Inventorship – request under section 32 of the Patents Act 1990 – entitlement – request under section 36 of the Patents Act 1990 – identification of ‘inventive concept’ – whether inventor’s prior disclosure of inventive concept precludes claiming inventorship and/or entitlement in a subsequent patent application
This Australian Patent Office decision, by Hearing Officer Owen Haggar, concerns issues of inventorship and entitlement. In particular, Robert Dommett, who through his business RDA Research provides market research services, contended that he was in inventor, and was entitled to be a ‘nominated person’ (i.e. applicant), in respect of Australian patent application no. 2010201111, filed in the name of Zebra Research Pty Ltd (‘Zebra’), and naming Katie Harris as an inventor.
Two provisions of the Australian Patents Act were relied upon by Dommett. Section 32 provides for the Commissioner to make decisions regarding disputes between parties over patent applications. In this case, Dommett requested that he be declared as the inventor on the application, and not Katie Harris. Section 36 provides for the Commissioner to make determinations regarding the correct ‘eligible persons’ on a patent application, i.e. the persons (natural or corporate) entitled by invention, assignment or other transfer of title, to be the owner of any patent ultimately granted. Dommett requested such a determination, with the intention of showing that he (or perhaps his company) is the correct eligible person.
To cut a long story short, the Hearing Officer determined that Dommett was indeed the originator of the broad ‘inventive concept’ underlying the patent application. However, since he had made non-confidential disclosures and commercial use of the concept prior to the priority date of the patent application, this subject matter was not novel or inventive, and could not be the basis for the grant of a valid patent. Therefore Dommett could not be an inventor, and could not be eligible for the grant of a patent on the application.
What is intriguing about this case is that there does not appear to have been a significant dispute between the parties over the nature of the broad ‘inventive concept’. Nor does it appear to have been disputed that this concept was communicated by Dommett to Harris before the priority date of the application, or that there were other non-confidential disclosures of the concept dating back over a year prior to this. However, both parties seem also to have accepted that there may be patentable subject matter in the application, such that there was something of sufficient value to justify requesting – and defending – a determination on ownership.
On the face of it, there seems to be some contradiction in this. However, the decision does make sense, and appears to produce a correct outcome, on its own terms.
BACKGROUNDThe invention disclosed in the application relates to geo-demographic profiling, which might be regarded as the practice of profiling (i.e. estimating likely characteristics) of people based upon where they live. The evidence showed that geo-demographic approaches had been used in Australia since the 1980’s, and in the US and the UK since the 1970’s.
More particularly, the invention is said to address the problem of possible ‘non-representativeness’ of participants in market research surveys. To do this, demographic data is collected from each survey participant (e.g. where they live), and then the collected data of the survey group is compared with known corresponding data of a target community (i.e. the complete population of people the market research is trying to measure). The known data may be, for example, census data. The comparison produces a value which indicates how representative are the online survey participants of the target community.
While this is a fairly broad statement, Dommett and Zebra apparently agreed that this was the main underlying concept behind the invention. The originally-filed claims were also essentially of this scope, the only difference being the specific application of the concept for profiling of participants in online surveys.
There does not appear to have been any substantial disagreement between Dommett and Zebra that throughout a period between 2007 and 2009 various events took place by which documents (e.g. sample market research reports) were supplied by Dommett to Harris, to Zebra and to other parties, which generally disclosed the broad concept outlined above (see, e.g., -).
For her part, however, Harris claimed to have had an ‘epiphany’ regarding the use of geo-demographic profiling in the context of online communities used for market research purposes, independent of any of her dealings with Dommett (at ).
DETERMINING INVENTORSHIPThe Hearing Officer considered the question of entitlement in light of the decision of the Full Court of the Federal Court of Australia in University of Western Australia v Gray  FCAFC 116. In particular, the court set out a three-step procedure:
- identify the “inventive concept” of the invention as defined in the claims;
- determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
- determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.
In this case, it seems that both parties considered that only Dommett or Harris could be the inventor. However, in other cases it may be that one or both parties request the addition and/or removal of joint inventors.
DOMMETT’S CLAIMOn behalf of Dommett, it was argued that ‘the concepts of geo-demographic segmentation (or classification) and adjusting the weight of market research data represented common industry practice’ (at ) and, on the basis of Dommett’s evidence and actions that (at ):
… the alleged “epiphany” which forms the basis of Ms Harris’ claim to inventorship could only have come from information conveyed to her by the requestor either directly or through the agency of Mr [Simon] Harris. … what Ms Harris appears to be claiming is conception of the idea of applying geo-demographic techniques to online communities. However, the commercial viability of geo-demographic market research was known well before her alleged epiphany as evidenced by the respective sample RDA reports released to [online panel provider] I-View in April 2008 and provided to Ms Harris in May 2009.
ZEBRA’S DEFENCEFor its part, Zebra did not dispute that Dommett had communicated the inventive concept to Harris before the priority date of the application, arguing (at ) that it is a fundamental principle that:
“an inventor of prior art does not have any entitlement to a third party’s patent application in respect of which that prior art is relevant”
and likewise that:
“a prior user of technology in Australia does not have any entitlement to a third party’s subsequent patent application that covers such technology. If a party decides to commercialise technology without first seeking patent protection, they should not be able to revive their ability to use the patent system simply because a third party subsequently seeks to patent similar technology.”
THE DECISIONThe Hearing Officer noted (at -) that another delegate of the Commissioner (Matt Kraefft) faced a similar issue in Mining Equipment (Minquip) Pty Ltd v Mining Supplies Pty Ltd  APO 55, where Minquip asserted that Mining Supplies had themselves publicly disclosed all the subject matter for which Mining Supplies was seeking entitlement, before the priority date of their specifications. In that case, it had been concluded that:
It would be inappropriate to make any declaration under s 36(1) ... for subject matter that the party seeking the declaration ... had made publicly available
and that Mining Supplies:
had forfeited any right to a patent for an invention in respect of [that subject matter] and was not entitled to the invention disclosed.
The Hearing Officer therefore found that, although Dommett had successfully established that the inventive concept was developed by him, ‘there is no matter for which I can make a finding of inventorship under section 32 or a declaration under section 36 in favour of the requestor’ (at ).
COMMENTSWhile the law requires that inventorship and entitlement be determined by a relatively roundabout route, we believe that this particular decision may be interpreted quite simply as follows.
Firstly, it seems fairly clear on the facts that whatever contribution Dommett might have made to the subject matter of the application, it was subject matter that he had previously disclosed and which was therefore not novel. (Alternatively, it was subject matter that Harris could have learned of indirectly, from other sources, rather than directly from Dommett.) As such, Dommett could not have made an inventive contribution to any subsequently-filed patent claims.
Secondly, as to whether Harris’ so-called ‘epiphany’ has resulted in the creation of any new patentable subject matter in the application, this is a matter to be dealt with during the substantive examination of the application.
While it is not generally appropriate to conduct an inquiry into questions of patentability, such as novelty and inventive step, in reaching a decision under sections 32 and/or 36, the circumstance that a person claiming inventorship or entitlement has, by their own account, disclosed precisely what they are claiming to have contributed before the priority date, is something that a decision-maker clearly cannot ignore.
It is clear that both sections 32 and 36 involve the exercise of a discretion by the Commissioner, which will not be exercised in favour of a person who has not provided persuasive evidence in support of their claim. As the Hearing Officer noted (at ), ‘[i]t is well settled in law that in these proceedings the requestor carries the legal burden of proof on the balance of probabilities. However, the evidential burden may shift from time to time, particularly where knowledge of the relevant facts lies peculiarly with one party or the other…’
- Application no. 2010201111 was under examination throughout the period of this proceeding. A total of six examination reports had issued by the time of the decision, raising objections including entitlement, lack of inventive step and lack of manner of manufacture. On 13 July 2011 (i.e. the day after the decision issued), Zebra’s representatives wrote to the Patent Office, requesting withdrawal of the application, and stating:
It is specifically noted that the decision to withdraw the application is made on commercial grounds unrelated to the Delegate’s decision dated 12 July 2011. That is, no inference should be made that the Delegate’s decision has caused this decision to withdraw.
- Zebra is, additionally, the proprietor of an uncertified innovation patent, no. 2010100225, relating to the same subject matter. Since sections 32 and 36 provide for directions of the Commissioner only in relation to pending applications, the innovation patent could not be the subject of similar requests by Dommett. The AusPat records suggest, however, that a request under section 36 was filed (perhaps accidentally) in relation to the innovation patent. It appears that the error was subsequently noted by Dommett’s attorneys, and additionally that the Patent Office (correctly) responded that it was unable to process the request. However, it seems certain that any future attempt to have the innovation patent certified would result in objections based upon the various issues raised in this decision.