Fermiscan v James [2009] NSWSC 546

Fermiscan v James [2009] NSWSC 546

The Australian patent, properly construed, was limited to x-ray diffraction analysis of human hair, while Dr James' PCT application concerned skin and nails; the second invention was therefore not an Improvement of the first invention and Dr James was not contractually bound to assign it or the PCT application. The impugned statements, considered in their scientific context and limited publication, were not disparaging and did not have the requisite tendency to injure or damage under cl 5 of the deed of release. The proceedings were dismissed.

Jurisdiction
Australia
Judgment Date
29 May 2009
Procedural Posture
Equity Division Commercial List Proceedings Concerning Patents, Contracts and Damages / Principal Judgment After Hearing
Outcome
Proceedings dismissed.
Legal Topics
['assignment of Patent and Rights in Future Improvements' 'whether Later Invention Was an Improvement or a New Invention' 'covenant Not to Disparage or Make Statements Tending to Injure or Damage Reputation or Business' 'whether Stipulated Sum Payable on Breach Was a Penalty']
['patents' 'contracts' 'damages'] ['assignment of Patent and Rights in Future Improvements' 'whether Later Invention Was an Improvement or a New Invention' 'covenant Not to Disparage or Make Statements Tending to Injure or Damage Reputation or Business' 'whether Stipulated Sum Payable on Breach Was a Penalty']

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Procedural Posture

Equity Division Commercial List Proceedings Concerning Patents, Contracts and Damages / Principal Judgment After Hearing

Legal Issues

  1. 1 ['Whether Dr James was obliged to assign to one of the plaintiffs an invention made by her and a patent application made by her to protect that invention.' 'Whether statements by Dr James breached cl 5 of the deed of release and settlement by disparaging or tending to injure the plaintiffs, their business or their employees.' 'Whether, if cl 5 was breached, the stipulated damages payable on breach were a penalty.']

Ratio Decidendi

The Australian patent, properly construed, was limited to x-ray diffraction analysis of human hair, while Dr James' PCT application concerned skin and nails; the second invention was therefore not an Improvement of the first invention and Dr James was not contractually bound to assign it or the PCT application. The impugned statements, considered in their scientific context and limited publication, were not disparaging and did not have the requisite tendency to injure or damage under cl 5 of the deed of release. The proceedings were dismissed.

Court Disposition

Proceedings dismissed.

Orders

  • ['The proceedings are dismissed.' 'The parties are to be heard on costs.']