04 May 2009

Delegate decides on inventorship.

On 20 April 2009, the Delegate of the Commissioner of Patents handed down Razmik Abnoos v CSR Building Products Limited [2009] APO, a decision on a request under sections 32 and 36.

The quarrel

The requestor (Abnoos) requested that a patent application filed in the name of CSR proceed in his name. The request was based on a claim by Mr. Abnoos that he conceived the invention defined in the patent application and so should have been named as the sole inventor. Mr. Abnoos submitted evidence that supported his claim that his date of conception was November 2005. CSR did not dispute this claim. However, it argued that an inventor in its employ conceived the invention before this date, that is in October 2005.

The law

Section 32 of the Patents Act provides that, if a dispute arises between any two or more interested parties, the Commissioner may make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the interested parties or for regulating the manner in which it is to proceed, as the case requires. Section 36(1) provides for a person to apply to the Commissioner for a declaration that some other person is to be granted the patent. Section 15(1) provides that a patent for an invention only be granted to a person who is the inventor.

On 16 March 2008 I posted on Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC, so I won't go into too much detail about the determination of Inventorship. In short, a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the final concept of the invention. The concept of the invention is determined not by the way the invention is defined in the claims but rather on a reading of the entire specification and claims and a distillation of that material into the inventive concept.

The decision

Various meeting notes were tendered in evidence. These did little to help CSR's arguments because they did not specifically attest to an offering of the invention by the representative put forward by CSR. Given that CSR did not dispute the claim by Mr. Abnoos that he conceived the invention in November 2005, it would have been all over for CSR save for an AutoCAD file tended in evidence by CSR. The file was created on 18 October 2005 and was a drawing encompassed by the invention. The delegate held that it was sufficient evidence that the representative of CSR authored the invention as opposed to Mr. Abnoos.

Lessons

It is important not to lose sight of the fact that electronic files can be tendered in evidence during proceedings. The electronic age brings with it the added burden for practitioners to keep careful track of all information regardless of whether or not it is reduced into a tangible form.