Patent quips

Key Points:

Identifying the right inventor is important

The recent Australian case of Conor Medsystems Inc v University of British Columbia and Angiotech Pharmaceuticals Inc (No 2) [2006] FCA 32 is fascinating due to a preliminary point that was raised against the patentees. The patents in suit were granted jointly to Angiotech and the University. Each patentee claimed title to the inventions by assignment from the US inventors. In the case of the University it claimed title from only two of several persons claiming to be inventors. It was alleged by Conor, however, that neither of those individuals was a true inventor and it therefore argued that the patents must be revoked under section 138 of the Patents Act 1990. That section provides that a patent may be revoked on a number of grounds, including where a patent is granted to a person who is not entitled to the patent.

The question in issue was:

"If a patent is granted to several persons must each of them be, or claim through, an inventor?".

The University argued that, for the purposes of the revocation provision in section 138 of the Patents Act, the expression "the patentee is not entitled to the patent" must be read (when there is more than one patentee) as "the patentees are not entitled to the patent". Consequently, the argument followed that the patent could only be revoked if "all the patentees are not entitled to the patent". Justice Finkelstein rejected that interpretation and held that, if one of several patentees is not entitled to the patent, then it is correct to say that the "patentees are not entitled to the patent" and the patent is therefore liable to be revoked.

This decision may have important implications in the context of IP due diligence and in any circumstances where an assignment of patent rights is taken. In the latter circumstance the assignee will need to ensure that the chain of title passes through the actual inventors. An appeal has been lodged in this case so this may not be the last word on the subject. We will keep readers informed of developments.

Experimental use take two!

Following the recent discussion paper relating to the experimental use exception to patent infringement in Australia, the New Zealand Ministry of Economic Development has issued an options paper entitled "An experimental use exception for New Zealand's Patent Legislation". The paper concludes that there is "a possibility that research involving a patented invention could lead to researchers being liable for patent infringement". The purpose of the paper was to seek comment/opinion from interested parties in relation to the wording of an exemption to patent infringement for experimental use. Submissions were due by 7 April 2006.