Last year we blogged about the Federal Court Decision in MPEG LA, LLC v Regency Media Ltd [FCA 2014 180]. The case concerns s.145(1) of the Patents Act 1990 (Cth), which permits either party to a contract relating to a licence to exploit a patented invention to terminate the contract on three months’ written notice “at any time after the patent, or all the patents, by which the invention is protected at the time the contract was made, have ceased to be in force”.

The trial judge rejected the licensee’s argument that the subject matter of each Australian patent licensed by the agreement was a separate “patented invention”, and therefore on the expiry of a single Australian patent, the invention claimed in it was no longer protected by a patent, and the licensee could terminate the entire licence agreement.

Flick J preferred the licensor’s argument that each of the three types of subject matter identified in the licence agreement (MPEG–2 encoding devices, MPEG-2 storage devices and MPEG-2 decoding devices) was a “patented invention” for the purposes of s.145, and therefore the licence agreement could not be terminated until there were no Australian patents in force relating to at least one of these three “inventions”. The weakness of this interpretation is its inconsistency with the way “invention is used throughout the Patents Act, and that it makes rights under s.145(1) dependent on the way the contract defines the subject matter of the licence (although s.145(2) states that the section applies despite anything to the contrary in the contract).

The Full Federal Court in the Regency Media Pty Ltd v MPEG LA, LLC [2014 FCAFC 183] rejected the trial judge’s approach to “patented invention”, preferring the licensee’s argument that a “patented invention” in s.145(1) is the invention that is the subject of a licensed patent. However, this partial victory was not a triumph for the licensee. The Full Court accepted the licensor’s argument (not raised at first instance) that s. 23(b) of the Acts Interpretation Act 1901 (Cth), which provides that words in the singular number include the plural unless the contrary intention appears, should be applied. Accordingly, the Full Court interpreted s. 145(1) as meaning that the contract could not be terminated until all patents by which the inventions to which the contract related had ceased to be in force. This meant that the licensee had improperly purported to terminate the licence agreement. Because the licensor had raised this point so late in the litigation, the licensee was ordered to pay only half of the licensor’s costs of the appeal.

The best way to minimise the effect of s.145 on a licence that includes both Australian patents and foreign patents or other intellectual property is to have a separate licence for the Australian patents with a separate licence fee. It would be wise not to rely on severance clauses, as they might be rendered ineffective by s.145(2).

An interesting issue not addressed in this litigation is the effect of governing law and exclusive jurisdiction clauses. It seems likely that s.145 would be applied by Australian court to contracts not governed by Australian law, as it applies “despite anything to the contrary in the contract”. There is a reasonable argument that an Australian court should not give effect to a foreign judgement against an Australian defendant enforcing a contractual claim under a contract validly terminated under s.145. But could an American defendant in an American court rely on termination under s.145 of a patent licence that was governed by the law of an American state, but included Australian patents?