Weatherford Australia Pty Ltd v Screenex Pty Ltd [2009] FCA 331

Weatherford Australia Pty Ltd v Screenex Pty Ltd [2009] FCA 331

The applicants' error in citing the wrong parent application arose from an unintended database malfunction and was not an attempt to obtain unfair advantage. No prejudice to the respondent or any third party was demonstrated, nor was there evidence the applicants improperly delayed seeking amendment. The power to amend under s 105 is appropriately exercised to allow correction of such errors, and rectification of the register should follow under s 192. The applicants are persons aggrieved with standing to request rectification.

Jurisdiction
Australia
Judgment Date
09 April 2009
Procedural Posture
Intellectual Property Patents / Decision on Application to Amend Patent Request and Register
Outcome
Application allowed; amendments to patent request and register to be made, with parties to be heard as to terms.
Legal Topics
['patents' 'divisional Applications' 'amendment of Patent Requests' 'register Rectification' 'clerical or Processing Errors']
['intellectual Property' 'statutory Interpretation'] ['patents' 'divisional Applications' 'amendment of Patent Requests' 'register Rectification' 'clerical or Processing Errors']

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Procedural Posture

Intellectual Property Patents / Decision on Application to Amend Patent Request and Register

Legal Issues

  1. 1 ['Whether an error in citing the wrong parent application in a divisional patent request can be amended after the lapse of the correct application' 'Whether the amendment should be permitted under s 105 of the Patents Act 1990 (Cth)' 'Whether a corresponding amendment on the patents register should be made under s 192 of the Patents Act 1990 (Cth)' 'Whether the error was akin to a clerical error' "Whether the applicants have standing as 'persons aggrieved' under s 192"]

Ratio Decidendi

The applicants' error in citing the wrong parent application arose from an unintended database malfunction and was not an attempt to obtain unfair advantage. No prejudice to the respondent or any third party was demonstrated, nor was there evidence the applicants improperly delayed seeking amendment. The power to amend under s 105 is appropriately exercised to allow correction of such errors, and rectification of the register should follow under s 192. The applicants are persons aggrieved with standing to request rectification.

Court Disposition

Application allowed; amendments to patent request and register to be made, with parties to be heard as to terms.

Orders

  • ['The proceeding be listed for further submissions as to the terms to which the order of amendment under s 105 should be subject and for settling orders conformable with the reasons published.' 'Costs be reserved.']