Stack, George & Anor v Brisbane City Council & Ors [1996] FCA 579

Stack, George & Anor v Brisbane City Council & Ors [1996] FCA 579

The second applicant lacked standing to sue in its own name while it was only the unregistered beneficial owner of the patent, because s 120 of the Patents Act 1990 (Cth) permits infringement proceedings only by the patentee or an exclusive licensee. If, however, the second applicant had become registered as patentee during the proceedings, it was entitled to be joined from that date and dismissal would be pointless absent prejudice; the matter should therefore be adjourned with directions requiring proof of registration and a further amended statement of claim, failing which the second applicant would be dismissed. The abandoned interlocutory relief application no longer existed to be...

Jurisdiction
Australia
Judgment Date
02 July 1996
Procedural Posture
Patent Infringement Proceedings / Notice of Motion by the Second and Third Respondents to Dismiss the Proceedings Brought by the Second Applicant and to Dismiss With Costs the Applicants' Application for Interlocutory Relief
Outcome
The second and third respondents' notice of motion was adjourned sine die; conditional directions were made requiring proof of the second applicant's registration and a further amended statement of claim, with dismissal of the second applicant if the directions were not complied with; the motion to dismiss the...
Legal Topics
['standing to Sue for Patent Infringement' 'unregistered Equitable Ownership of a Patent' 'registered Patentee and Assignee as Proper Parties' 'joinder and Misjoinder' 'interlocutory Relief Costs']
['patents' 'civil Procedure'] ['standing to Sue for Patent Infringement' 'unregistered Equitable Ownership of a Patent' 'registered Patentee and Assignee as Proper Parties' 'joinder and Misjoinder' 'interlocutory Relief Costs']

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Procedural Posture

Patent Infringement Proceedings / Notice of Motion by the Second and Third Respondents to Dismiss the Proceedings Brought by the Second Applicant and to Dismiss With Costs the Applicants' Application for Interlocutory Relief

Legal Issues

  1. 1 ['Whether the unregistered equitable owner of a patent has standing to sue for infringement in his own name under s 120 of the Patents Act 1990 (Cth).' 'Whether the registered proprietor and an assignee whose assignment is registered during the proceedings are proper parties in the infringement action.' "Whether the applicants' abandoned claim for interlocutory relief should be dismissed and whether costs should be ordered."]

Ratio Decidendi

The second applicant lacked standing to sue in its own name while it was only the unregistered beneficial owner of the patent, because s 120 of the Patents Act 1990 (Cth) permits infringement proceedings only by the patentee or an exclusive licensee. If, however, the second applicant had become registered as patentee during the proceedings, it was entitled to be joined from that date and dismissal would be pointless absent prejudice; the matter should therefore be adjourned with directions requiring proof of registration and a further amended statement of claim, failing which the second applicant would be dismissed. The abandoned interlocutory relief application no longer existed to be...

Court Disposition

The second and third respondents' notice of motion was adjourned sine die; conditional directions were made requiring proof of the second applicant's registration and a further amended statement of claim, with dismissal of the second applicant if the directions were not complied with; the motion to dismiss the...

Orders

  • ['The second applicant file and serve proof of its having become registered as patentee of petty patent No. 645740 by 31 July 1996.' 'The applicants file and serve a further amended statement of claim, identifying with precision their respective legal titles to the patent and the relief each claims, by 31 July...