13 November 2011

‘Stolen’ Invention Restored to Rightful Owner

Laurence Clifford Scott v Icon Plastics Pty Ltd [2011] APO 84 (3 November 2011)

Opposition – entitlement – whether the named inventor actually invented the subject matter of the application – whether the named applicant is an entitled person – filing of new application by entitled party

burglar-with-swag-bagA Hearing Officer (Delegate Ranganath Subbarayan) in the Australian Patent Office has invoked a rarely-used provision of the Patents Act 1990, which allows a true inventor to recover the right to apply for a patent on an invention that has been appropriated by another party.

It sometimes happens that someone – through a misunderstanding, ignorance or a lack of scruples – files an application for a patent in their own name, when in fact they are not entitled to do so because the invention was actually made by someone else.  Disputes over inventorship and ownership are not uncommon, and there are mechanisms to resolve issues of this type when they arise in relation to patent applications.

The simplest cases can be dealt with under Section 32, which allows the Commissioner simply to direct that an existing application proceed in the name of the rightful applicant.

However, some disputes are more complex.  In this case, a patent application in the name of Laurence Clifford Scott (‘Scott’) had been accepted, and was subsequently opposed by Icon Plastics Pty Ltd (‘Icon’).  One of the grounds of opposition was that Scott was not entitled to the patent, because he was neither the inventor nor a legitimate assignee of the inventor.  According to Icon, the invention disclosed and claimed in the application was actually devised by Icon General Manager Royston Douglas Bull (‘Bull’), had been misappropriated by Scott, and wrongfully made the subject of the application in Scott’s name.

The difficulty with succeeding in an opposition in these circumstances is that the result of a successful opposition is invalidation and rejection of the opposed application, leaving the party genuinely entitled to the patent with nothing!  The solution to this problem is provided by Section 33, which permits a new patent application to be filed by the opponent in these circumstances, and for the claims of that application to be given the benefit of the relevant earlier filing date of the original, unentitled, applicant.


Patent application no. 2006246325 was filed on 11 May 2006 (as an international application under the Patent Cooperation Treaty) claiming priority from Australian provisional application no. 2005902379 filed on 11 May 2005.  The invention disclosed and claimed in the application is a moulded plastic air duct, which is said to improve upon conventional steel ducts, along with methods of making the duct by blow moulding.

The invention arose as a result of an approach by Scott’s company, M & L Scott Pty Ltd, seeking a quotation from Icon for the production of extruded PVC ducting.  In addition to quoting on the extruded ducting, Bull (according to his version of events) devised an alternative design which could be produced by blow moulding.  The quotations, and the blow-moulded design, were discussed at a meeting held in February or March 2005.  M & L Scott Pty Ltd did not subsequently place any order with Icon.  Scott filed a provisional application for the blow-moulded duct design in May 2005.


There was – not unexpectedly – disagreement between the parties as to who came up with the blow-moulded concept, and then told the other about it at the meeting in early 2005.  For a variety of reasons (see paragraphs [65] to [82] of the decision), the Delegate found Bull’s account of events to be more convincing.  He then applied the test for inventorship set out in University of Western Australia v Gray [2009] FCAFC 116:
  1. identify the “inventive concept” of the invention as defined in the claims;
  2. 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
  3. determine if contractual or fiduciary relationships between the parties at the time of the inventorship give rise to the proprietary rights in the invention.
The Delegate found that it was Bull who developed the inventive concept, and communicated it to the Scotts at the meeting held in early 2005 (at [75]).  Scott was therefore not entitled to be granted a patent, and the opposition was successful.


So where does this leave Bull and Icon?  The answer to this lies in subsection 33(1) of the Patents Act, which relevantly provides that:

    (a) an application has been made for a standard patent; and
    (b) the grant of the standard patent is opposed … by one or more persons; and
    (c) the Commissioner decides …  that:
            (i) one or more opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
            (ii) the nominated person in respect of the application is not an eligible person in relation to the invention; and
            (iii) there is no other reason that a patent should not be granted; and
    (d) a complete application is made under section 29 by one or more of the eligible persons for a patent in relation to the invention;
    the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed.

In other words, if Icon wants patent right sin relation to the invention, it must file its own application.  According to subsection 33(5):

If the Commissioner grants a patent under subsection (1) … the claims of that patent granted have the same priority date as that of the original claim referred to in the respective subsection.

That is, if Icon does elect to file its own application, that application will have the benefit of the original filing date of Scott’s application.

The Delegate pointed out (at [94]) that it is ‘essential that the new application does not claim new matter or include claims falling outside the scope of the claims of the present application.’  Section 33 does not explicitly say this, however the new application is still required to satisfy all of the usual substantive grounds of patentability, including novelty, inventive step, and fair basis upon the original application from which priority is ultimately derived.


Requiring a successful opponent in these circumstances to file its own application, rather than simply awarding the patent to the rightful owner, may seem like a somewhat round-about approach.

It does have certain advantages, however.  For example, the new application will have its own number and Patent Office file, and will not be encumbered with the history of the original application.  It will therefore not inherit any defects which might have been introduced into the original application while the application was not under the control of the rightful owner.

The requirement, identified by the Delegate, that the new application must have claims falling within the scope of the accepted claims of the original application might, in some circumstances, prove disadvantageous to the new applicant.  They might, for example, have different commercial objectives to those of the original applicant, and therefore wish to have claims of a different scope.  On the other hand, the public is entitled to assume that once patent claims have been accepted, they will not subsequently be broadened.

In this case, it seems that Icon did not have sufficient interest in the invention initially to file its own patent application.  It therefore lost the opportunity to have full control over the final scope of its claims.  Icon is not required to take advantage of the invitation to invoke Section 33.  It will be interesting to see whether its interest in the invention has increased sufficiently to justify filing it sown application.  It seems like Icon might have one paying licensee already.  Furthermore, the work involved would be relatively minimal, since there is already an accepted specification and claims which may be used as a template.


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