Co-patentees jump the gun in appealing to the AAT

Peter Heerey AM, QC, Tom Cordiner & Alan Nash
Correspondents for South Australia, Victoria and Western Australia

Note: Where any of the barristers were involved in a case reported below and the matter is still running, or potentially so, the other correspondents have taken the role of reporting that case.

Stylis and Commissioner of Patents [2014] AATA 796 28 October 2014

Patents – section 17 application regarding co-patentees – whether AAT can hear appeal against decision not to defer consideration of application

The Administrative Appeals Tribunal has refused an application to review a particular decision of the Commissioner of Patents on the basis that the AAT lacks jurisdiction to review it.

In Stylis and Commissioner of Patents [2014] AATA 796 (28 October 2014), an application had been made under section 17 of the Patents Act for a direction that two co-patentees of an Australian patent join with the applicant co-patentee in suing a third party for breach of a licence agreement.  The “decision” in question was a decision by the Commissioner not to defer her consideration of an application despite the respondent co-patentees’ request that she do so.

After reviewing authorities as to the meaning of “decision”, Deputy President Forgie was of the view that a decision by the Commissioner that was dispositive of the section 17 application, and directions given as to how the application was to be conducted, might be reviewable by the AAT.

In the present case, however, the Commissioner had done no more than decide to consider the application, something that is required of her under section 17.  That decision did not affect the merits of the application and could not even be described as a “conclusion reached as a step along the way”.  Accordingly, no reviewable “decision” by the Commissioner’s decision had yet been made under section 17.

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