Australian Solar Mesh Sales Pty Ltd v Anderson [1999] FCA 641

FEDERAL COURT OF AUSTRALIA

Australian Solar Mesh Sales Pty Ltd v Anderson [1999] FCA 641 NEGLIGENCE – whether patent attorneys retained by applicant – whether breach of retainer – whether breach of duty of care with regard to patent application - no question of principle AUSTRALIAN SOLAR MESH SALES PTY LIMITED v NEVILLE JOHN ANDERSON & ORS NG 768 of 1993 BRANSON J SYDNEY 14 MAY 1999

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 768 of 1993

BETWEEN: AUSTRALIAN SOLAR MESH SALES PTY LIMITED

(ACN: 006-311-628)

Applicant

AND: NEVILLE JOHN ANDERSON & ORS

Respondents

JUDGE: BRANSON J

DATE OF ORDER: 14 MAY 1999

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: The application be dismissed. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 768 of 1993

BETWEEN: AUSTRALIAN SOLAR MESH SALES PTY LIMITED

(ACN: 006-311-628)

Applicant

AND: NEVILLE JOHN ANDERSON & ORS

Respondents

JUDGE: BRANSON J

DATE: 14 MAY 1999

PLACE: SYDNEY

REASONS FOR JUDGMENT

Introduction 1 The applicant claims damages for professional negligence and breach of retainer from the respondents, who are trustees of the Spruson and Ferguson Unit Trust, and at all relevant times carried on business as patent attorneys under the name "Spruson & Ferguson". The directors of the applicant are Kenneth Clyde Ivory ("Mr Ivory"), and his son Jarrod Kenneth Ivory. Former directors of the applicant include Kaye Francis Ivory ("Mrs Ivory"), who was a director of the applicant between 12 September 1987 and 28 October 1997, and Keith Albert George Smith ("Mr Smith"), who was a director of the applicant between 9 November 1984 and 12 September 1987. Mr Smith is Mr Ivory's uncle. 2 The applicant claims that in August 1985 it retained the respondents to act as its patent attorneys in respect of rights claimed in a fine fibreglass mesh. The mesh is said to have been designed to provide protection against small insects, and reduce direct sunlight and penetration by ultraviolet and infra-red rays. 3 The following facts are not in dispute. On 6 August 1985, the respondents forwarded to the Commissioner of Patents an application in the name of Mr Smith for a standard patent in respect of a screen mesh material accompanied by a provisional specification. The application was assigned the number PH1812. On 5 August 1986 the respondents forwarded to the Commissioner of Patents a complete specification in respect of the application No. PH1812. A petty patent application in the name of Keith Albert George Smith was lodged as a division of the pending application on 3 July 1987. On 4 September 1987, the petty patent application was amended in response to an examiner's report and on 20 October 1987 a petty patent issued in the name of Mr Smith for "a screen mesh material". In 1990 the applicant commenced a proceeding in this Court ("the Tomlin proceeding") against Tomlin Industries Pty Limited ("Tomlin") alleging infringement of the petty patent. Tomlin cross-claimed in the proceeding for the revocation of the petty patent. The claim for revocation succeeded, Wilcox J finding that the specification of the petty patent was ambiguous in its reference to colour and in its reference to yarn "of approximately 0.25 millimetres diameter". 4 The applicant claims that the revocation of the petty patent was caused by the negligence of the respondents in that they failed to advise the applicant that the mesh was incapable of patent or alternatively negligently failed "to draft the specification in such a manner that was not ambiguous and liable to revocation". In addition the applicant asserts that the respondents negligently failed to identify "the existence of a combination claim" in respect of the mesh, failed to exclude a reference to colour in the provisional specification, the complete specification and the petty patent application and failed to identify Mr Ivory as a co-inventor of the mesh in the provisional specification, the complete specification and the petty patent application. Finally, in respect of the petty patent application, the applicant claims that the respondents failed to act on the applicant's instructions when the applicant forwarded to the respondents a sample of an infringing product "in order that the petty patent application could be worded in such a manner so as to entrap the infringer".