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Last year, IPwars reported on Hammerschlag J’s ruling that arbitrators under the Commercial Arbitration Acts 1984 (here and here (repealed and replaced by a 2010 Act)e.g.) can settle disputes about (1) the ownership of improvements under a technology licence agreement and (2) the licence fees payable if the technology be exploited in various ways in the future.

The arbitrator has now made an award finding that the patents owned by Lloyd or its subsidiary Solfast, the Solfast and Asura patents, were improvements covered by the licence and so should be assigned to Larkden.

Larkden has secured from Hammerschlag J orders enforcing that award and so requiring Lloyd to transfer ownership to Larkden.

Section 35 of the Commercial Arbitration Act 2010 (NSW) provides that an arbitrator’s award must be recognised and is enforceable subject to the formal requirements of s 35 and substantive grounds in s 36. The substantive grounds are:

Grounds for refusing recognition or enforcement

(1)Recognition or enforcement of an arbitral award, irrespective of the State or Territory in which it was made, may be refused only:

(a)at the request of the party against whom it is invoked, if that party furnishes to the Court proof that:

(i)a party to the arbitration agreement was under some incapacity, or the arbitration agreement is not valid under the law to which the parties have subjected it or, failing any indication in it, under the law of the State or Territory where the award was made, or

(ii)the party against whom the award is invoked was not given proper notice of the appointment of an arbitrator or of the arbitral proceedings or was otherwise unable to present the party’s case, or

(iii)the award deals with a dispute not contemplated by or not falling within the terms of the submission to arbitration, or it contains decisions on matters beyond the scope of the submission to arbitration, provided that, if the decisions on matters submitted to arbitration can be separated from those not so submitted, that part of the award which contains decisions on matters submitted to arbitration may be recognised and enforced, or

(iv)the composition of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties or, failing such agreement, was not in accordance with the law of the State or Territory where the arbitration took place, or

(v)the award has not yet become binding on the parties or has been set aside or suspended by a court of the State or Territory in which, or under the law of which, that award was made, or

(b)if the Court finds that:

(i)the subject-matter of the dispute is not capable of settlement by arbitration under the law of this State, or

(ii)the recognition or enforcement of the award would be contrary to the public policy of this State.

Lloyd argued that the award in relation to the Solfast patents fell foul of s 36(1)(a)(iii) because the shares in Solfast, originally owned by Lloyd, had been transferred to GENV. Hammerschlag J found this was untenable: the transfer of shares in Solfast was void and set aside under s 267(1) of the Corporations Act. In addition, although developed by Solfast, the Solfast patents were improvements within the meaning of the licence because Lloyd had developed the patents through the medium of Solfast.

Lloyd’s second argument was predicated on s 36(1)(b)(ii) contending that some of the orders in the award were too vague and uncertain to be enforceable. This allegation included the order that Lloyd take all necessary steps to ensure that [Lardken]‘s interests in the prosecution of the Assigned Patent Applications are protected and secured.

Hammerschlag J rejected this ground too. The orders were not vague and uncertain. Further, his Honour doubted they would offend public policy as not sufficiently concerning “the State’s basic notions of morality and justice”.

Larkden Pty Limited -v- Lloyd Energy Systems Pty Limited [2011] NSWSC 1331

The arbitrator.

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Professors Megan Richardson and Andrew Kenyon and Vicki Huang edit a new online publication “The Fortnightly Review of IP and Media Law”.

So far, it is up to issue #7 and features, amongst other things, a good debate in which Ass Prof. David Brennan responds to Dr Cannold and Prof Palumbi’s opinion piece in the Age on Gene Patenting. Dr Cannold and Prof Palumbi get to reply.

Check it out here (and sign up).

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Following in the footsteps of Marty Schwimmer and Dennis Kennedy, I shall try a weekly post aggregating selected IP “tweets”. If you’re keen on greater currency, my tweets also show up as they’re made in a side bar on the website.

• RT @priorsmart: RT @ernestgrumbles Is the Fed. Circuit pro-patent? Maybe Not http://bit.ly/Kd9gR (empirical study of decisions)
• RT @dhowell: RT @entlawupdate How the RealDVD ruling could reshape copyright law http://bit.ly/2sud8B
• RT @dhowell: Kaleidescape loses; DVD copying falls again (@sandocnet; h/t @HScottLeviant) http://ff.im/-6wPw7
• RT @DuetsBlog: Branding strategy To Google or Not to Google http://ow.ly/jGvG
• Working up a theme here? RT @asilverstein: The risks of modernizing a trademark http://bit.ly/h3FkN
• Patently-O analyses Bilski’s Patent Application http://ff.im/-6tlCF
• Patry is back: Moral Panics and the Copyright Wars: Are There Any Lessons in the P2P Trials? http://ff.im/-6rp7B
• AmeriKat looks at the briefs in the Catcher in the Rye appeal http://ff.im/-6roVs
• RT @priorsmart: RT @ernestgrumbles Is the Fed. Circuit pro-patent? Maybe Not http://bit.ly/Kd9gR (empirical study of decisions)

Let me know if you think this is a worthwhile exercise or not.

If you’re a twitterer, you can find me at @wrothnie

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IP Australia has a policy if you have missed, or are about to miss, a deadline because of The Bushfires.

(Un)Official Notice – at the time of writing (it may be fixed by the time you’re reading) the link to the Official Notices doesn’t take you to anything specific.

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No, it’s not the long awaited response to the CLRC’s report; instead, IP Australia and the Attorney-General’s Department have published an information sheet about Crown Use of intellectual property (in Australia).

As you will already know all about this, it could be a useful starter for your clients.

Read the glossy (pdf) here.

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Dr Emmerson QC (who surely needs no introduction) is going to launch the new book edited by Andrew Kenyon, Megan Richardson and Sam Ricketson – all professors well known to you on 25 March 2009.

Chapters include:

1. Potter v Broken Hill: misuse of precedent in cross-border IP litigation by Richard Garnett;
2. The Union Label case: an early Australian IP story by Sam Ricketson; 
3. RPM for RPM: National Phonograph Company of Australia v Menck by (Hon.) Peter Heerey and Nicole Malone; 
4. Horses and the law: the enduring legacy of Victoria Park Racing by Jill McKeough; 
5. We have never been modern: the High Court’s decision in National Research Development Corporation v Commissioner of Patents by Stephen Hubicki and Brad Sherman; 
6. Of vice-chancellors and authors: UNSW v Moorhouse by Sam Ricketson and David Catterns; 
7. Foster v Mountford: cultural confidentiality in a changing Australia Christoph Antons; 
8. Cadbury Schweppes v Pub Squash: what is all the fizz about? by Mark Davison; 
9. The Firmagroup case: trigger for designs law reform by Janice Luck; 
10. Larger than life in the Australian cinema: Pacific Dunlop v Hogan by Megan Richardson; 
11. O Fortuna! On the vagaries of litigation and the story of musical debasement in Australia by Elizabeth Adeney; 
12. The protection of At the Waterhole by John Bulun Bulun: Aboriginal art and the recognition of private and communal rights by Colin Golvan; 
13. The grapes of wrath: geographical indications, international trade and the Coonawarra case by Matthew Rimmer; 
14. Waiting for the ‘Billy’® to boil: the Waltzing Matilda case by Leanne Wiseman and Matthew Hall; 
15. The Panel case by Melissa de Zwart.

and what IP nerd could ask for more to read as the dark cold nights of winter peek over the horizon?

Details of the launch here.

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So I’m watching a clever YouTube which Josh Gans points out has been annoyingly marred by a running stream of “subscript” advertisements.

On of the ads is for IP Mapping which seems like a clever description of patent searching. No doubt, I’m being a bit perfunctory here. Anyone know what I’m missing?

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IP Austraia is seeking applications from registered patent attorneys and/or trade mark attorneys for appointment to its IP Professionals Forum.

According to the blurb, the IP Professionals Forum:

The IP Professionals Forum is the principal forum for consultation, discussion and information exchange on IP matters that relate to IP professionals.

Meetings will allow for high-level discussion on IP policy, IP management, innovation and the broader IP environment, both in Australia and abroad. Participants will also be notified of IP Australia’s initiatives and consulted on future activities.

The forum meets biannually.  The appointment will be for a term of 2 to 3 years. You have to be prepared to fund your own travel – to Canberra, Melbourne or Sydney depending on where the meeting is.

Oh yes, you will be ineligible if you are already represented by an IP professional association including IPTA, LESANZ, LCA and FICPI.  Does that leave anyone left?

More details via here.

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Ass. Prof. David Brennan and Dr Rhonda Smith will talk for IPRIA about how to determine a fair price for using IP where the IP owner can’t demonstrate any real harm.

I think a situation like this is where an infringer makes sales of the infringing product, but the IP owner wouldn’t have made those sales and so didn’t “lose” anything.

The talk if at Blake Dawson in the city on 18 November at 6.00 pm.

Registration is free via here.

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What do you do if you have an appeal on foot, but the other side starts selling off the subject matter of the dispute?

Now that French J has gone on to loftier planes, Siopis J has inherited this behemmoth.

In the principal proceedings, the University had sued Dr Gray claiming (in very broad terms) that he had invented some very successful the micro sphere technologies while an employee with the consequence that he held the rights to the technologies on trust for the University.  Dr Gray, however, had sold the IP to Sirtex in which, after its public listing, he became the owner of a large parcel of shares.

Dr Gray and Sirtex had given undertakings not to deal with the IP or the shares pending trial of the matter.

The action failed, but the University has appealed and the appeal is due to be heard in November.  

The undertakings also lapsed when French J gave his judgment.  Dr Gray and Sirtex refused to continue the undertakings pending the appeal.  Despite diligent monitoring by the University’s solicitors, Dr Gray sold both his shares in Sirtex to another company, ACN, of which he was the sole shareholder and director.

The University did two things.  First, it sought interlocutory injunctions against Dr Gray and ACN to restrain dealing in the shares in ACN and the proceeds of the sale of the shares to ACN.  Secondly, it sought to amend the application in the original proceeding to add ACN as a party and bring new claims against it – remember, judgment has already been given and there is an appeal on foot.

While Siopis J acknowledged there were cases where originating documents and pleadings could be amended, even after judgment, this was not one.

13 In my view, O 13 is not to be construed as permitting the amendment of the originating application or pleadings to plead causes of action based on facts and matters which occurred after the date of the judgment. A construction of the Rules which would permit amendment in those circumstances would be inconsistent with the finality principle and the principle that an appeal in this Court is by way of a rehearing directed at correcting error. (See Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 at 432-440.) The policy considerations militating against the University’s contention are expressed in the following observations of Gibbs CJ, Wilson, Brennan and Dawson JJ in Coulton v Holcombe (1986) 162 CLR 1 at 7:

It is fundamental to the due administration of justice that the substantial issues between the parties are ordinarily settled at trial. If it were not so the main arena for settlement of disputes would move from the court of first instance to the appellate court, tending to reduce the proceedings in the former court to little more than a preliminary skirmish.

So, the amendment application was refused.  However, the interlocutory injunction was granted and the University ordered to commence a separate proceeding against Dr Gray and ACN within 7 days.

University of Western Australia v Gray (No 24) [2008] FCA 1400

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