Inventors Shaken But Not Stirred by Ultrasonic Cleaning Decision

David Leigh Wake v Cavitus Pty Ltd [2010] APO 11 (29 July 2010)

Inventorship – whether requestor is the sole inventor – whether requestor is an inventor jointly with named inventors – Eligible persons – whether named applicant is a person to whom the patent may be granted

ABSTRACT

This is a Patent Office decision of a Delegate of the Commissioner, Owen Haggar, relating to a dispute over inventorship and ownership of a patent application.

It serves as a further reminder, if one were needed, of the difficulties that can arise when inventorship and ownership of inventions are not resolved very early in the process of innovation and commercialisation. It is easy to assume, when starting out on a new project in which all collaborators are enthusiastic and relationships are positive, that it will be possible to work out the details later.

However, if the relationships sour before these issues have been resolved then they can become complex and potentially costly distractions from the main game of commercialising the invention. This is what appears to have happened in this case.

BACKGROUND

The patent application at issue in this decision is no. 2005200778, in the name of Cavitus Pty Ltd ("Cavitus"). The invention disclosed in the application is an ultrasonic apparatus and method for cleaning an disinfecting containers, and particularly for eliminating bacteria and yeast from timber wine barrels.

David Leigh Wake ("Wake") applied to the Commissioner of Patents under sections 32 and 36(1) of the Patents Act 1990 for a determination that he (ie Wake), and not Cavitus, should be named as the sole applicant on the application, and for a declaration that he, and not Cavitus, is the sole person eligible for the grant of a patent on the application.

As is often the case with these kinds of disputes, the background is convoluted and obscured by competing accounts of events. We will therefore not attempt to provide a detailed summary, which can be read in the decision (at [14]-[45]).

For present purposes, it is important to note only that:

1. Wake was involved from an early stage in developing the idea of using ultrasonics for cleaning wine barrels;
2. the inventors named on the application, Darren Bates ("Bates"), Andrew Yap ("Yap"), Arthur McLoughlin ("McLoughlin") and William Wright ("Wright") all became involved in the project at various stages and, after a falling-out with Wake ultimately went on to form Cavitus without him, as a vehicle to commercialise the ultrasonic cleaning technology;
3. Wake’s background is in marketing, and it appears that he had no technical knowledge of ultrasonics prior to becoming involved with Bates in January 2003;
4. all of the other individuals brought various technical skills and knowledge to the project; and
5. while there were a number of earlier patent applications filed which included Wake as an inventor, application no. 2005200778 was filed after the falling-out and formation of Cavitus.

THE INVENTION

By way of example, claim 1 defines the invention in the following terms:

1. An ultrasonic apparatus, including:

a sonotrode at least substantially surrounded by a membrane;

an ultrasonic generator connected to the sonotrode; and
an ultrasonic transducer connected to the ultrasonic generator and associated with the sonotrode;
such that when in use the sonotrode is placed within the inside of a container; the container containing a first liquid, the sonotrode being at least partially surrounded by a second liquid, the membrane being positioned between the first and second liquids so that the sonotrode is in direct contact with the second liquid and not the first liquid.

So the sonotrode (ie the component that transmits ultrasonic waves into the barrel) is surrounded by a membrane, with a first liquid (hot water in the preferred embodiment) in the barrel and outside the membrane, and a second liquid (cooler water) inside the membrane.

According to Cavitus’ (undisputed) evidence (at [33]) it was McLoughlin who came up with the “sheath concept”, which would enable more effective generation of sound waves within the sheath, with the energy then being transferred into the first liquid for more effective cleaning of the barrel.

It is notable that the invention is not "merely" the use of ultrasonic waves generated by a sonotrode inserted into a barrel for the purpose of cleaning.

WAKE'S CONTRIBUTION

It does not appear to have been in dispute that, based on prior experience in the wine industry, Wake originally informed the other parties of the need for a more reliable method for cleaning and disinfecting oak barrels.  This information seems to have been provided in the context of Wake being asked to assist in identifying opportunities to diversify the business of Soniclean Pty Ltd, of which Wright was the General Manager at the time.

Wake therefore suggested the possibility that ultrasonics might be useful in the wine industry.  His original concept was simply to insert a sonotrode into a barrel, but since the bung hole was too small to accommodate the available devices he had proposed creating a larger opening in the side of the barrel for cleaning purposes.  This idea was nixed when Wake presented a prototype to a cooperage firm, which advised him that winemakers were unlikely to accept any approach that involved compromising the integrity of the barrel.

Wake then proceeded to investigate the possibility of using multiple mini-sonotrodes, until Bates informed him about a source of a sonotrode small enough to be inserted into a barrel through the bung hole.

Wake himself characterised his initial concept as being "to create a removable panel incorporating the bung hole in the top of a wine barrel to facilitate the insertion of a sonotrode" (at [38]).  He further acknowledged that the "sheath concept" originated with McLoughlin (at [40]):

"The inclusion of the ‘sheath’ concept in the [present application] constitutes the sole difference between the invention disclosed therein and my invention. The Cavitus ‘invention’ is, in fact, my invention shrouded in an unnecessary, impracticable and useless ‘sheath’, with an unnecessary, impracticable and useless tube [to convey water into and out of the sheath] attached. Once the ‘sheath’ and tube are removed, only my invention remains."

ASSESSING INVENTORSHIP

The authorities for assessing inventorship under the Australian law are reviewed at paragraphs [53] to [60].  The relevant principles may be summarised as follows:

1. an inventor is someone who has contributed to the inventive concept, which is to be ascertained from the specification as a whole, including (but not limited to) the claims (Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, at [46], [60]);
2. the contribution must be material, in the sense that without this contribution the invention "would have been less" (University of Western Australia v Gray [2009] FCAFC 116 at [248]; Polwood at [46]; cf the so-called "but for" test in Harris v CSIRO [1993] APO 43 - "would the invention have occurred without Harris' involvement...");
3. a material contribution may arise in the "reduction to practice" of an inventive concept if an inventive step is required; if not, then reduction to practice does not demonstrate inventorship (UWA v Gray at [248]); contribution after the invention is fully conceived does not give rise to inventorship (Polwood at [46]);
4. joint inventorship arises "where one person has a general idea for solving a problem but is unable to give effect to the idea while another person is able to do so" (Row Weeder Pty Ltd v Nielsen [1997] APO 38).

Sole Inventorship

While Wake initiated "investigations... into the potential application of ultrasonic cleaning technology in the wine industry" (at [73]), by his own admission he made no contribution to the sheath concept (at [74]), which is central to the invention as discerned from reading the specification as a whole (at [72]).  Wake's efforts to discredit the merit of the sheath concept are irrelevant to the enquiry into inventorship (at [74]).

The Delegate found that, since the sheath concept originated with McLoughlin, Wake cannot be sole inventor.

Joint Inventorship

Wake's original invention was the subject of an earlier provisional application, in which it was "broadly disclosed as comprising an ultrasonic apparatus for cleaning a wine barrel of the type having a bung hole, the apparatus including a longitudinal shaft of a diameter less than the diameter of the bung hole, an ultrasonic generator, and at least one ultrasonic transducer associated with the shaft" (at [82]).

The Delegate found that this basic contribution could not be said to have been material to the development of the sheath concept ("it would... be stretching credibility to suggest that Wake’s invention led toward the subject invention, and more particularly the introduction of the sheath concept", at [83]).

Thus Wake was not a joint inventor.

ELIGIBLE PERSONS

Since Wake was not an inventor, the issue of whether the applicant, Cavitus, had accrued any rights from Wake did not arise (at [86]).

There was no evidence to contradict that of Cavitus that it derived legal entitlement to the invention from all of the named inventors.  Thus the Delegate declared Cavitus to be an eligible person, and directed that the application should continue in its name (at [87]).

COMMENT

It is important to bear in mind that 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.  Unlike the equivalent US enquiry, the focus is not solely upon the invention "as claimed".

A contribution will be material if the inventive concept would not have been reached, or would have been somehow "less" without it.  There is not, in Australian law, as clear a demarcation between "conception" and "reduction to practice" as there is in the US law, and a material contribution giving rise to entitlement as an inventor may be made during the process of reducing an original idea to practical implementation.

There is some evidence that the Australian law regarding inventorship is converging towards the US position.  Certainly recent Australian decisions, such as that of the Full Federal Court in Polwood have expressly referred to US authorities.  However, it appears that the Australian courts are inclined to find sufficient "conception" at an earlier stage than in the US, such that there remains scope for invention in the course of reducing the initial concept to a practical form.

It is worth bearing in mind, in this regard, that there is less incentive in the Australian context to identify a specific time at which an invention may be said to be fully "conceived" by a particular inventor, because we are rarely concerned with who was the first to invent.

Nonetheless, this decision, and others like it, highlight the value of keeping good records as evidence of who contributed what, and at what stage, in the course of a collaborative project.

Tags: Australia, Inventorship, Ownership