1414 Degrees Limited v Climate Change Technologies Pty Ltd - [2018] APO 28

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
1414 Degrees Limited v Climate Change Technologies Pty Ltd [2018] APO 28

Patent Application: 2012292959

Title:Thermal Energy Storage Apparatus

Patent Applicant:  Climate Change Technologies Pty Ltd
Opponent:  1414 Degrees Limited
Delegate:  M. G. Kraefft
Decision Date:  1 May 2018
Hearing Date:  1 March 2018, in Melbourne

Catchwords: PATENTS – section 59 – opposition to grant of patent – entitlement – inventive concept in use of contiguous block of heat-absorbing material in form of machinable sintered graphite – whether inventive concept arose while inventors were engaged under service agreement by opponent’s predecessor – whether service agreement enabled transfer of intellectual property rights to opponent – standing of verbal agreement considered in light of surrounding circumstances – applicant’s non-entitlement not established – parties found to be jointly entitled.

Representation: Counsel for the applicant: Mr Ben Fitzpatrick
Patent attorney for the applicant: Dr Grace Chan, Davies Collison Cave.

Patent attorney for the opponent: Dr Anthony Lee, Madderns.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012292959

Title:Thermal Energy Storage Apparatus

Patent Applicant: Climate Change Technologies Pty Ltd
Date of Decision: 1 May 2018
DECISION
In the present case, the inventive concept is a contiguous block of heat-absorbing material in the form of machinable sintered graphite, and a plurality of heat storage elements in thermal contact therewith, with each storage element being received in a respective hole machined in the block. That inventive concept did not arise while the inventors were engaged with the predecessor company of the opponent.
Nonetheless, I have also determined whether the nature of the service agreement between the parties would have enabled the transfer of intellectual property rights to the predecessor. I have found the service agreement would have enabled such transfer of rights.
As the inventive concept though did not arise while the inventors were engaged with the predecessor, the opponent has not established that the applicant would not be entitled to a grant of a patent for the invention in the present case.
The inventors though could not have reached the inventive concept without their knowledge of developments undertaken at the predecessor company. I conclude the parties are jointly entitled to the claimed invention.
The application should proceed jointly in the names of Climate Change Technologies Pty Ltd and 1414 Degrees Limited
I make no award of costs.
REASONS FOR DECISION
BACKGROUND

Neil Parkinson and Patrick Joseph Glynn filed patent application 2012292959 on 9 August 2012 as an international application under the Patent Cooperation Treaty (“PCT”). The international application is designated PCT/AU2012/000938. The application is based on a US priority application filed on 9 August 2011 (“the priority date”).
On 18 February 2014, the applicants filed a request to record an assignment. The application is presently proceeding in the name of Climate Change Technologies Pty Ltd (“the applicant”).
Application 2012292959 was advertised accepted on 11 February 2016. Latent Heat Storage Pty Ltd (“the opponent”) filed a notice of opposition on 11 May 2016. A statement…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] APO 28
Decision Date: 1 May 2018

CaseChat Overview and Summary

The case involved a dispute over a patent application for thermal energy storage apparatus between Climate Change Technologies Pty Ltd (the applicant) and 1414 Degrees Limited (the opponent). The opponent had filed an opposition to the grant of a patent for the invention on the basis that the applicant was not entitled to the grant of a patent. The opponent's predecessor company, Gnomon Technologies Pty Ltd, had previously engaged the inventors, Mr Parkinson and Mr Glynn, under a service agreement to develop a thermal energy storage system. The opponent argued that the inventive concept for the claimed invention had arisen while the inventors were engaged with Gnomon and that the service agreement enabled the transfer of intellectual property rights to Gnomon. The court found that the inventive concept did not arise while the inventors were engaged with Gnomon and that the service agreement would have enabled the transfer of intellectual property rights to Gnomon. However, as the inventive concept did not arise during the service agreement, the opponent had not established that the applicant was not entitled to a grant of a patent for the invention. The court found that the inventors could not have reached the inventive concept without their knowledge of the further TESS developments undertaken at Gnomon. The court concluded that the parties were jointly entitled to the claimed invention and ordered that the patent application should proceed jointly in the names of Climate Change Technologies Pty Ltd and 1414 Degrees Limited. The court made no award of costs.

Orders