Opposition – whether innovation patent should be revoked due to lack of entitlement of patentee - Inventorship – whether requestor is the sole inventor – whether requestor is an inventor jointly with named inventors
This Patent Office decision is the sequel to David Leigh Wake v Cavitus Pty Ltd  APO 11 ("the Cavitus dispute"), on which we reported earlier in the week.
Again the decision illustrates the challenges and pitfalls that can be associated with determining inventorship and entitlement if these are not settled at the earliest possible opportunity.
Furthermore, the assessment of inventorship may be a complex undertaking. In any given case, it may be necessary to consider not only the disclosure in the specification and claims, but also the state of the prior art, and also the specific circumstances in which the invention arose. There is no universally-applicable formula or "test" for inventorship, and ultimately each case will be decided on its specific facts.
Soniclean Pty L:td is a company having a core business in the sale of ultrasonic cleaning machines to the medical and dental industries. It was this company which, when looking for diversification opportunities back in 2002, initially invited David Leigh Wake ("Wake") to assist in researching potential new business opportunities. Wake suggested the possibility that ultrasonic techniques might be applied to the problem of cleaning used wine barrels, from which point numerous other individuals became involved in the development of this concept into a practical reality, and a number of patent applications were filed in a variety of names.
This decision relates to an innovation patent, no. 2008100881, which is a divisional of standard application no. 2004283761, which in turn claims priority from provisional application no. 2003905801 filed on 22 October 2003. The inventors named on the patent are Wah Tong Lee, Peck Yok Lee and Julian McDonald Smith. The Lees are founders and codirectors of Soniclean, while Smith was initially a consultant to Soniclean, and is now its Managing Director.
Much of the remaining relevant background is set out in our previous report of the Cavitus dispute, and the disputes are so closely related that the Commissioner's Delegate had regard to the evidence lodged in both matters when reaching his decision in each.
The invention is defined in claim 1 of the innovation patent in the following terms:
1. An ultrasonic apparatus for the cleaning of at least one barrel of the type having an internal chamber, said apparatus including:As in the Cavitus dispute, the claim is not limited to the concept of using ultrasonic waves for cleaning barrels. It also includes components for pumping fluid (water) into the barrel, and for pumping it out and recycling (filtering) it after cleaning, thereby reducing the possibility of transferring contaminants to other barrels during the cleaning process.
a fluid holding means;
a means of supplying said barrel chamber with fluid from the fluid holding means;
a support means for supporting at least one ultrasonic processor and allowing said ultrasonic processor to be moved to a barrel location for cleaning of said chamber;
a fluid recycling means for recycling fluid from a cleaned barrel so that it is suitable for supply to the fluid holding means for reuse.
Based on evidence filed in the Cavitus dispute, the Delegate found that Wake did not truly "regard his core inventive contribution as anything more than the use of a single sonotrode which was able to be inserted through the standard bung hole of a wine barrel" (at ), despite his submission in this case that the innovation patent claims his "core invention".
The review of the authorities in relation to inventorship is identical with that set out in the Cavitus dispute decision.
There was no evidence that Wake made any contribution to the idea of supplying and recycling the cleaning fluid, or indeed anything more that the basic initial concept discussed above (at ).
Furthermore, there was one piece of evidence submitted by Wake that the Delegate found to be "particularly problematic", namely a review by Wake of a document dated 31 August 2005 which Wake contended was a draft version of the original provisional patent specification. Unfortunately for Wake's argument, the provisional application was filed in 2003! (See decision at .)
The Delegate found "insufficient evidence to verify that Wake is a sole inventor" (at ).
The Delegate found, at , that:
...it appears most likely from the evidence that the only inventive contribution which can be attributed to Wake is the idea of cleaning and disinfecting a wine barrel by inserting a sonotrode through the bung hole of the barrel. His own written submissions seem to confirm this view. On this basis, the only common thread between Wake’s “core invention” and the subject invention is the use of “an ultrasonic processor” for barrel cleaning. It would therefore in my opinion be stretching credibility to suggest that Wake’s contribution represented a material step toward the development of the subject invention.
He therefore found that Wake did not meet the description of a "joint inventor" (at ).
Thus the opposition was unsuccessful.
As we have noted previously, inventorship in Australia arises from making a material contribution to the inventive concept which is discerned from a reading of the specification as a whole. A material contribution is one without which the invention "would have been less", or "but for" which the invention would not have been devised (University of Western Australia v Gray  FCAFC 116 at ; Polwood Pty Ltd v Foxworth Pty Ltd  FCAFC 9, at , ; Harris v CSIRO  APO 43).
It may therefore seem odd that in this case (as also in Cavitus) the Delegate found Wake to have made no material contribution, when he was responsible for the original suggestion to use ultrasonics for cleaning of wine barrels. But for this initial idea, it seems unlikely that Soniclean would have gone further along the path to development of the invention disclosed and claimed in the innovation patent.
The patent specification does not indicate that the concept of using ultrasonics is known in the prior art. On the contrary, it is stated (page 2, lines 15-16) to be an object of the invention "to provide for the cleaning of oak wine barrels using ultrasonics."
It is therefore not clear that this can be excluded from the overall inventive concept as discerned purely from "a reading of the specification as a whole". However, the Delegate did note at paragraph  of the Cavitus decision that Wake's original concept was the subject of the very first Soniclean provisional patent application no. 2003903659. Thus, at the time of filing of the priority application in this case, the precursor invention was not novel.
Accordingly, although Wake's original idea clearly led to the invention claimed in the innovation patent (and in the invention in the Cavitus patent application), at least in the sense of providing a foundation, there was no evidence in either case that Wake had any involvement in the further development of the concept to arrive at the improvements, or refinements, that became the subject of the later applications.
Arguably, these decisions suggest that one may look beyond the four corners of the specification in order to ascertain the "inventive concept" in a particular case. The specification may not clearly identify the inventive contribution that has been made over the prior art. A decision-maker may therefore have to look to other materials in evidence for indications as to the exact nature of the inventive concept, as well as to each person's contribution. In these cases, novelty and inventive/innovative step were not at issue at issue, and so there was no prior art information (other than that admitted in the specifications) against which to assess the inventive contribution.
Polwood itself was similarly a case in which novelty and inventive step were not at issue. As the court in that case stated, at , "[t]here is no suggestion that the combination as claimed was other than inventive or that there are any inessential integers in the claims." However, the court also stated, at , that the body of the specification "should explain the inventive concepts involved". So what happens if, as here, it does not? If the starting point for the inventive contribution is as indicated in the specification (ie in which the use of ultrasonics was unknown) then it would seem that Wake contributed to the invention. However, if the fundamental idea of using ultrasonics is taken to be already known at the outset, then Wake made no further contribution.
In the case of a combination invention, the principle stated in Henry Brothers (Magherafelt) Ltd v Ministry of Defence and the Northern Ireland Office  RPC 693 (at 706), to which the Polwood court referred at , is pertinent:
I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. Who was responsible for the inventive concept, namely the combination?Taking this approach, the evidence in this case fails to establish that Wake had any involvement in developing the "fluid recycling" improvement, and he was thus in no way responsible for the combination. Viewed this way, Wake's claim amounts to an assertion that, having contributed to the foundation concept of ultrasonic cleaning, he is therefore entitled to joint inventorship of every improvement to this concept, even if he had no involvement in making such improvements. This is clearly not the correct approach.
We conclude that the assessment of inventorship may be a complex undertaking. In any given case, it may be necessary to consider not only the disclosure in the specification and claims, but also the state of the prior art, and also the specific circumstances in which the invention arose. There is unlikely ever to be any universally-applicable formula or "test" for inventorship.