Federal Court considers the new patent entitlement provisions for the first time

In a recent interlocutory injunction proceeding before his Honour Justice Rares in the Federal Court of Australia,1 the new patent entitlement provisions of the Patents Act 1990 (Cth), which were introduced on 15 April 2013, were considered, it is understood, for the first time.

The amendments provide that a patent is not invalid merely because it was granted to a person who is not entitled to it, and also require that the Court must not make an order revoking a patent unless it is satisfied that, in all the circumstances, it would be just and equitable to do so. Depending on the interpretation of these provisions, allegations of lack of entitlement may be less often used in future patent invalidity cases.

In the proceeding before Justice Rares, Reckitt Benckiser Healthcare (UK) Limited and Reckitt Benckiser (Australia) Pty Limited sought to restrain GlaxoSmithKline Australia Limited from infringing Reckitt Benckiser's Patent relating to a liquid dispensing apparatus, comprising a bottle, a flat nosed syringe, and a bottle neck liner in which the syringe is inserted to allow take up of the liquid when the bottle is inverted.2 GSK brought a cross-claim against Reckitt Benckiser challenging the validity of Reckitt Benckiser's Patent on various bases including lack entitlement.

PRELIMINARY BACKGROUND

The Patent was filed in 2003, and named as inventors two employees of Boots Healthcare International, which was subsequently acquired by the Reckitt Benckiser group of companies.

Contrary to what the register shows, GSK alleged that three employees or officers of the company that originally manufactured and supplied the liquid dispensing apparatus to Boots, Hubert De Backer NV, were the true inventors and that Reckitt Benckiser was therefore not entitled to the Patent.

THE ENTITLEMENT PROVISIONS

Section 15 of the Patents provides that a patent may only be granted to:

the inventor; a person who, on the grant of the patent, would be entitled to have the patent assigned to them; a person who derives title from the inventor or entitled person; or the legal representative of a deceased entitled person. Further, section 138(3) of the Patents Act provides that the court may revoke the patent, wholly or so far as it relates to a claim, if the patentee is not entitled to the patent.

The correct application of the provisions has been the subject of debate.

SOME ENTITLEMENT CASES

For example, in University of Western Australia v Gray,3 the University of Western Australia claimed that inventions developed by Dr Gray during his course of employment at UWA belonged to UWA due to an implied term of Dr Gray's contract with UWA. The Court found that Dr Gray, despite being employed by UWA, was entitled to the patent. This decision was the...