Polwood Pty Ltd v Foxworth Pty Ltd (No 3) [2008] FCAFC 198 (24 December 2008)

Last Updated: 5 January 2009

FEDERAL COURT OF AUSTRALIA

Polwood Pty Ltd v Foxworth Pty Ltd (No 3) [2008] FCAFC 198

INTELLECTUAL PROPERTY consideration of evidentiary bases justifying a declaration of right in favour of eligible persons who are co-owners in equal shares of a patent

Patents Act (199) (Cth), s 15

Patchett v Stirling Engineering Co Ltd (1955) AC 534

















POLWOOD PTY LTD (ACN 010 708 146), LEA CHARLES RAMPTON, MARGUERITE FRANCOISE RAMPTON and POLWOOD AUSSIE BARK PTY LTD (ACN 068 346 529) v FOXWORTH PTY LTD (ACN 010 516 855), AUSSIE PEAT PTY LTD (ACN 085 498 933), PAUL DAVID POWER and PEACHESTER THOROUGHBREDS PTY LTD (ACN 069 059 294)

QUD 321 of 2006





FINN, BENNETT AND GREENWOOD JJ
24 DECEMBER 2008
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD 321 of 2006

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:

POLWOOD PTY LTD (ACN 010 708 146) First Appellant/First Defendant LEA CHARLES RAMPTON Second Appellant/Second Defendant MARGUERITE FRANCOISE RAMPTON Third Appellant/Third Defendant POLWOOD AUSSIE BARK PTY LTD (ACN 068 346 529) Fourth Appellant/Fourth Defendant

AND:

FOXWORTH PTY LTD (ACN 010 516 855) First Respondent/First Plaintiff AUSSIE PEAT PTY LTD (ACN 085 498 933) Second Respondent/Second Plaintiff PAUL DAVID POWER Third Respondent/Third Plaintiff/First Cross-Appellant PEACHESTER THOROUGHBREDS PTY LTD (ACN 069 059 294) Fourth Respondent/Fourth Plaintiff/Second Cross-Appellant

JUDGES:	FINN, BENNETT AND GREENWOOD JJ
DATE OF ORDER:	24 DECEMBER 2008
WHERE MADE:	BRISBANE

THE COURT DECLARES THAT:

1. Polwood Aussie Bark Pty Ltd on the one hand, and Peachester Thoroughbreds Pty Ltd and Paul David Power on the other, are the sole eligible persons within the meaning of the Patents Act 1990 (Cth) and are entitled to registration as co-owners in equal shares of Patent Application No 2002950316 dated 22 July 2002 (and any Complete Application lodged in reliance on that provisional application) and International Patent Application No PCT/AU03/00930 dated 22 July 2003 (and any national phase application which may proceed from that International Patent Application).

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
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IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD 321 of 2006

ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	POLWOOD PTY LTD (ACN 010 708 146) First Appellant/First Defendant LEA CHARLES RAMPTON Second Appellant/Second Defendant MARGUERITE FRANCOISE RAMPTON Third Appellant/Third Defendant POLWOOD AUSSIE BARK PTY LTD (ACN 068 346 529) Fourth Appellant/Fourth Defendant
AND:	FOXWORTH PTY LTD (ACN 010 516 855) First Respondent/First Plaintiff AUSSIE PEAT PTY LTD (ACN 085 498 933) Second Respondent/Second Plaintiff PAUL DAVID POWER Third Respondent/Third Plaintiff/First Cross-Appellant PEACHESTER THOROUGHBREDS PTY LTD (ACN 069 059 294) Fourth Respondent/Fourth Plaintiff/Second Cross-Appellant

JUDGES:	FINN, BENNETT AND GREENWOOD JJ
DATE:	24 DECEMBER 2008
PLACE:	BRISBANE

REASONS FOR JUDGMENT

1 In our reasons for decision in Polwood v Foxworth (No 2) [2008] FCAFC 168 we refused to make either of the alternate declarations sought by the Polwood and Foxworth interests respectively as to the identity of the persons entitled to the grant of the patent for the purposes of s 15 of the Patents Act 1990 (Cth). The actual identities of the eligible persons were not the subject of conclusive findings by the primary judge.

2 In paragraph 7 of our reasons we indicated that if the parties could provide us with satisfactory evidentiary bases which could appropriately justify a declaration in favour of the persons who are now said respectively to be the Polwood interests’ eligible person(s) and the Foxworth interests’ eligible person(s), we would be minded to make a declaration in relation to that matter. Leave was given to the parties to put on further evidence and to make supporting submissions. In relation to the Polwood interests, the affidavits of the second appellant, Mr Rampton, and of a Ms Pamela Gregory clarify the position insofar as the appellants are concerned.

3 Whatever interests in the patent that Mr Rampton and Mr Connick may have had in the patent applications were assigned to Polwood Aussie Bark Pty Ltd in July of 2002 under a Deed of Assignment. While the Polwood interests have not put on any evidence discounting the possibility that Polwood Pty Ltd was an eligible person, there is evidence in the principal proceeding that Mr and Mrs Rampton were at all relevant times the Directors and shareholders of Polwood Pty Ltd as well as being the Directors and shareholders of Polwood Aussie Bark. Further, the July 2002 Deed of Assignment recites that the inventors were Mr Rampton and Mr Connick. Mr Connick was not an employee or otherwise engaged by either Mr Rampton or Polwood Pty Ltd. In these circumstances it is appropriate to infer that Polwood Pty Ltd asserts no interest in the patents as an eligible person.

4 In relation to the Foxworth interests the evidence that has been put on by Mr Power establishes clearly that Mr Kemp was an employee of Peachester Thoroughbreds Pty Ltd (the third respondent) and that Mr Power was a Director of that company. Mr Power’s evidence is that he employed Mr Kemp to design and construct a sophisticated sterilising unit which was portable. Mr Power also assisted in the design of the PSU. Mr Kemp’s evidence is to like effect. Insofar as Mr Kemp’s participation in the process was concerned, it is clear that Peachester is the relevant eligible person, Mr Kemp having been employed by it for this very purpose: see Patchett v Stirling Engineering Co Ltd (1955) AC 534; and see also Patents Act, s 15(1)(b). Additionally, there is no evidence before us that Mr Kemp claims, or that his contract of employment provides, an entitlement to retain any intellectual property rights to any invention to which he contributed in his employment. Although Mr Power’s evidence is not altogether clear in relation to the capacity in which he acted when making his own contribution to the design of the PSU, the respondents have accepted in their submissions that he acted in a personal capacity. On the material that is before us we are prepared to accept that such was the case. Accordingly we are satisfied that there is an appropriate evidentiary foundation for the making of a declaration in the matter.

5 That declaration will be that Polwood Aussie Bark Pty Ltd on the one hand, and Peachester Thoroughbreds Pty Ltd and Paul David Power on the other, are the sole eligible persons within the meaning of the Patents Act 1990 (Cth) and are entitled to registration as co-owners in equal shares of Patent Application No 2002950316 dated 22 July 2002 (and any Complete Application lodged in reliance on that provisional application) and International Patent Application No PCT/AU03/00930 dated 22 July 2003 (and any national phase application which may proceed from that International Patent Application).

I certify that the preceding five (5) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Finn, Bennett and Greenwood.

Associate:

Dated: 24 December 2008

Counsel for the Appellants: Mr M P Amerena

Solicitor for the Appellants: Deacons

Counsel for the Respondents: Mr A Musgrave

Solicitor for the Respondents: Hawthorn Cuppiadge & Badgery

Date of Hearing: 30 October 2008

Date of Judgment: 24 December 2008