CommBar Matters

The Commercial Bar Association of Victoria Inc. A0120851O

Tagged: licensee

IP and Trade Practices

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When is an exclusive patent licence not so exclusive?

The first applicant, Damorgold, successfully established that JAI Products had infringed the patent in suit. A residual issue left for later determination was whether the second applicant, Vertilux, was an exclusive licensee of the patent and therefore also entitled to have initiated proceedings pursuant to section 120 of the Patents Act 1990. A written licence was in place between Damorgold and Vertilux that imparted on Vertilux an exclusive licence to exploit the patent, and also purported to record the terms of an oral licence between the parties said to have been in place at least since the start of 2006. Under the licence, Vertilux was entitled to grant sublicences, with Damorgold’s written consent (although Damorgold could waive that requirement).

IP and Trade Practices

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Respondent’s prior product demonstrations of a competing article sufficient to destroy novelty of most of the claims in the patent in suit

Co-authored by Peter Heerey AM QC, Tom Cordiner and Alan Nash. The applicants (Damorgold) were the owner and exclusive licensee of a patent for a spring assisted blind mechanism, which had a priority date of 25 August 1999. The issue of the licensee’s right to relief was stayed. Damorgold claimed that JAI Products had infringed a suite of claims of the patent and JAI Products asserted the patent was invalid. In the end, Middleton J found two claims infringed and valid.