Disputing ownership of a patent – joint inventors

The Patents Act 1990 (Cth) (Act) provides the framework for patent registration and regulation in Australia.

Who may be granted a patent?

Section 15(1) of the Act provides that a patent may be granted to a person who:

  • is the inventor;
  • would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person;
  • derives title to the invention from the inventor or a person mentioned in paragraph (b); or
  • is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).

It is immaterial whether or not the person seeking a patent is an Australian citizen: Section 15(2) of the Act.

Any person may initiate an action to oppose the grant of a standard patent within three (3) months of publication of its lodgement with IP Australia.  An objection raised by an opponent may be similar, or in addition to, that already overcome by an applicant during examination of the patent application by the Patent Office.

Who has jurisdiction to hear a dispute in relation to contested ownership of a patent?

Opposition hearings are the responsibility of the Commissioner of Patents and are heard and determined by senior patent examiners within the Patent Office.

Section 32 of the Act describes the conditions that need to be met where there may be a dispute between applicants as to the ownership of a Patent:

“If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.”

Outcome of opposition hearings

There are several possible outcomes of opposition proceedings.  The Commissioner may dismiss an opposition on procedural grounds, either in whole or part; the proceedings may result in the amendment of one or more of the patent claims in order to rectify deficiencies in the application; or the opposition may be successful, in which case the Commissioner may refuse to grant a patent.  The most common outcome of opposition proceedings is that the scope of the opposed patent claims is restricted. The patent holder or the opponent may appeal decisions of the Commissioner to the Federal Court.

Grounds for opposition

Standard patents

Section 59 provides that the grant of a standard patent (pre-grant opposition) and section 101M provides that an innovation patent that has been certified (post-grant opposition) may be opposed on one or more of the grounds specified in the section and on no other ground.

The specified grounds under section 59 in relation to standard patents are:

  • that the nominated person is either:
  • not entitled to a grant of a patent for the invention; or
  • entitled to a grant of a patent for the invention but only in conjunction with some other person;
  • that the invention is not a patentable invention;
  • that the specification filed in respect of the complete application does not comply with subs 40(2) or (3).

Innovation Patents

The specified grounds under section 101M in relation to Innovation Patents are:

  • that the patentee is either:
  • not entitled to the patent; or
  • entitled to the patent but only in conjunction with some other person;
  • that the invention is not a patentable invention because it does not comply with subs 18(1A)(a) or (b);
  • that the invention is not a patentable invention under subs 18(2) or (3);
  • that the complete specification does not comply with subs 40(2) or (3).

The question of entitlement to an invention arises in numerous contexts under various sections of the Act including sections 32, 36, 59 and 138.

What are the tests for joint inventor ship?

The Commissioner of Patents in Charles Genn V Ross William Bain [2000] APO 39 applied the principles to test for joint inventorship set out in John Dillon Upham and Commissioner of Patents; Victor and Dan Vrubel (Joined parties) [1998] AATA 852 by Mr BJ McMahon at 20:

  • There must be an objective assessment of his (sic) contribution simpliciter to the invention (Gilbert and Hazlewood);
  • In assessing the weight to be given to that contribution, one should ask firstly whether his contribution beneficially affected the final concept of the claimed invention and secondly, whether that final conception would have been less efficient without his contribution (Mueller Brass);
  • It is also legitimate to ask whether the invention would have occurred without the claimant’s involvement (Harris); and
  • Evidence of collaboration is useful in assessing objectively whether there has been a relevant contribution.

The decision in CSIRO v Gilbert and Hazlewood [1995] 31 IPR 67 stated the key issue in that case was not one of inventiveness but of entitlement.  The rights in an invention do not flow from an assessment of the inventiveness of respective contributions but rather from an objective assessment of the contribution simpliciter to the invention.  The decision held that a consequence of collaboration between parties is that entitlements to any inventions, associated with the collaboration, are shared between the parties.

Mueller Brass Co v Reading Industries Inc (1972) 176 USPQ 361 at 372 stated:

“The exact parameters of what constitutes joint inventorship are quite difficult to define.  It is one of the muddiest concepts in the muddy metaphysics of the patent law.  On the one hand, it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed.  To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented.  Perhaps one need not be able to point to a specific component as one’s sole idea, but one must be able to say that without his contribution to the final conception, it would have been less – less efficient, less simple, less economical, less something of benefit.  This court has found no case in which co-inventorship status was recognised where the alleged co-inventor was not deemed in some way, at least presumptively, to have beneficially affected the final concept of the claimed invention, and if such a case exists, it would be so anomalous as to warrant little attention.”‘

At page 488 Mr Herald, in passing, also formulated another test which has been referred to with approval in subsequent cases.  He postulated that a significant question would be whether the invention would have occurred without the claimant’s involvement, often referred to as the “but for” test.

Harris v CSIRO [1993] 26 IPR 469 puts forth a number of questions to consider. These are:

  • what the invention(s) is/are of the person making the section 36(1) request;
  • what the invention(s) disclosed in the specifications is/are of the person who made the patent application; and
  • whether one person has any rights in the invention of the other, and vice versa.

The decision also suggests a more significant question of whether the invention would have occurred without a particular person’s involvement.

In each case, entitlement must be determined by reference to section 15. Under section 15, entitlement arises either by being the inventor or through a legal right vested in the party by the inventor.  Therefore, considerations of inventorship and entitlement are often heard together and have become intertwined in the cases.

Standard of proof required

In entitlement disputes involving section 32 and section 36 of the Act, the standard of proof is the civil standard (the balance of probabilities) and the opponent has the burden of proving its case.  However, in certain circumstances the applicant may too have an evidential burden, particularly where relevant facts are likely to be within its exclusive knowledge.   This often occurs in situations where the case raises questions of who was doing what research at which points in time.

Where the issue of entitlement to an invention is raised in the context of a section 59 opposition, the opponent bears the onus of proof in establishing that the patent, if granted, would be clearly invalid: F Hoffmann-La Roche AG v New England Biolabs, Inc [2000] FCA 283.  This is a higher onus than that required for a determination under section 32 and therefore it is often the case that where entitlement is the key ground of opposition, an opponent will also file a request for determination of entitlement under section 32.

Further references

Legislation

Patents Act 1990 (Cth)

Cases

Charles Genn V Ross William Bain [2000] APO 39

CSIRO v Gilbert and Hazlewood [1995] 31 IPR 67

F Hoffmann-La Roche AG v New England Biolabs, Inc [2000] FCA 283

Harris v CSIRO [1993] 26 IPR 469

John Dillon Upham and Commissioner of Patents; Victor and Dan Vrubel (Joined parties) [1998] AATA 852

Mueller Brass Co v Reading Industries Inc (1972) 176 USPQ 361

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Take care when alleging patent infringement

Further information

If you need assistance with any aspect of patent laws, please telephone me for an obligation free and confidential discussion.

Brisbane Lawyers
Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
Telephone: (07) 3221 0013 | Mobile: 0419 726 535
e: mburrows@dundaslawyers.com.au

 

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Dundas Lawyers
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