Revocation by the backdoor?
Revocation by the backdoor? - Griffith Hack
|14 March 2011|
|Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited  FCA 1318 (Unreported, Stone J, 30 November 2010)|
|Kimberly-Clark brought infringement proceedings against Multigate for infringement of three patents, including Australian|
Patent No 758905 (the patent). Multigate cross-claimed that the patent was invalid.
Multigate contended that it had been sued for infringing the patent in circumstances where the patent should not have
been registered because it included five different inventions and did not comply with s40(4)of the Patents Act 1990 (Cth)
(the Act). Therefore, Multigate submitted that it was a person aggrieved and was entitled to an order under s192(1) of the
Act directing the Commissioner of Patents to rectify the Register of Patents by removing the grant of the patent from the Register and/or endorsing the Register to indicate that the patent is contrary to s40(4) of the Act and is thus invalid.
Section 192(1) of the Act provides, upon application to the Court by a person aggrieved, for discretionary rectification of the Register in regard to an entry that is omitted, made without sufficient cause, wrongly existing, or erroneous or defective.
Section 138 of the Act explicitly provides the grounds for revocation of a patent. These grounds include non-compliance of the specification with ss40(2) or 40(3), but not s40(4) of the Act. Therefore, Multigate’s cross-claim was essentially an attempt to enter s40(4) of the Act as a ground for invalidity by the backdoor.
The Court recognised that the presence of an entry on the Register is a mere record of information and that the Register does not confer any rights. Therefore, removing an entry from the Register or endorsing the Register to indicate that the patent was invalid would have no effect on the patent per se; the patent would remain in force.
Since s40(4) of the Act is not a ground for revocation and since s192(1) of the Act does not affect patent rights, Multigate’s cross-claim was dismissed.
Despite the ingenuity or desperation of the argument, the Court has confirmed that once a patent has been granted, lack of unity of the invention as claimed is not a ground for revocation of the patent.
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