Glueck v Stang [2008] FCA 148

Glueck v Stang [2008] FCA 148

The alleged representations by Novapharm to the Australian Patent Office and the United States Patent and Trademark Office were not made in trade or commerce for the purposes of s 52 of the Trade Practices Act 1974 (Cth), because they were made to government instrumentalities pursuant to legislation for the purpose of obtaining patent rights and not in the course of any trading or commercial relationship. The proposed amended application and statement of claim therefore could not be allowed insofar as they claimed relief based on alleged contraventions of s 52, and the existing statement of claim was struck out, with the proceeding otherwise dismissed except for the claim for revocation...

Jurisdiction
Australia
Judgment Date
27 February 2008
Procedural Posture
Trade Practices and Patents Proceeding Concerning Alleged Contraventions of S 52 of the Trade Practices Act 1974 (cth) and Revocation of an Australian Patent / Interlocutory Motions for Summary Dismissal, to Set Aside Subpoenas, and for Leave to Amend
Outcome
Applicant's motion for leave to amend dismissed; statement of claim struck out; proceeding dismissed except insofar as it sought revocation of the Australian Patent; subpoenas set aside; applicant ordered to pay costs of the first, second, third and fifth respondents of the three motions.
Legal Topics
['misleading or Deceptive Conduct' 'conduct in Trade or Commerce' 'patent Entitlement and Revocation' 'foreign Intellectual Property Rights' 'summary Dismissal' 'subpoenas' 'leave to Amend']
['trade Practices' 'patents' 'civil Procedure' 'private International Law'] ['misleading or Deceptive Conduct' 'conduct in Trade or Commerce' 'patent Entitlement and Revocation' 'foreign Intellectual Property Rights' 'summary Dismissal' 'subpoenas' 'leave to Amend']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Procedural Posture

Trade Practices and Patents Proceeding Concerning Alleged Contraventions of S 52 of the Trade Practices Act 1974 (cth) and Revocation of an Australian Patent / Interlocutory Motions for Summary Dismissal, to Set Aside Subpoenas, and for Leave to Amend

Legal Issues

  1. 1 ['Whether alleged misrepresentations made to the Australian Patent Office and the United States Patent and Trademark Office were conduct in trade or commerce for the purposes of s 52 of the Trade Practices Act 1974 (Cth).' 'Whether the proceeding impugned title to foreign property, namely United States patents, and whether such an issue was justiciable in the Court.' 'Whether the proposed amended application and statement of claim should be allowed to be filed.' 'Whether subpoenas issued at the request of the applicant should be set aside.']

Ratio Decidendi

The alleged representations by Novapharm to the Australian Patent Office and the United States Patent and Trademark Office were not made in trade or commerce for the purposes of s 52 of the Trade Practices Act 1974 (Cth), because they were made to government instrumentalities pursuant to legislation for the purpose of obtaining patent rights and not in the course of any trading or commercial relationship. The proposed amended application and statement of claim therefore could not be allowed insofar as they claimed relief based on alleged contraventions of s 52, and the existing statement of claim was struck out, with the proceeding otherwise dismissed except for the claim for revocation...

Court Disposition

Applicant's motion for leave to amend dismissed; statement of claim struck out; proceeding dismissed except insofar as it sought revocation of the Australian Patent; subpoenas set aside; applicant ordered to pay costs of the first, second, third and fifth respondents of the three motions.

Orders

  • ["The applicant's motion for leave to amend brought by notice of motion filed on 25 October 2007 be dismissed." 'The statement of claim be struck out.' 'The proceeding be dismissed except in so far as it seeks the relief claimed in para 4 of the application.' 'The subpoenas issued at the request of the applicant to...