC and … Angiotech.

7.2 The Notice of Entitlement dated 2 February 1996 filed in Australia in relation to the … Patent represented that UBC was entitled to the grant of the Patent because it derived title from the alleged inventors Helen Burt and John Jackson.

7.3 Helen Burt and John Jackson made no contribution to the alleged invention claimed in any of the claims of the … Patent and UBC was not entitled to claim a right to co-ownership of any of the claims of the … Patent by virtue of its having “derived title” from Helen Burt and John Jackson by an alleged assignment.

FURTHER PARTICULARS

(a) The … Patent was derived from a national phase filing of International Patent Application No. PCT/CA94/00373 (the “PCT Application”) filed on 19 July 1994. The PCT Application claims priority from U.S.S.N. 08/094.536 (the “Priority ‘536 Application”) filed on 19 July 1993.

(b) The Priority ‘536 Application listed William Hunter, Lindsay Machan (a UBC employee) and Larry Arsenault (a McMaster’s University employee) as the only inventors, and Angiogenesis Technologies, Inc. (the predecessor of Angiotech Pharmaceuticals, Inc.) as the sole assignee.

(c) The ownership of Priority ’536 Application was acknowledged in the recitals of 2 separate Research Agreements discovered in this proceeding and designated “confidential” between Angiotech and UBC dated 21 October 1993 and 1 February 1994 respectively which both stated:

A US Patent, entitled “Anti-Angiogenic Compositions and Methods”, has been applied for by [Angiotech] and is owned by [Angiotech] and shall be considered Prior Technology for the sake of this Agreement.

(d) Document 1 of the Respondents’ discovered documents is a fax from Helen Burt to Natalie Dakers of UBC. The document, titled “Corporate Overview,” states on page 7 that the inventors listed on the Priority ‘536 Application are Hunter, Arsenault, and Machan, and that “all technology disclosed in this patent application is the sole property of the Company [Angiotech]”.

(e) On 19 July 1994, the PCT Application was filed in the name of Angiotech and UBC and named William Hunter, Lindsay Machan, Larry Arsenault, Helen Burt and John Jackson as inventors. It claimed priority from the Priority ‘536 Application.

(f) The Notice of Entitlement dated 2 February 1996 filed in relation to the … Patent represented that:

(i) UBC was entitled to the grant of the patent because it derived title from the alleged inventors Helen Burt and John Jackson; and

(ii) Angiotech was entitled to the grant of the patent because it derived title from the alleged inventors William Hunter, Lindsay Machan and Larry Arsenault.

(g) During prosecution of the … Patent before the Australian Patent Office the claims of the PCT Application were deleted and replaced with the claims that were ultimately granted. …

(h) U.S. Patent No. 5,716,981 (the “US Patent”), through a chain of applications, is based on the Priority ‘536 Application and names William Hunter, Lindsey Machan, and Larry Arsenault as the only inventors and Angiotech as the sole assignee. The scope of the US Patent claims is essentially equivalent to those granted in the … Patent.

(i) The US Patent’s file history reveals that the claims and inventors were changed during prosecution.

(i) On 3 April 1995, a US Continuation in Part Application (08/417160) (the “CIP Application”) was filed from the Priority ‘536 Application. The CIP Application added Burt, Jackson and Stephen Dordunoo as inventors, in addition to the named inventors from the ‘536 Application being Hunter, Machan and Arsenault.

(ii) On 7 June 1995, a US Divisional Application (08/478203) (‘the “DIV Application”) was filed from the CIP Application. The DIV Application cancelled all but one of the claims from the CIP. The claim that was not cancelled, claim 18, was directed to “a stent comprising a generally tubular structure, the surface of which is coated with a composition comprising an anti-angiogenic factor and a polymeric carrier.” This claim is similar to claim 15 of the Priority ‘536 Application.

(iii) On the same day, 7 June 1995, a petition was also filed to remove Helen Burt, John Jackson and Stephen Dordunoo because the cancelled claims resulted in their:

Contributions to [that] application… no longer being claimed.

(iv) On 17 May 1996, Angiotech filed a request to delete the one remaining claim and to replace it with a further set of claims …. The US Patent issued on 10 February 1998 with this further set of claims. There was no request to add Burt or Jackson as inventors with the submission of this claim set.

(j) … the granted … Patent … includes Burt and Jackson as inventors, …the granted US Patent … does not include Burt and Jackson as inventors. The claims are equivalent.

(k) Furthermore, the …Patent and the US Patent were granted to different patentees:

(i) The … Patent was granted to Angiotech and UBC; and

(ii) The US Patent was only granted to Angiotech.

(l) Given the equivalence of the claims of the US Patent and the … Patent and the respective prosecution histories of the patents with respect to Helen Burt and John Jackson’s role as inventors, it is evident that the inventorship of, and thus the entitlement to, the US Patent and the … Patent are contradictory.

7.4 By reason of the matters set out above, the patentee is not, or in the alternative, the patentees are not, entitled to the … Patent so far as claimed in each of the claims.’

THE PRELIMINARY QUESTION

3                     On 20 September 2005, a judge of the Court ordered, pursuant to Order 29 rule 2 of the Federal Court Rules, that the following question be determined separately from, and prior to, all other questions in the proceeding:

‘Do the facts particularised under paragraph 7 of the [Invalidity Particulars] if assumed to be established by evidence, support a finding that the… Patent [is] liable to be revoked pursuant to section 138(3)(a) of the [Act].’

On 3 February 2006, his Honour ordered that that question be answered ‘Yes’ and ordered UBC and Angiotech to play Conor’s costs of that determination. UBC and Angiotech have now appealed from those orders, pursuant to leave granted by his Honour on 24 February 2006.

4                     Having regard to the somewhat unsatisfactory form of paragraph 7 of the Invalidity Particulars as a statement of facts, the present Full Court considered it desirable to direct the parties to formulate, with greater clarity, the facts to be assumed by the Full Court in considering the question. That direction was given in the context of concern as to the appropriateness of answering the question at this stage of the proceeding, having regard to the arguments advanced on behalf of UBC and Angiotech on the hearing of the appeal. Those arguments went beyond the arguments advanced before the primary judge.

5                     The present Full Court has now heard argument on the question of whether, if the facts stated below are assumed to be established by evidence and there are no other facts established concerning entitlement to the Patent, those facts support a finding that the Patent is liable to be revoked pursuant to s 138(3)(a) of the Act:

• International Patent Application PCT/CA94/00373 (‘the PCT Application’) was filed on 19 July 1994.
• Prior to grant of the Patent, the PCT Application identified Angiotech and UBC as the persons to whom the Patent was to be granted and named William Hunter, Lindsay Machan, Larry Arsenault, Helen Burt and John Jackson as inventors.
• Prior to grant of the Patent, the claims of the PCT Application were deleted and new claims were substituted in the form as granted by the Patent.
• No steps were taken to remove UBC as a nominated person following that substitution of claims.
• Burt and Jackson made no contribution to the alleged invention as claimed in any of the claims of the Patent as granted.
• Prior to grant of the Patent, Burt and Jackson assigned their interest in the invention as claimed in the PCT Application to UBC.
• Hunter, Machan and Arsenault are the only persons who made a contribution to the alleged invention as claimed in the claims of the Patent as granted.
• Prior to grant of the Patent, Hunter, Machan and Arsenault assigned their interest in the invention as claimed in the PCT Application to Angiotech.
• The Patent was granted to UBC and Angiotech jointly and named Hunter, Machan, Arsenault, Burt and Jackson as inventors.

THE SCHEME OF THE ACT

6                     The question that arises under s 138(3)(a) is whether a patent should be revoked, either wholly, or so far as it relates to a particular claim, on the ground that the patentee is not entitled to that patent. Under s 3 of the Act, patentee means the person for the time being entered in the Register as the grantee or proprietor of a patent.

7                     The question in this case is whether the patentee, namely UBC and Angiotech jointly, is not entitled to the Patent, so as to attract s 138(3)(a). That raises a primary question as to the construction of s 138(3)(a) of the Act, which must be decided by considering s 138(3) in its context in the whole of the Act. It is therefore desirable to say something of the scheme of the Act as presently relevant.

8                     Section 15(1) relevantly provides that, subject to the 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 personal representative of a deceased person mentioned in paragraph (a), (b), or (c).

9                     Under s 16(1), subject to any agreements to the contrary, where there are two or more patentees each of them is entitled to an equal undivided share in the patent. Section 17 also recognises that there can be two or more patentees. Under s 17(1), where there are two or more patentees, the Commissioner may give such directions as the Commissioner thinks fit about dealing with the relevant patent, the grant of licences under the patent or the exercise of a right under s 16 in relation to the patent.

10                  Section 29(1) provides that a person may apply for a patent for an invention by filing a patent request and such other documents as are prescribed. Under s 3, patent request means a request for the grant of a patent to a nominated person. Nominated person is defined by s 3 to meanthe person identified in a patent request as the person to whom the patent is to be granted. Under s 29(2), an application may be a provisional application or a complete application. The Patents Regulations 1991 (Cth) (‘the Regulations’) were made under the Act. Under reg 3.1(2), if a complete application is made, the documents that are required to be filed include a notice by the applicant stating the entitlement of the nominated person for the grant of the relevant patent.

11                  Under s 31 of the Act, two or more persons may make a joint patent application. Section 32 provides that, if a dispute arises between any two or more interested parties, the Commissioner may make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the interested parties or for regulating the manner in which it is to proceed, as the case requires. Under s 3, interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person.

12                  Under s 44(1), where a complete application for a patent has been made, the applicant may ask for an examination of the patent request and specification. Under s 44(2), the Commissioner may direct the applicant to ask for such an examination. Under s 44(3), where the patent request and specification are open to public inspection, a person may require the Commissioner to direct the applicant to ask for such an examination and, under s 44(4), the Commissioner must give a direction accordingly.

13                  Under s 45(1), where an applicant asks for an examination, the Commissioner must examine the request and specification and report on such matters as are prescribed. Under reg 3.18(2), the Commissioner must report on whether, to the best of the knowledge of the Commissioner, the request and specification complied with various provisions of the Act, including s 15. The implication is that the Commissioner is to examine the notice of entitlement to see whether that discloses a person who, under s 15(1), may be granted a patent. The provisions of the Regulations, of course, can only have very limited relevance to the question of the construction of the Act.

14                  Section 49(1) then provides that the Commissioner must accept a patent request and complete specification relating to an application for a standard patent if the Commissioner is satisfied that the invention satisfies the criteria in s 18(1)(b) of the Act and the Commissioner considers that there is no lawful ground of objection to the request that has not been removed. Under s 49(5), where the Commissioner accepts a patent request and complete specification relating to an application for a standard patent, the Commissioner must publish a notice of the acceptance in the Official Journal.

15                  Section 59 of the Act provides that any person may oppose the grant of a standard patent on the ground, inter alia, that the nominated person is either:

(i) not entitled to a grant of a patent for the invention; or

(ii) entitled to a grant of a patent for the invention but only in conjunction with some other person.

Section 60(1) provides that, where the grant of a patent is opposed, the Commissioner must decide the case in accordance with the Regulations. Under s 60(2), the applicant and the opponent must be given a reasonable opportunity to be heard and s 60(3) authorises the Commissioner to take into account any ground upon which the grant of a patent may be opposed, whether relied upon by the opponent or not. Section 60(4) provides that the appellant or the opponent may appeal to the Federal Court against a decision of the Commissioner.

16                  Section 33 deals with the circumstances where the grant of a patent is opposed under s 59 by one or more persons. The Commissioner may, after decision under s 60, grant a patent jointly to such of the nominated persons and opponents as the Commissioner decides are eligible persons. Eligible person is defined in s 3 as a person to whom a patent for an invention may be granted under s 15.

17                  Section 61(1) provides that the Commissioner must grant a standard patent if there is no opposition to the grant or, in spite of opposition, the Commissioner’s decision, or the decision on appeal, is that a standard patent should be granted. Under s 63, which is headed ‘Joint Patentees’, a patent may be granted to two or more nominated persons jointly.

18                  Under s 3 of the Act, Register means the Register of Patents mentioned in s 186. Section 186(1) provides that a Register of Patents is to be kept at the Patent Office. Section 187(1) provides that particulars of standard patents in force, and other prescribed particulars relating to standard patents (if any), must be registered in that part of the Register dealing with standard patents. Under s 189(1), a patentee may deal with a patent as the absolute owner of it and give good discharges for any consideration for any such dealing.

19                  Section 192(1) provides that a person aggrieved by inter alia:

may apply to a prescribed court for an order to rectify the Register. Under s 192(2), on hearing an application, the court may decide any question that it is necessary or expedient to decide in connection with the rectification of the Register and make any order it thinks fit for the rectification of the Register. Under s 192(5), on receiving an office copy of an order, the Commissioner must rectify the Register accordingly.

SECTION 138(3)(a) OF THE ACT

20                  Section 138(3)(a), in stating when a patent should be revoked, either wholly or so far as it relates to a particular claim, uses the present tense, namely, ‘the patentee is not entitled to the patent’. The meaning of s 138(3)(a) is informed by the structure of s 138(3) generally, which refers to certain prerequisites for the grant of a patent. In that regard, s 138(3) mirrors s 59 of the Act in some respects.

21                  Section 59 provides that any person may oppose the grant of a patent on one or more of the following grounds, but on no other ground:

(a) that the nominated person is either not entitled to a grant or is entitled to a grant but only in conjunction with some other person;

(b) the invention is not a patentable invention;

(c) the specification filed in respect of the application does not comply with ss 40(2) or 40(3).

Section 138(3) is relevant only after a patent has been granted. It states the grounds upon which a patent may be revoked. The grounds are as follows:

(a) the patentee is not entitled to the patent;

(b) the invention is not a patentable invention;

(d) the patent was obtained by fraud, false suggestion or misrepresentation;

(e) an amendment of the patent request or the complete specification was made or obtained by a fraud, false suggestion or misrepresentation;

(f) the specification does not comply with ss 40(2) or 40(3).

22                  Thus, ss 59(b) and 138(3)(b) both refer to the ground that an invention is not a patentable invention. That clearly refers to s 18 of the Act, which specifies when an invention is a patentable invention. Sections 59(c) and 138(3)(f) both refer expressly to non-compliance with s 40, which contains prerequisites for a complete specification and the claims of the complete specification. Section 138(3)(d) and (e) refer to fraud, false suggestion and misrepresentation. There is no express provision of the Act that prohibits the employment of fraud, false suggestion or misrepresentation in the course of obtaining a patent or making or obtaining an amendment: there is no need to do so.

23                  More particularly, s 59(a) refers to a person not being entitled to a grant and s 138(3)(a) refers to a patentee not being entitled to a patent. It is clear that the reference in s 59(a) and in s 138(3)(a) to a person not being entitled, either to a grant of a patent or to a patent, is a reference to a prerequisite of the Act. The prerequisite can only be that contained in s 15(1) of the Act. In the context of the scheme of the Act as outlined above, the reference, in the present tense, to a patentee not being entitled to a patent, must be a reference to the notion that the patent in question ought not to have been granted to the patentee named in the Register, for a reason other than those referred to in paragraphs (b), (d), (e) and (f) of s 138(3).

24                  Further, s 138(3)(a) must refer to being entitled at a point in time anterior to the grant of a patent. If s 138(3)(a) has work to do, it cannot be sufficient to say that a patentee is entitled to a patent simply because the patent has been granted to that patentee. Thus, s 138(3)(a) must refer to a patentee’s having been entitled to have the patent in question granted to that patentee. That is consistent with the language of s 59(a).

THE APPELLANTS’ CONTENTIONS

25                  The effect of s 15 is that a patent may only be granted to a person mentioned in s 15(1). The proviso in the introductory phrase of s 15(1) indicates that there may be other provisions of the Act that have the effect that a patent may be granted to a person who is not referred to in paragraphs (a), (b), (c) or (d). The appellants point to s 63 as providing an exception to s 15(1). The appellants contend that the effect of s 63 is that, notwithstanding the prerequisite of s 15(1), a patent can be granted to two or more nominated persons jointly, one or more of whom is not a person mentioned in s 15(1).

26                  The argument seems to run along the lines that Angiotech is a person referred to in s 15(1). Therefore, Angiotech and UBC, considered jointly, fall within s 15(1). That is to say, since Angiotech and UBC are jointly entered in the Register as the grantee or proprietor of the Patent, so long as Angiotech was entitled to the grant of the Patent, Angiotech and UBC jointly were entitled to the grant of the Patent. By being identified jointly in a patent request as the person to whom the Patent was to be granted, the prerequisite of s 15(1) was satisfied.

27                  The appellants contend that significance must be attached to the fact that Angiotech and UBC became joint applicants for the Patent. The appellants would paraphrase the question as whether, on the facts to be assumed, Angiotech and UBC, considered jointly, are entitled to the Patent. That is to say, at some stage prior to grant, both Angiotech and UBC were identified in the patent request as persons to whom the Patent was to be granted and were, accordingly, nominated persons for the purposes of the Act.

28                  The appellants point to the fact that each of the inventors named in the Patent assigned his or her rights in respect of the invention to one or other of Angiotech and UBC. When Angiotech and UBC became joint applicants, each brought its own relevant rights. Considered jointly, so the argument runs, Angiotech and UBC had the totality of rights from each and all of the named inventors. Angiotech and UBC jointly derived title to the invention of the Patent as granted from those inventors and thus satisfied the requirements of s 15(1)(c). They say that it does not matter that two of the five named inventors made no contribution to the invention as claimed in the Patent as granted. All the rights of the inventors who contributed to the invention passed to the patentee, namely Angiotech and UBC jointly. There is no other person with a valid claim to be named as inventor and no outside person with a valid claim to be named jointly as patentee. They say that it does not matter that, in the events that happened, two of the inventors who purported to assign rights in respect of the invention, had nothing to assign in respect of the claims of the invention of the Patent as granted.

29                  Thus, the appellants contend that UBC derives title to the invention of the Patent, as granted, from the inventors, through Angiotech. The juridical act that had the effect of vesting title in UBC was UBC’s being identified in the relevant patent request as a person to whom the Patent was to be granted.

30                  The appellants contend that, on a true analysis of the facts as assumed, they were jointly entitled to all relevant rights from the time of the PCT Application down to the time of grant of the Patent. Burt and Jackson made contributions to the claims as they were made in the PCT Application. They therefore had an interest in the invention as it was described in the PCT Application that was capable of assignment to UBC. The appellants contend that the question is whether they, considered together, are entitled to the Patent and not whether either of them, considered in isolation, is entitled to the Patent.

ANSWER TO THE SEPARATE QUESTION

31                  Of course, if UBC were a person who derives title to the invention of the Patent from the inventor of the Patent, whoever that may be, s 15 would be satisfied and that would be an end of the matter. However, on the facts assumed, Hunter, Machan and Arsenault are the inventors of the invention of the Patent, as granted, but there is no evidence of any chain of title from Hunter, Machan and Arsenault to UBC. Nevertheless, UBC contends that it falls within s 15(1)(c) by reason of its being, jointly with Angiotech, a nominated person in the relevant patent request. For the purposes of this question, Angiotech is to be assumed to be a person who derives title to the invention from the inventors and UBC was so identified, with the consent of Angiotech.

32                  The Act makes clear that joint applicants are to be treated as separate entities; similarly, joint patentees are treated as separate entities. Thus, s 63 clearly recognises that two or more nominated persons are to be regarded as separate entities. That is wholly consistent with the language of ss 16, 17, 31 and 32. Merely being identified as a nominated person in a patent request does not of itself give rise to any title to the invention so as to satisfy s 15(1)(c). Simply being a nominated person does not, without something more, bring that person within s 15(1) (see Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543 at 549 and following).

33                  The appellants originally contended that, if only one of two patentees is entitled to a patent, and there is no other person who is entitled to the patent, it is correct to say that the patentee is entitled to the patent for the purpose of s 138(3)(a). They also contended that, where there are two or more patentees, the ground of revocation under s 138(3)(a) can only be made out if it is established that each of the patentees is not entitled to the patent. However, those contentions were abandoned in the course of the hearing of the appeal. In so far as the appellants contend that, simply by reason of the Patent having been granted to them as nominated persons in the relevant patent request, the contention should be rejected.

34                  The appellants’ contentions involve the proposition that, so long as no person other than the entities named as patentees in the Register had any interest in the invention of a patent, it does not matter that at least one of such persons had no interest in the invention of the patent in question. That proposition, however, ignores the prerequisite of s 15(1) that a patent can be granted only to a person, or to persons, mentioned in s 15(1).

35                  The appellants do not limit their contentions to that proposition. They contend that, by reason of their being identified in the relevant patent request as one of the persons to whom a patent was to be granted, they can be said to derive title to the invention of the Patent from the inventor, within the meaning of s 15(1)(c). However, they do not point to any other juridical act that would have the effect of conferring upon UBC any title to the invention of the Patent as granted.

36                  On the assumed facts, there is no act that could constitute an assignment to UBC by any of Hunter, Machan or Arsenault. Nor is there any fact to be assumed that could constitute an assignment by Angiotech to UBC. There is no fact that could constitute any express assurance, either oral or written, of the invention of the Patent as granted or the right to apply for a patent in respect of that invention.

37                  Section 15 specifies no formalities as being necessary for an applicant to be effectively the assignee of the invention from the inventor. Further, s 15 specifies no formalities as being necessary for the derivation of title to an invention from an inventor or from a person who, on the grant of a patent, would be entitled to have the patent assigned. While an assignment in writing might be preferable, in order to avoid difficulties of proof, an assignment might be effected orally or may even be implied from the conduct of the parties (see Speedy Gantry at 550).

38                  There may be doubt as to whether an invention is itself a species of property. However, whether it is properly to be characterised as property or not is irrelevant. Section 15(1)(b) clearly contemplates the possibility of some juridical act relating to the grant of a patent prior to the grant, which has the consequence that, upon grant, a person would be entitled to an assignment of the patent. Section 15(1) also assumes that, under the general law, a person may demonstrate title to an invention and that that title is capable of disposition or alienation by the inventor to another person, such that that other person can be said to derive title to the invention from the inventor. That suggests that an invention is to be regarded as a form of property capable of assignment, alienation or disposition.

39                  Thus, s 15(1)(c) clearly contemplates that there is something that is capable of assignment, disposition or alienation by the inventor, such that another person has title to it. It may be that the subject matter of such an assignment, alienation or disposition, as contemplated by s 15(1)(c), is nothing more than the right to have a patent granted in respect of an invention. Patents are the creature of statute, and rights in relation to patents, and inchoate rights in relation to inventions that might be the subject of a patent, must depend upon the statute under which their existence is recognised. If the statute treats an invention, or the right to apply for a patent in respect of the invention, as something that is capable of assignment, alienation or disposition, it is necessary to recognise any juridical act or conduct that might give effect to such an assignment, disposition or alienation.

40                  It may not take very much to constitute an act or conduct that constitutes such an assignment, disposition or alienation or that gives rise, by implication, to such an assignment, alienation or disposition. UBC and Angiotech have not eschewed any claim that there was conduct or an act, apart from specifying UBC in the relevant patent request, that might constitute an assignment, alienation or disposition from Angiotech to UBC of an interest in the invention of the Patent as claimed, or that would create an entitlement for UBC, upon the grant of a patent, to have an interest in the Patent assigned by Angiotech to UBC.

41                  However, on the facts to be assumed for the purposes of answering the question posed to the Full Court, there is nothing that could constitute conduct or an act that could have the effect of assignment, disposition or alienation of any right in relation to the invention of the Patent as granted. On the facts assumed, UBC may derive title to something from Burt and Jackson. Whatever that something might have been, it was not a right or interest in the Patent as granted. Nor did it confer upon UBC any entitlement to have an interest in the Patent as granted assigned to it after grant.

42                  Section 59 makes clear that the grant of a patent can be opposed on the ground that a person identified in a patent request as a person to whom the patent is to be granted is not entitled to a grant of a patent for the invention claimed. UBC was not a person mentioned in s 15(1) of the Act. It follows that, prior to the grant of the Patent, notwithstanding that UBC was a nominated person, UBC was not entitled to a grant of a patent for the invention of the Patent, either alone or in conjunction with Angiotech.

43                  The appellants seek to overcome that difficulty by asserting that, where two or more persons are specified in a patent request, those persons are together to be treated as, in some way, a single entity. Such a contention, however, runs counter to the clear and explicit scheme of the Act in so far as it contemplates that a patent may be granted to two or more nominated persons jointly. The grant of a patent to UBC and Angiotech jointly could have been successfully opposed under s 59 on the ground that one of the nominated persons, namely UBC, was not entitled to a grant because it was not a person mentioned in s 15(1) in relation to the invention of the Patent as granted.

44                  Each of two or more joint applicants is a separate nominated person. Each must be a person within s 15. Section 15 is to be construed on the basis that, if there are two or more inventors, the word ‘person’ in s 15(1) is to be read as ‘persons’. That is to say, a patent cannot be granted to a person who is not mentioned in s 15(1): unless a person is a person mentioned s 15(1), that person has no entitlement to have a patent granted.

POSSIBLE INJUSTICE

45                  The appellants contend that, if s 138(3)(a) is not to be construed as they say, there is a potential for injustice. They say that, in a situation such as the present, where there can be no doubt that Angiotech was a person mentioned in s 15(1)(c), the consequence of revocation, pursuant to s 138(3)(a), would be to deprive Angiotech of its indisputable right: it is entitled to the Patent because it was a person mentioned in s 15(1)(c).

46                  If the appellants’ contention is right, no injustice arises. However, if the appellants’ contention is wrong, the Patent should never have been granted to Angiotech and UBC jointly, but should only have been granted to Angiotech. If there is an injustice of the nature suggested by the appellants, Angiotech inflicted the injustice upon itself: it prosecuted the application with UBC as a nominated person and brought about a grant that, in the light of s 15(1), should not have been made.

47                  The adverse consequences feared by UBC and Angiotech could have been prevented by appropriate steps being taken prior to the grant of the Patent. Under s 104(1), an applicant for a patent may ask the Commissioner for leave to amend the relevant patent request or any other filed document. It would have been open to Angiotech to apply to amend the patent request to amend the statement of entitlement by removing UBC as a nominated person. By the same token, although it is not presently relevant, s 113 deals with the opposite situation where, if before a patent were granted, a person would, if the patent were then granted, be entitled under an assignment or agreement or by operation of law to the patent or an interest in it or an undivided share in the patent or in such interest, the Commissioner may, on a request made by the person, direct the application proceed in the name of the person or in the name of the person, and the applicant or the other joint applicant or applicants, as the case requires.

48                  In any event, it may be that the adverse consequences of revocation could be rectified under s 34 of the Act. That provision can be invoked in any proceeding in a Court in relation to a patent, such as the present revocation proceeding. Under s 34(1), if the Court is satisfied that one or more persons are eligible persons in relation to the invention and that one of the patentees is not an eligible person, the Court may declare to be eligible persons in relation to the invention those persons who it is satisfied are eligible persons. Under s 34(2), if a complete application is made under s 29 by one or more of such declared persons, the Commissioner may grant a patent for the invention to such persons. Under s 34(3), if the Commissioner grants a patent under s 34(2), the claims to that patent have the same priority date as that of the original claim. Under s 65, the date of a patent, relevantly, is the date determined under the Regulations. Where s 34 applied, the date determined, under reg 6.3(4), is the date of the original patent.

49                  There could well be policy reasons why a person who is not mentioned in s 15(1) should not be named as a joint patentee. Under s 16(1)(c), subject to any agreement to the contrary, where there are two or more patentees, none of them can grant a licence under the relevant patent, or assign an interest in it, without the consent of the others. Certainly, s 17 provides for the Commissioner to give directions about the grant of licences under a patent. However, there may well be policy reasons why a person who is not mentioned in s 15 should not be in a position to interfere with the freedom of the persons who are mentioned in s 15 to deal with a patent.

CONCLUSION

50                  Conor accepts that, if the question, reformulated as indicated above, is answered ‘No’, paragraph 7 of the Invalidity Particulars could no longer stand. Considerable time and costs would be saved in that case, because the need to explore the question of whether or not Helen Burt and John Jackson in fact contributed to the invention as claimed in the Patent as granted would be obviated. The parties have assured the Court that there is therefore utility in answering that question.

51                  However, even if the reformulated question were answered ‘yes’, UBC may yet be able to establish some act or conduct, involving Angiotech or Hunter, Machan and Arsenault, whereby it could be said that UBC would have been entitled, on the grant of a patent for the invention, to have an interest in that patent assigned to it. Alternatively, UBC may be able to establish that it derived title to the invention of the Patent as granted from Hunter, Machan and Arsenault, either directly or through Angiotech. They, of course, are matters to be determined at the trial of the proceeding.

52                  That being so, I consider that, in the light of the arguments now advanced by the appellants, it is inappropriate to answer a preliminary question, either as originally formulated or as reformulated in the way indicated above. The appropriate course is to set aside the order made on 22 September 2005 under Order 29 and the order made on 3 February 2006 answering the preliminary question.

53                  Both parties have had a measure of success and failure on the appeal. The order for costs made by the primary judge should be set aside. The costs of the preliminary question and of the appeal should be treated as the parties’ costs of the proceeding.

Associate:

Dated: 31 October 2006

ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA

REASONS FOR JUDGMENT

STONE J:

54                  This appeal is about the interpretation of provisions of the Patents Act 1990 (Cth) concerning the revocation of patents. I have had the benefit of reading, in draft, the reasons of Emmett J and gratefully adopt his Honour's account of the background to this appeal. I agree with his Honour’s account of the relevant statutory scheme and in particular with his comments about s 138(3) of the Act. I also agree with his Honour’s reasons for concluding that nothing in the assumed facts (see [56] below), supports UBC’s claim to be entitled to the invention that is the subject of the Patent as granted. I would however, like to make some additional observations on this point.

55                  The question addressed by the trial judge was whether certain facts (namely those particularised under paragraph 7 of the further amended particulars of invalidity) if established by evidence, would support a finding that the patent is liable to be revoked pursuant to s 138(3)(a) of the Act. As Emmett J has explained, at the hearing of the appeal the parties reformulated the facts to be assumed with greater precision. Subject to the reformulated facts, the question to be answered by this Court is the same as that addressed by the trial judge. Presumably, there is an implied qualification that the facts to be assumed are the reformulated facts, and these facts alone. In any event, the issue is whether, on these facts and these alone, a claim for revocation of the patent brought under s 138(3)(a) would succeed.

56                  For ease of reference, I repeat the reformulated facts to be assumed by this Full Court in considering the question put in the appeal. They are:

• The International Patent Application No. PCT/CA94/00373 (‘the PCT Application’) was filed on 19 July 1994.
• Prior to grant of the Patent, the PCT Application identified Angiotech and UBC as the persons to whom the Patent was to be granted and named William Hunter, Lindsay Machan, Larry Arsenault, Helen Burt and John Jackson as inventors.
• Prior to grant of the Patent, the claims of the PCT Application were deleted and new claims were substituted in the form as granted by the Patent.
• No steps were taken to remove UBC as a nominated person following that substitution of claims.
• Burt and Jackson made no contribution to the alleged invention as claimed in any of the claims of the Patent as granted.
• Prior to grant of the Patent, Burt and Jackson assigned their interest in the invention as claimed in the PCT Application to UBC.
• Hunter, Machan and Arsenault are the only persons who made a contribution to the alleged invention as claimed in the claims of the Patent as granted.
• Prior to grant of the Patent, Hunter, Machan and Arsenault assigned their interest in the invention as claimed in the PCT Application to Angiotech.
• The Patent was granted to UBC and Angiotech jointly and named Hunter, Machan, Arsenault, Burt and Jackson as inventors.

Patentees as a single entity

57                  The appellants submit that upon grant of the patent to UBC and Angiotech all the rights of the relevant inventors were brought into the single patent which became the property of ‘the patentee’, which is, or is to be treated as, a single entity. The appellants’ reasoning can be stated in a few propositions:

·                  Two or more persons (including ‘a body of persons, whether incorporated or not’) may make a joint application for a patent, which may be granted to two or more nominated persons jointly; ss 29(1) and (5), 31 and 63.

·                  Angiotech and UBC were nominated persons to whom the patents were granted and hence were registered as ‘the patentee’, a term which the Act defines as ‘the person for the time being entered in the Register as the grantee or proprietor of a patent’; Schedule 1 to the Patents Act.

·                  On being registered as the patentee, Angiotech and UBC became jointly entitled to the patent each of them having an equal undivided share in the patent; s 16(1)(a).

·                  The Act treats the patentee as a single entity irrespective of whether there are two or more persons registered as ‘the patentee’. In particular s 138(3)(a) states as a ground of revocation ‘that the patentee is not entitled to the patent’. The respondent (and the primary judge) ignore the use of the definite article, ‘the’ in s 138(3) and read the subsection as if it used the indefinite article, as in ‘that a patentee is not entitled to the patent’.

·                  The question whether the patentee is entitled to the patent refers back to s 15 however s 63, in allowing the grant of a patent to two or more nominated persons ‘jointly’ validates the grant to such persons even if one or more of them do not fall within s 15(1). Where there are joint grantees ‘the question under s 15 is whether the grantees, considered jointly, fall into one or more of the categories set out in s 15’.

·                  It follows from the above propositions, that if ‘the patentee (as defined) comprises two legal persons which, considered jointly, have the totality of rights derived from each of the actual inventors, then this is sufficient to establish entitlement. It does not matter (assuming it to be the fact) that the persons from whom one of the patentees originally claimed title made no contribution to the alleged invention as now claimed in each of the claims’.

58                  In considering whether the Act treats joint applicants as separate entities I do not attach any importance to the fact that defined terms such as ‘nominated person’, ‘patentee’ and ‘eligible person’ are expressed in the singular. Section 23 of the Acts Interpretation Act 1901 (Cth) ensures that, in the absence of a contrary intention, these terms include the plural. Although the Patents Act refers to patentees in the plural where attention is to be drawn to their separate (albeit equal and undivided) interests, as in ss 16 and 17, I do not discern an intention that where the singular is used in the Act it does not include the plural.

59                  Section 16(1), on which the appellants rely, expressly regulates the relations between two or more patentees subject to ‘any agreement to the contrary’. In passing, I note that the assumed facts (see [56] above) do not include any such agreement so the possibility may be disregarded for present purposes. Section 16(1) provides that ‘each’ of the patentees has ‘an equal undivided’ (but not indivisible) share in the patent and although no patentee can grant a licence under the patent or assign any interest in it without the consent of the others, it allows them individually to exercise the rights that they have in the patent ‘without accounting to the others’. Section 16(3) recognises patentees as separate entities when it provides that the section does not affect the rights and obligations of trustees or legal representatives. These provisions show that s 16 deals with the property that the patentees have in the patent; it does not treat patentees themselves as a single entity.

UBC’s entitlement

60                  As noted by Emmett J, the appellants expressly abandoned the argument that if only one of two patentees is entitled to a patent, and there is no other person entitled to the patent, it is correct to say that the patentee is entitled to the patent. The relevant question for this Court is UBC’s entitlement to the patent.

61                  At the outset I should make clear that in my view the mere fact that UBC, jointly with Angiotech, was a nominated person in the relevant patent request is not sufficient to make UBC a person entitled to be granted a patent within any of the categories listed in s 15(1). Nor is the mere fact that Angiotech consented to the application in this form sufficient to establish entitlement. In my view those facts are neutral on the point. While Angiotech’s consent (and the fact that Angiotech has joined UBC in resisting Conor’s attempt to have the patent revoked) is strongly suggestive of facts that would support UBC’s entitlement, taken by itself it cannot establish entitlement. Finally, I do not accept the appellants’ argument that the mere fact that UBC and Angiotech have become registered as patentees is sufficient to defeat a claim to revocation of a patent made by a stranger to the invention even where it is accepted that no person other than UBC and Angiotech has any entitlement to the invention claimed in the patent.

62                  I see nothing in the scheme of the Act to suggest that UBC obtained entitlement to the patent merely by registration as a patentee. The Act makes it quite clear that registration per se could not be the source of UBC’s entitlement; it does not create a system of title by registration akin to a Torrens Title system of registration of interests in land. The very words of s 138(3), which refer back to s 15(1), indicate that registration depends on entitlement; it is not the source of entitlement. In my view the registration of UBC as a joint patentee with Angiotech is not a source of entitlement for UBC.

63                  If neither the joint patent request nor the registration of UBC as a joint patentee with Angiotech is the source of UBC’s entitlement then the assumed facts are neutral on this question; they neither support nor preclude a claim by UBC to have been given some entitlement to the invention or to the patent as granted. In order to support such a claim there would need to be some act or conduct capable of effecting an assignment, disposition or alienation and there is none. In order to preclude such a claim, there would need to be an additional agreed fact that there was no assignment, disposition or alienation of any interest in the invention or the patent from Angiotech to UBC.

64                  If the assumed facts are neutral on the question of UBC’s entitlement then it must follow that on those facts alone the respondent could not succeed in an application for an order revoking the patent. The burden of proof would be on the applicant for revocation and on the assumed facts that burden could not be discharged and the application would have to fail. That being so, I agree with Emmett J that it would be inappropriate to answer the question before us in this appeal either on the facts as originally formulated or as reformulated. I therefore agree with the orders proposed by Emmett J.

Associate:

Dated: 31 October 2006

REASONS FOR JUDGMENT

Bennett J:

65                  The issue in this appeal concerns the meaning of the expression ‘the patentee is not entitled to the patent’. The expression forms the basis for a ground of revocation of a patent pursuant to s 138(3)(a) of the Patents Act 1990 (Cth) (‘the Act’).

66                  I have had the opportunity to read in draft the reasons for judgment of Emmett J and of Stone J. Justice Emmett sets out the nature of and background to the appeal and the relevant provisions of the Act, which I gratefully adopt. I have, however, come to a different conclusion.

67                  The assumed facts, as reformulated for the purposes of this appeal, are set out by Emmett J. The same issues arise in relation to each of the patents the subject of these proceedings and it is necessary for me to refer to only one of them, Australian Patent No. 693797 (‘the Patent’). In summary, Angiotech Pharmaceuticals, Inc is the assignee of the inventors of the invention of the claims of the Patent, as granted. University of British Columbia (‘UBC’) is the assignee of persons who were inventors of the invention of the claims of the patent application as filed, but not of the claims as amended and subsequently granted. Prior to the grant of the Patent, the application identified Angiotech and UBC jointly as the persons to whom the Patent was to be granted. In both the application for grant and the Patent all of the persons from whom Angiotech and UBC received assignments were named as inventors. The Patent was granted to Angiotech and UBC as the patentee.

68                  There is no suggestion that any inventor not named in the Patent was an inventor of the invention of the claims as filed or as granted or that any other person is entitled to the Patent.

69                  The ‘patentee’ is defined by the Act to mean the person for the time being entered in the Register of Patents as the grantee or proprietor of a patent (Sch 1 to the Act). The question for the Court concerns the correct construction of the expression ‘the patentee is not entitled’ where ‘the patentee’ comprises two or more persons. Assuming that ‘the patentee’ is X and Y, the question is whether ‘the patentee’ is entitled to the patent if the only person entitled to the patent is X.

70                  Textually one could reach either result. One could, on the one hand, say that if X is a person entitled, then ‘the patentee’, being the combination of X and Y, is necessarily entitled because X and Y between them possess the relevant entitlement. On the other hand, one could say that the condition ‘the patentee is not entitled’ is satisfied wherever there is not co-extension between ‘the patentee’ and the persons entitled to the patent. On the latter construction, ‘the patentee’ would not be relevantly entitled if the person entitled were X alone or if the person entitled were X, Y and Z.

71                  The fact that both conclusions are textually available makes it necessary to examine which construction is more attuned to the structure and context of the legislation, its purpose and, indeed, common sense.’

THE SCHEME OF THE ACT

72                  The Act makes provision for the fact that more than one person may apply for and be granted a patent. The Act covers pre-grant and post-grant situations, the latter relating to the patent and ‘the patentee’.

Entitlement to the grant of a Patent

73                  Part 2 of Ch 2 of the Act deals with patent ownership. Section 15(1) in that part provides that subject to the Act, a patent 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).

74                  Consistent with s 15(1), s 29(1) provides that ‘a person’ may apply for a patent. A ‘person’, for the purposes of s 29, includes a body of persons whether incorporated or not (s 29(5)). A body of persons may make an application for a patent and two or more persons, within the meaning of s 29, may make a joint patent application (s 31). The ‘nominated person’ is defined in Sch 1 to the Act to mean ‘the person’ identified in a patent request as ‘the person’ to whom the patent is to be granted. That ‘person’ may be two or more persons who have made a joint patent application (ss 29 and 31). A patent may be granted to two or more nominated persons jointly (s 63). Those persons become the patentee.

75                  It is clear that the Act recognises that each of the classes of ‘person’ within s 15(1) may be made up of a body of persons and that, for example, a body of persons who, together, are ‘the inventor’, is ‘a person’ entitled to the grant of a patent.

Opposition to grant

76                  Section 59 operates at the stage of opposition to the grant of a patent, that is, prior to grant. Section 59(a) relevantly provides that a ground of opposition is:

‘The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:

(a) that the nominated person is either:

(i) not entitled to a grant of a patent for the invention; or

(ii) entitled to a grant of a patent for the invention but only in conjunction with some other person’.

77                  The ground of opposition therefore concerns two circumstances where the nominated person is not entitled to the grant. One is where the nominated person is not a person within the description of s 15(1) of the Act (s 59(a)(i)). The other situation is where there is another person who additionally is entitled to the grant of the patent by reason of that person being within s 15(1) of the Act (s 59(a)(ii)).

78                  If, where the nominated person isX and Y, the entitlement to grant must be co-extensive with X and Y, there would be no need to provide for the two alternatives of s 59(a)(i) and (ii). There would be no need separately to provide for an absence of entitlement of X and Y together and for the situation where a third party is also entitled to the grant of the patent.

After the grant of the Patent

79                  Once the patent is granted, it is not a ground of revocation that ‘the patentee was not entitled to the grant of a patent’. Section 138(3)(a) clearly provides that the ground of revocation is that ‘the patentee is not entitled to the patent’. This is in contrast to, for example, s 72(1)(b) of the Patents Act 1977 (UK) which provides for revocation where ‘the patent was granted to a person who was not entitled to be granted that patent’ or, previously ‘the patent was granted to a person who was not the only personentitled…to be granted that patent or to two or more persons who were not the only persons so entitled’.

80                  The use of the present tense also recognises that events may have occurred giving rise to entitlement to the patent between grant and the application for revocation. For example, there may have been a change in the patentee by reason of an assignment of the patent after grant.

81                  The Act makes it clear that after the grant of the patent the patentee, being ‘the person’ who is the grantee or proprietor of the patent ([69] above), may consist of more than one person. Where there are two or more patentees, each is entitled to an equal undivided share in the patent and each may exercise the exclusive rights given by the patent including the right to exploit the whole of the invention but the grant of a licence or assignment of an interest requires the consent of the others (s 16). Accordingly, while there is an exception in dealing with the grant of an interest in the patent, each of the joint patentees has, subject to any agreement between them to the contrary, an indivisible right to exploit the whole of the invention.

82                  While co-owners have the ability each separately to work the invention, Conor accepts that for all other purposes they are to be treated as a single entity: ‘the patentee’, in this case Angiotech and UBC. The Act makes this clear. For example, an invention is not patentable if it was secretly used by ‘the patentee’ (s 18(d)); a person may apply to the Court for an order requiring ‘the patentee’ to grant a compulsory licence (s 133); a standard patent ceases if ‘the patentee’ does not pay the renewal fees (s 143); and ‘the patentee’ is a party to revocation proceedings pursuant to s 138 of the Act (s 139(1) of the Act).

83                  Conor submits that s 138(3)(a) should be construed to provide that each of Angiotech and UBC must be entitled to the grant of the patent and that the assessment must be made at the time of grant. It would follow that if UBC were not entitled to the grant of the patent, Angiotech and UBC, as ‘the patentee’, is not entitled.

84                  That submission is inconsistent with the meaning of ‘the person’ ([75] above), the scheme of the Act and the reality, recognised in the Act, of the consequence of ‘the invention’ being frequently the subject of contribution by more than one individual who, together, constitute ‘the inventor’.

WHAT IS THE RELATIONSHIP BETWEEN ‘THE PATENTEE’ AND ENTITLEMENT?

85                  Angiotech and UBC accept that s 138(3)(a) refers back to s 15(1). Their submission is that the ‘the patentee’, Angiotech and UBC collectively, falls within the description of s 15(1)(c). This leaves the question of whether the requirement is that the whole of the entitlement resides in the ‘person’, collectively, who is the patentee or whether the question of entitlement is assessed distributively, so that each of the persons who make up the patentee must be entitled to the patent.

86                  In my view, the former construction is preferable.

87                  Conor points to the disadvantages to the public associated with that construction, such as the need to obtain licences or assignments or a compulsory licence from each of the joint patentees and the need to join each in revocation proceedings. These ‘disadvantages’ arise whenever there are joint patentees. Even where each joint patentee is separately entitled to the grant of the patent within s 15(1), that party may not be actively interested in the patent. Any extra costs incurred can be met by an order for costs.

88                  In any event, Conor’s contended construction gives rise to its own problems. The present factual situation exposes one problem that may arise if, after grant, proof of entitlement prior to grant within the s 15 categories by each co-owner of the patent separately were required. At the time of lodgement of the joint application, UBC and Angiotech were entitled to the grant of the patent, each being a person within s 15(1). By reason of amendment during prosecution to delete some claims, UBC ceased to come within s 15(1). Angiotech was entitled to the grant of the Patent and consented to UBC remaining within the nominated person and the patentee. The consequence, according to Conor, is that the Patent of which Angiotech is, for the purposes of this appeal, conceded to be the inventor, is liable to be revoked, despite the fact that there is no other person entitled to the Patent. No fact has been agreed as to any contribution to the disclosures of the specification by the persons from whom UBC obtained an assignment. For the purposes of this appeal, counsel for the appellants referred to such a possibility in written submissions but resiled from such reliance during the hearing of the appeal.

89                  The following examples follow from the construction advanced by Conor:

·                    There are joint inventors responsible for different aspects of the invention. That is reflected in different claims. An application for revocation after grant establishes that some, but not all, of the claims are invalid for failure to claim a patentable invention pursuant to s 18(1). Those claims should not have been granted. The claims that are liable to be revoked all reflect the work of one of the inventors. It would follow that the patent, even if amended to delete the invalid claims, would still be liable to revocation because one of the named inventors was not entitled to the grant of the patent.

·                    As is not uncommon, a team of scientists conduct the work that leads to the invention. All research publications include the members of the team. They all consider themselves ‘the inventor’ and are content to be named as such. There is a claim for revocation after grant and it is established at the hearing that one of the ‘team’ is not entitled to be called ‘an inventor’ because his or her contribution is later assessed by a court as strictly unnecessary to the invention. The patent would be liable to be revoked.

·                    Provision is made for amendment after grant to remove a lawful ground of objection (s 104). The patentee is two inventors. An amendment results in one of the inventors no longer being an inventor of a claim of the patent. The patent is then liable to be revoked. The right of the patentee to amend, as provided in s 104, is thereby diminished.

·                    The rights of the inventor are assigned to a partnership. There are internal changes to the partnership over time. The patent would be liable to be revoked.

90                  The Act provides for disputes between applicants for a patent (s 32). Section 33 provides for the Commissioner’s powers where there is a s 59 opposition and a person other than the nominated person is eligible. Section 33 also recognises that another person may be eligible for the grant of a patent because of a contribution to the invention as claimed in any but not necessarily all claims. Similarly, s 34, s 35 and s 36 deal with persons other than the patentee who claim to be eligible for the grant of a patent either solely or jointly with the patentee and provide that the Commissioner may grant the patent to those persons or declare them to be eligible persons.

91                  An ‘eligible person’ is defined by the Act to mean a person to whom a patent for the invention may be granted under s 15 of the Act (Sch 1 to the Act). In each of the circumstances provided for in ss 33, 34, 35 and 36, the Act looks to the entitlement of ‘one or more opponents’ or ‘one or more persons’ who claim to be eligible persons. On the other hand, the nominated person (prior to the grant of the patent) and the patentee (after grant) are cast in the singular, as a single entity. Different factual situations are provided for but there is no express provision for a situation where one of the persons named as patentee is not an eligible person. In each case, the underlying consideration is that another has entitlement to the patent. If it were intended to consider the eligibility of each of the persons named as nominated person or patentee and not to treat the eligibility of the nominated person or the patentee as a single entity, it would have been a simple matter so to specify.

92                  Conor submits that the Act intended a correlation between the grounds of opposition in s 59 and the ground of revocation in s 138(3)(a). This does not necessarily support Conor’s construction. While both grounds concern an absence of entitlement in ‘the nominated person’ or ‘the patentee’, s 138(3)(a) concerns the present entitlement of the patentee to the patent. It does not specify that the patentee was not entitled to the grant of the patent ([79] and [80] above; cf s 59(a)(i)). To the extent that there is a correlation, consistent with ss 33, 34, 35 and 36, it reflects the ground in s 59(a)(ii) that some other person is additionally entitled.

93                  As I have noted, the Act makes provision for the patentee to be treated as a single person, irrespective of the number of persons that make up that entity, that being consistent with the concept that it is ‘the patentee’ that holds the ownership in and entitlement to the patent. Where the Act refers to those persons, rather than to ‘the patentee’, it does so clearly. For example, s 16(1)(a) and (c) provide that where there are ‘2 or more patentees’ each is entitled to an equal undivided share in the patent and is entitled to exercise the exclusive rights given by the patent. The grant of a licence under the patent or assignment of an interest in the patent requires the consent of the others who constitute ‘the patentee’ (s 16(1)(c)). Co-ownership is consistent with the entitlement of one patentee being sufficient for the purposes of s 138(3)(a) and for the purposes of the nominated person in the application, the person to whom the patent is to be granted.

94                  It follows that I am of the view that the Act evidences an intention to distinguish between ‘the patentee’ and ‘2 or more patentees’. That is, the terms ‘a person’, ‘the nominated person’ and ‘the patentee’ are intended to be read in the singular. This applies to s 138(3)(a). Where the plural is intended, it is so specified (eg, s 16(1) and s 63).

95                  Consistent with this construction, s 138(3)(a) does not provide that ‘a patentee’ is not entitled to the patent. The section states that ‘the patentee is not entitled’. If it were intended to refer to the lack of entitlement of any one person, it would have been simple to have used the indefinite article. Indeed, the Act adopts the indefinite article when the intention is specifically to refer to one of the persons who comprise ‘the patentee’ (eg, s 17(2)).

96                  I note that if it were to become necessary to inquire into the contribution of each named inventor to the invention as claimed, in order to ascertain individual entitlement, an investigation corresponding with that in the United States of America would result. Australia has eschewed the ‘first to invent’ criterion in favour of a ‘first to file’ approach.

97                  Accordingly, where it is a presumed fact that the totality of the entitlement to the patent resides in the persons who constitute‘the patentee’, I would answer the preliminary question ‘No’ and would allow the appeal with costs.

98                  While the construction that I have adopted may be seen to raise some problems, such as giving a right to exploit the Patent to a person (UBC) who is not an inventor or otherwise within the class of persons entitled to the grant of a patent pursuant to s 15 (Stack v Davies Shephard Pty Ltd (2001) 108 FCR 422at [21]), two matters should be noted. First, on the assumed facts, ‘the patentee’ was assigned all rights in the invention the subject of the claims of the Patent. ‘The patentee’, viewed collectively, is ‘a person’ within the description of s 15(1).

99                  Secondly, where a joint application has been made with the consent of an applicant entitled to the grant of a patent as a person within a category of s 15(1), a prima facie presumption arises that that person has consented to the other named applicants being nominated persons in the application and becoming jointly entitled to the patent. Indeed, such consent may result in the other named applicant becoming a person within s 15(1)(c), a person who derives title to the invention from the inventor or the proposed assignee of the granted patent.

100               I endorse the observations of Emmett and of Stone JJ that there may be evidence not part of the agreed facts to establish that UBC independently derived title to the invention from Angiotech. Angiotech identified UBC in the patent request and consented to UBC being a person to whom the patent was granted. UBC may itself have become a person within s 15(1)(c) and have independently been a person entitled to the grant of the patent. Evidence could establish that UBC derived title to the invention from the inventors or from Angiotech.

101               As Emmett J said in Speedy Gantry Hire Pty Ltd v Preston Erection Pty Ltd (1998) 40 IPR 543 at 550, the Act specifies no formalities as being necessary for assignment of rights and it may be inferred from the conduct of the parties. His Honour referred to a number of possible bases for assignment, to the nature of the factual matters that might need to be addressed and to the legal question whether an invention is to be regarded as a form of property capable of assignment, alienation or disposition (at 552–558).

CONCLUSION

102               I agree, with respect, with Emmett J that the facts to be assumed in this case are insufficient and that this case has demonstrated the difficulty of the consideration of the preliminary question. Nevertheless, where ‘the patentee’ comprises two persons who have collectively been assigned all rights in the claimed invention, I have formed the view that it cannot be said that ‘the patentee is not entitled to the patent’ by reason of one of those persons not being individually a person entitled to the patent.

103               The appeal has been argued by Angiotech and UBC somewhat differently to the way it was argued before the primary judge. I would set aside the costs orders made by his Honour and order that each party pay its own costs of the hearing before the primary judge.

Associate:

Dated: 31 October 2006