Commonwealth v Charlesworth – Entitlement

This case (The Commonwealth of Australia v John Murray Charlesworth [2008] APO 16 (3 June 2008)) related to a successful challenge by the Commonwealth of Australia, c/– Minister for Defence under Sections 32 and 36 of the Patents Act in respect of a water concentration measuring device conceived by Dr John Murray Charlesworth while employed by Defence Science and Technology Organisation (DSTO).

In considering recent decisions on this issue including the decision of Justice French in University of Western Australia v Gray (No 20) [2008] FCA 498 Delegate Powell found that when trying to decide what the invention is, if the applicant has clearly stated in the specification what they believe their invention to be (possibly in a consistory statement or clause), and that invention is different to the prior art that is described in the specification, then it is reasonable to proceed on the basis that the invention is what the applicant says it is. To do otherwise would be to ignore the disclosure of the specification.