Weatherford Australia Pty Ltd v Screenex Pty Ltd [2009] FCA 331

FEDERAL COURT OF AUSTRALIA

Weatherford Australia Pty Ltd v Screenex Pty Ltd [2009] FCA 331

INTELLECTUAL PROPERTY – Patents – Divisional application – Error in request – Wrong parent application cited – Whether can be amended after lapse of correct application – Whether should be amended – Nature of error – Undetected error in operation of computer database – Whether akin to clerical error – Whether error should have been picked up earlier – Whether other party prejudiced by amendment. INTELLECTUAL PROPERTY – Patents – Amendment of patent request – Whether corresponding amendment on register should be made – Whether entry is an "error or defect" – Whether patentee has standing to apply. STATUTES – "Person aggrieved". Patents Act 1990 (Cth) ss 39, 105, 192 Patents Regulations 1991 (Cth) r 3.11(2) Smith Kline & French Laboratories v Evans Medical Limited [1989] 1 FSR 561 WEATHERFORD AUSTRALIA PTY LTD and JOHNSON SCREENS (AUSTRALIA) PTY LTD v SCREENEX PTY LTD

VID 261 of 2007

JESSUP J

9 APRIL 2009

MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY VID 261 of 2007

BETWEEN: WEATHERFORD AUSTRALIA PTY LTD

First Applicant

JOHNSON SCREENS (AUSTRALIA) PTY LTD

Second Applicant

AND: SCREENEX PTY LTD

Respondent

JUDGE: JESSUP J

DATE OF ORDER: 9 APRIL 2009

WHERE MADE: MELBOURNE

THE COURT ORDERS THAT:

1. The proceeding be listed on a date to be fixed for the purpose of receiving the parties' submissions as to the terms, if any, to which an order of amendment under s 105 of the Patents Act 1990 (Cth) should be subject and for the purpose of settling the terms of the orders to be made conformably with the court's reasons published this day. 2. Costs be reserved. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using eSearch on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA