Foster's Australia Limited v Cash's (Australia) Pty Ltd [2013] FCA 527

Foster's Australia Limited v Cash's (Australia) Pty Ltd [2013] FCA 527

Cash's was not entitled to revocation. FGL validly made the Provisional Application and Standard Application because s 29(1) of the Patents Act 1990 (Cth) permits any person to apply and does not require entitlement to grant at the application stage. FGL had an assignable interest in those applications and assigned it to FAL before grant; FAL also had entitlement through the Services Agreement, so FAL was entitled to the innovation patents and their claimed priority date when granted. No material false suggestion or misrepresentation induced the patent grants. For the registered designs, FGL could file applications and, although FAL was the party beneficially entitled, FGL held the design...

Jurisdiction
Australia
Judgment Date
29 May 2013
Procedural Posture
Intellectual Property Proceeding for Patent and Design Infringement With Cross Claim for Revocation of Innovation Patents and Registered Designs / Preliminary Questions Ordered to Be Heard Prior to and Separately From All Other Questions
Outcome
Both preliminary questions were answered No; Cash's was not entitled to revocation of the pleaded innovation patents or registered designs on the stated grounds.
Legal Topics
['entitlement to Patent Grant' 'revocation of Patents' 'false Suggestion or Misrepresentation' 'patent Priority and Divisional Innovation Patents' 'entitlement to Registered Design Ownership' 'revocation of Registered Designs' 'constructive Trust Over Design Applications and Registrations']
['intellectual Property' 'patents' 'designs'] ['entitlement to Patent Grant' 'revocation of Patents' 'false Suggestion or Misrepresentation' 'patent Priority and Divisional Innovation Patents' 'entitlement to Registered Design Ownership' 'revocation of Registered Designs' 'constructive Trust Over Design Applications and Registrations']

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Procedural Posture

Intellectual Property Proceeding for Patent and Design Infringement With Cross Claim for Revocation of Innovation Patents and Registered Designs / Preliminary Questions Ordered to Be Heard Prior to and Separately From All Other Questions

Legal Issues

  1. 1 ["Whether Cash's was entitled to orders under s 138 of the Patents Act 1990 (Cth) revoking Australian Innovation Patent Nos 2010101451, 2010101452, 2010101453 and 2010101454 on the grounds in ss 138(3)(a), (d) and/or (e)." "Whether FGL's Provisional Application and Standard Application, made when FGL was not assumed to be ultimately entitled to grant, were effective patent applications under s 29(1) of the Patents Act 1990 (Cth)." 'Whether FGL could assign its interest in the Provisional Application and Standard Application to FAL so that FAL was entitled to the innovation patents and their claimed priority date.' 'Whether any patent or amendment was obtained by fraud, false suggestion or misrepresentation.' "Whether Cash's was entitled to orders under s 93 of the Designs Act 2003 (Cth) revoking Australian Registered Design Nos 326865 and 326895 on the grounds in ss 93(3)(b) and 93(3)(d)." 'Whether FGL held the design registration applications and registrations as constructive trustee for FAL.']

Ratio Decidendi

Cash's was not entitled to revocation. FGL validly made the Provisional Application and Standard Application because s 29(1) of the Patents Act 1990 (Cth) permits any person to apply and does not require entitlement to grant at the application stage. FGL had an assignable interest in those applications and assigned it to FAL before grant; FAL also had entitlement through the Services Agreement, so FAL was entitled to the innovation patents and their claimed priority date when granted. No material false suggestion or misrepresentation induced the patent grants. For the registered designs, FGL could file applications and, although FAL was the party beneficially entitled, FGL held the design...

Court Disposition

Both preliminary questions were answered No; Cash's was not entitled to revocation of the pleaded innovation patents or registered designs on the stated grounds.

Orders

  • ['The questions ordered to be separately answered be determined as follows: Question (a): No.' 'The questions ordered to be separately answered be determined as follows: Question (b): No.' 'On or before 4.30 pm on 7 June 2013, the parties file and serve written submissions on costs (such submissions are not to...