In particular, the inquiry is examining:

(a)     the impact which the granting of patent monopolies over such materials has had, is having, and may have had on:

(i)     the provision and costs of healthcare,

(ii)    the provision of training and accreditation for healthcare professionals,

(iii)   the progress in medical research, and

(iv)   the health and wellbeing of the Australian people;

(b)     identifying measures that would ameliorate any adverse impacts arising from the granting of patents over such materials, including whether the Patents Act 1990 should be amended, in light of the any matters identified by the inquiry; and

(c)     whether the Patents Act 1990 should be amended so as to expressly prohibit the grant of patent monopolies over such materials.

The transcripts of the hearings can be found here.

Five patents, the subject matter of which had been developed during the joint venture, were the subject of the Original Orders. The patents were owned by companies associated with one of the joint venture parties (“the Grooms”). The Original Orders required the other joint-venture parties to pay a proportion of the costs associated with the development of the subject matter of the patents, and in return, the other parties were to acquire a proportionate proprietary right in those patents.

Variation of the Original Orders was sought by the Grooms who claimed that another joint venture party (“the Wicketts”) had also developed intellectual property during the joint venture agreement and thus the Grooms should be entitled to own a proportion of the Wicketts’ intellectual property. The Wicketts asserted their intellectual property had been developed after the joint venture ended and so was solely theirs.

His Honour declined to vary the Original Orders because, among other reasons, it was nearly four years after the Original Orders were made that the Grooms first indicated that they wanted to amend the orders. His Honour relied on authority that an application to set aside orders should be made as soon as possible after it comes to the applicant’s knowledge.

This case illustrates the potential for lengthy disputes to arise over the ownership of jointly developed intellectual property. To avoid disputes parties should both define from the outset how jointly developed intellectual property is to be owned and funded and then monitor compliance with agreed arrangements throughout the joint venture.

The second, against the decision in E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27 (previously reported here) relates to the nature of the use necessary to defeat a non-use action and whether sale of goods bearing the trade mark in Australia by someone other than the trade mark owner and without its knowledge is sufficient.

Transcripts of the special leave hearings are available here and here.

On the first issue, EMI relied on the fact that the rules of the competition stipulated that “All matter entered to become the property of the Guide Association”. His Honour rejected the submission that this gave rise to an assignment of copyright from Sinclair to the Girl Guides, noting that there was no evidence that Sinclair was aware of the rules of the competition, and no evidence of any contract in writing which might have satisfied the requirements of the Copyright Act then in force. Further, the conduct of both Sinclair and the Girl Guides subsequent to the competition was contrary to any intention or understanding that copyright in the song had been assigned.

The second issue arose in circumstances where there was a dispute as to the ownership of the copyright in Kookaburra between the Public Trustee, to whom Sinclair bequeathed her estate, and the Libraries Board of South Australia, to whom Sinclair had previously made a “Donation of Records”. Larrikin had originally obtained assignment of the copyright from the Public Trustee, but following this dispute entered a tripartite assignment with both parties and a further deed of confirmation after the commencement of the infringement proceeding. Without deciding on the effectiveness of the original assignment from the Public Trustee to Larrikin, Jacobson J concluded that:

Plainly, there are only two possibilities. Either the copyright was owned by the Public Trustee as trustee of Ms Sinclair’s deceased estate, or by the Libraries Board by reason of the donation of records. Whichever of those two institutions owned the copyright, both have assigned it to Larrikin in a clearly documented chain of title in the Deeds, to which I have referred. What is more, they confirmed the assignment in the Deed of Confirmation

Accordingly, Larrikin was found to be the owner of copyright in Kookaburra. In light of this finding the remaining issues in dispute, including whether “Down Under” reproduces a substantial part of “Kookaburra”, will now be determined.

The IP Australia consultation paper “Resolving Patent Opposition Proceedings Faster” identifies delay and costs as significant problems with the current opposition process. However, it may well be that the high burden of proof in oppositions, an issue identified in the earlier paper “Getting the Balance Right“, has to a greater extent made such proceedings less attractive.

The decision in Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] FCA 805, confirmed that “the Court must be clearly satisfied that the patent, if granted, would not be valid” and therefore that:

where there are two opposing expert views that are conclusive on obviousness, both presented bona fide by witnesses of accepted expertise, unless one set of views can be rejected on proper grounds, the legal burden to establish a ground of opposition is not discharged; the court cannot be practically certain that obviousness or lack of inventive step is established

With such a burden of proof and the consequently low prospect of an opponent successfully establishing lack of inventive step, there would seem to be a significant disincentive to opposing a patent application.

* Note: the figures are based on the total number of decisions per year and have not be filtered to distinguish between substantive and procedural decisions.