Andrew Bodlovich and Kevin William (Hogan) Gleeson v Green Camel Pty Limited
[2024] APO 26
•28 June 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Andrew Bodlovich and Kevin William (Hogan) Gleeson v Green Camel Pty Limited
[2024] APO 26
Patent Application: 2017258843
Title:Frameworks and methodologies configured to enable soil-based production of plants
Patent Applicant: Green Camel Pty Limited
Requestors:Andrew Bodlovich and Kevin William (Hogan) Gleeson
Delegate:Felix White
Decision Date: 28 June 2024
Hearing Date: Decision made on the written record
Catchwords: PATENTS – s36 – request for declaration on eligibility – determination of the inventive concept – determination of conception of different elements of the inventive concept – scenario of s36(1)(c)(ii) enlivened – requestors added as eligible persons – acceptance postponed under s49A – period for gaining acceptance extended under Reg 13.4(3) – no award of costs
Representation: Patent attorney for the applicant: Adams Pluck
Patent attorney for the requestors: Allens Patent & Trade Mark Attorneys
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017258843
Title:Frameworks and methodologies configured to enable soil-based production of plants
Patent Applicant: Green Camel Pty Limited
Date of Decision: 28 June 2024
DECISION
I declare under s36(1)(c)(ii) that Andrew Bodlovich, Kevin William (Hogan) Gleeson, and Green Camel Pty Limited are all eligible persons with regard to patent application 2017258843.
I direct under s49A(1)(a) and (2) that acceptance be postponed until three months from the date of this decision, and further direct under Reg 13.4(3) that the period for gaining acceptance be extended until six months from the date of this decision.
I make no award of costs.
REASONS FOR DECISION
Background
Australian patent application 2017258843 (“the Application”) was filed on 7 November 2017, claiming priority from provisional application 2016904542 with a priority date of 7 November 2016. The named inventors were Levi Nupponen and Andrew Cameron, and the named applicant was Green Camel Pty Limited (“the Applicant”).
The Application is entitled “Frameworks and methodologies configured to enable soil-based production of plants”. At paragraph [0001], under the heading “Field of the invention”, the Application specifies it is particularly directed to production of organic-certified food for human consumption.
On 20 December 2019, Andrew Bodlovich and Kevin William (Hogan) Gleeson (“the Requestors”) filed an application (“the s36 request”) for a declaration under s36(1) of the Patents Act 1990 (“the Act”)[1] that they are eligible persons in respect of the Application, and that the named inventors are not eligible persons.
[1] All references to legislation herein relate to this Act or the corresponding Patent Regulations 1991.
The reasons for the s36 request can be summarised as follows:
·The Requestors allege that they had solely developed the technology and underlying inventive concept of the Application, and the named inventors had not made any material contribution to the technology disclosed or claimed therein.
·The Requestors had previously been named inventors on Australian Patent No 2007272317 in the name of Urban Ecological Systems Ltd (UESL) (“the UESL patent”) directed to a recirculating aquaculture system including a bioconverter for processing waste from an aquatic species into nutrients suitable for plant production.
·The Requestors developed a later version of this system (“the Nimbin system”) in which the plants were grown in soil rather than hydroponically – soil-based growth being required for organic certification.
·The Applicant is the successor in title to a joint venture created between UESL and other investors in 2010. The Requestors worked for this joint venture from 2010 to 2013 to assist in the scale-up of the Nimbin system for large scale production. This occurred at a property in Cobbitty, NSW (referred to as “the Cobbitty System”).
·The Requestors allege that the technology disclosed and claimed in the Application functions in an identical way to the Nimbin system They further allege that the named inventors (who began working for the Applicant in 2012) did not make a material contribution to the technology, and were solely informed by the Requestors how to implement the technology.
After an evidentiary period which was somewhat protracted due to, inter alia, disruptions related to the COVID pandemic, requests for extensions of time and requests for confidentiality of documents, the Commissioner sought input from the parties on 13 September 2023 on how the hearing should be conducted for disposition of the s36 request. The Requestors indicated on 4 October 2023 that they preferred the matter to be decided on the material on record and did not wish to appear at a hearing or provide submissions. No response was received from the Applicant.
It therefore comes down to me to determine the outcome of the s36 request based on the evidence on file and the established principles for determining inventorship and entitlement.
Available evidence
The Requestors’ evidence in support consists of a declaration by Mr Gleeson dated 27 September 2020 (Gleeson #1), and was accompanied by 33 exhibits (HG-1 to HG-33). A number of these exhibits have been removed from public inspection under Reg 4.3(2)(b) due to containing confidential information. I have had sight of all exhibits and have used them to verify the contents of the declaration as appropriate.
The Applicant’s evidence in support consists of a declaration by Levi Nupponen dated 4 January 2021 (Nupponen #1), accompanied by two bundles of exhibits, referred to as attachments LEN-1 and LEN-2.
Both parties’ evidence in reply was split into two parts. For the Requestors this consisted of two declarations by Mr Gleeson dated 9 March and 9 April 2021 respectively (Gleeson #2 and #3). This was also accompanied by exhibits, again some of which were removed from public inspection. These exhibits are numbered HG-31[2] to HG-62.
[2] The Requestors noted some potential confusion the overlapping exhibit numbers in the reply evidence and suggested they be referred to as HG-31 (2021) and HG-32 (2021) but I have not needed to rely on them in this decision.
10.The Applicant’s evidence in reply consists of two declarations by Mr Nupponen, dated 9 March and 9 April 2021 (Nupponen #2 and #3). These were accompanied by further exhibits LEN-3 and LEN-4.
Relevant legislation
11.Section 36(1) of the Act relevantly provides:
If:
(a) a patent application has been made and, in the case of a complete application, the patent has not been granted; and
(b) an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
(c) the Commissioner is satisfied on the balance of probabilities, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
(i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed.
Onus
12.As set out in the legislation, I may make a declaration in writing if I am satisfied on the balance of probabilities that there should be a change to the eligible persons. The onus of proof for the purposes of s36 typically initially falls on the requestor. As noted in Woodside Energy Limited v Richard John Moore [2018] APO 82 at [37], the requestor bears the onus to prove their case on entitlement on the balance of probabilities. However the evidentiary burden may shift under some circumstances, especially when knowledge of relevant facts lie particularly with one party or the other; see Dunlop Holdings Limited's Application [1979] RPC 523 at 542 to 544.
Entitlement to a patent
13.The Dictionary at Schedule 1 of the Act defines an eligible person as follows:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
14.Subsection 15(1) of the Act reads as follows:
“Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”
15.That is, a patent may be granted to the inventor of an invention or someone who derives title to the invention from the inventor. Such a person is also an eligible person for the purposes of s36(1).
Inventorship
The Federal Court has stated that the determination of who is an eligible person and entitlement is assessed by considering a three-step approach in University of Western Australia v Gray [2009] FCAFC 116 (paraphrased from [253]):
(i) identify the "inventive concept" of the invention; [3]
(ii) 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(iii) determine how contractual or fiduciary relationships give rise to proprietary rights in the invention.[3] As noted by the delegate in CNC Components Pty Ltd v SCD American Vehicles Pty Ltd [2024] APO 18, s36 requires consideration of entitlement to “an invention disclosed in the specification filed in relation to the application for the patent” as per s36(1)(c), as opposed to post grant procedure under s191A which are limited to a determination regarding “entitlement to a patent”, that is, based on the invention claimed.
17.With respect to the first step, Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 (“Polwood”) provides guidance with regard to determining the inventive concept at [60]:
The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the Patentee's description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.
18.With respect to the second step, the question of when the invention was conceived was considered in University of Western Australia v Gray (No 20) [2008] FCA 498 at [1426], where French J listed the following principles used by US appellate courts, and which were not disturbed on appeal:
1. Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2. Conception is the "formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice". It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
3. An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
4. It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
19.On questions of co-inventorship, the decision in Kafataris v Davis [2016] FCAFC 134 (“Kafataris”) demonstrated the application of the principles in Polwood. To determine whether a party was a co-inventor, the Court considered whether their contribution was qualitative or quantitative. The Court agreed with the primary judge that the contribution in question in Kafataris merely provided another example of the invention – it did not bring about a change to the invention. The Court found that Mr Kafataris was merely a “competent technician” making developments on the “same line of thought which constituted or underlay the original invention” [4] and as such was not entitled to be named as an inventor.
[4] Kafataris at 31
20.On the other hand, in Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2021] FCAFC 224, the Full Federal Court found that merely providing the “commercial stimulus” for subsequent development of an invention was not sufficient to be awarded inventorship.
21.With respect to the third step, I will deal with any contractual and fiduciary relationships as they arise.
The inventive concept
22.It is clear from the above that the inventive concept should principally be discerned from the specification, with particular emphasis on descriptions of drawbacks of the prior art, the objects of the invention, and which features contribute to overcoming one or more of these drawbacks and achieving the objects of the invention.[5] The claims may assist in understanding the inventive concept but need not correspond to it exactly - rather they represent the legal monopoly for which protection has been sought.
[5] Cf Michael John Arieni v Sun-Wizard Holding Pty Ltd [2021] APO 20 at 49
23.Having reviewed the specification, I must say that it was not particularly easy to discern any of the touchpoints of inventive concept listed above.
24.For example, the specification states that “It is an object of the present invention to overcome or ameliorate at least one of the disadvantages of the prior art, or to provide a useful alternative”[6] but does not appear to disclose any such disadvantages.
[6] Specification at [0004]
25.As for the objects of the invention, the specification apparently seeks “to enable the feeding of plant life and successful husbandry of livestock, thereby to reduce overheads and provide high quality produce in an efficient manner.”[7] The specification further states “Embodiments have been particularly developed to assist in the production of organic-certified food for human consumption”.[8] However the specification does not particularly point out which embodiments they may be.
[7] Specification at [0003]
[8] Specification at [0001]
26.It therefore seems more helpful in this specific instance to look to the claims of the Application as an indicator of the likely inventive concept, or at least the elements that the Applicant regards as likely being inventive.
27.I note that the Application has proceeded to examination, and that the Applicant has provided several statements of proposed amendments to the claims before and during this process.[9] I will refer to the most recent statement of proposed amendments (filed on 11 September 2023) noting that they are not significantly different to the first statement of proposed amendments (filed 1 July 2021).
[9] Under the procedure at the Australian Patent Office, proposed amendments during or in anticipation of examination are not entered into the specification until the patent is accepted.
28.The specification as proposed to be amended has 18 claims, of which claims 1 and 10 are independent. Claim 1 is directed to a “system configured for soil-based plant production” and claim 10 is a corresponding process claim. I will concentrate on the features of claim 1, which reads as follows:
A system configured for soil-based plant production, the system including:
- a recirculating aquaculture system in which one or more aquatic species are housed;
- a solids filter configured to enable removal of waste from the recirculating aquaculture system;
- a sequencing batch reactor, configured to operate in a multi-modal manner,the reactor comprising:
(i) a solid settling tank, configured to enable batch separation of a liquid and a solid component from a sludge mixture during specific time periods, said sludge including waste from the recirculating aquaculture system; and
(ii) an aeration device, configured to enable batch aeration of the sludge mixture, and thereby cause organic nutrient compounds to move from the solids component into the liquid component of that mixture, during time periods other than during said batch separation mode,
the aeration device being positionable in the solids settling tank to enable the batch separation and batch aeration modes of operation to occur sequentially therein;
- a bioreactor configured to process the liquid component in combination with one or more organic supplements, to thereby convert the organic nutrient compounds to produce plant-available liquid nutrients;
- a solids composting system and soil manufacturing system configured to create a soil from a mixture including the solids component; and
- a soil based plant production system configured for plant production, wherein a plurality of plants are: (i) grown in soil created by the solids composting system and soil manufacturing system and (ii) fed the liquid nutrients;
wherein the separation of liquid and solids components in the solids settling tank is carried out by any one or all of the processes of flocculation, settling, and sedimentation, such that the solids component still contains some liquid content.
29.I note that this substantially corresponds to the invention set out in the sole figure of the Application.
30.I understand the key points in this figure include:
·Liquid from a recirculating aquaculture system 1 is treated at a bioreactor 4 before being passed to a soil based plant production system 8;
·Solids from the aquaculture system are treated in a settling tank 3; liquids are passed to the bioreactor and solids are sent to a composting system 6 and thence to a soil manufacturing system 7 to manufacture soil for the plant production system;
·Both the bioreactor and the soil manufacturing system have organic supplement inputs 5 and 9 respectively;
·Waste from the plant production system is recycled into the composting system (line H) and the settling tank (line L).
31.I note that elements found in the claim not specifically pointed out in the figure include:
·The “Solid Settling Tank” 3 has been specified as being a “sequencing batch reactor” further comprising an aeration device for batch aeration;
·The separation in the solids settling tank is carried out by flocculation, settling and/or sedimentation, such that the solids component is not completely free of liquid.
32.I note that these latter elements were not present in the claims originally filed but were introduced in the first statement of proposed amendments before examination commenced. The sequencing batch reactor and aeration device are mentioned in paragraph [31] of the specification.
33.It should be borne in mind that not all elements in the claim are necessarily part of the inventive concept. Typically, the products and processes which are claimed build on elements already known in the prior art.
34.Since, in this particular instance, the specification did not identify which elements were part of the prior art and which were the improvements, the patent examination process can prove instructive as patent examiners will typically identify the most relevant prior art in their examination reports.
35.I note that in the first examination report issued on 14 September 2022, all claims were considered both novel and inventive by the examiner. A number of prior art documents were cited in the search report under category “A” which represents a document which is part of the state of the art but not relevant to novelty or inventive step of the claims. The first of these, cited as “D1” and therefore presumably the one the examiner thought most relevant, is the publication of the US patent application corresponding to the UESL patent, in the name of the Requestors.
36.Therefore the examiner apparently considered that the system disclosed in the UESL patent had some similarities to the present invention, but that the present claims contained some additional features that conferred an inventive step.
37.The UESL patent, as schematically indicated in Figure 7, relates to an aquaponics system which utilises treated waste from an aquaculture system to provide liquid nutrients for plant cultivation. Notably this includes a solid filter 12 for separating aquaculture waste into solid and liquid components, a nitrification unit 16 for treating liquid waste, and a waste digestion unit 14 for treating solid waste, which can be a worm farm.[10] Liquid from the worm farm f is fed into the aquaponics system along with liquid from the nitrification unit d.
[10] [101] of D1 (US2014/0047767), corresponding to the UESL patent.
38.Having reviewed the disclosure of the UESL patent compared to the claims of the present application, it is apparent to me that there are a number of differences. These were presumably the basis for the examiner’s finding that the claims were novel and inventive with respect to the UESL patent.
·The claimed invention is a soil-based system whereas the UESL patent is an aquaponics system;[11]
·The claimed invention uses a sequencing batch reactor comprising an aeration device for batch aeration, and the settling is carried out by flocculation, settling and/or sedimentation, whereas the waste digestion unit in the UESL patent is only described as being a worm farm;
·The claimed invention feeds solid waste from the sequencing batch reactor, together with an external soil/compost supply, into a solids composting system and soil manufacturing system whereas the UESL patent does not disclose the fate of solid waste from the digestion unit.[12]
[11] The UESL patent mentions in passing that the plant growth medium could contain solid media such as soil or a soil substitute (Paragraph [0115] of D1) but points out the disadvantages of solid growth media in the system. It appears to me that the drafters of D1 did not seriously contemplate the use of soil.
[12] Paragraph [0061] of D1 discloses that worm castings from the digestion unit can be reintroduced as a liquid plant food but the document is otherwise silent as to solid waste from the digestion unit.
39.On the face of it, the inventive concept, as least insofar as claimed and as found by the examiner to be inventive vis-à-vis the UESL patent, appears to be the combination of these three elements, which appear to work together to result in a soil-based plant production system.
Who conceived the inventive elements?
40.Given that I have identified three separate, albeit interrelated, elements corresponding to the inventive concept, I can now attempt to determine, from the available evidence, who conceived each element. I will address them in turn.
Soil-based system
41.Mr Gleeson’s evidence is that in 2005 he began to investigate whether he could develop a system based on the UESL patent but which could be certified organic in Australia.[13] It appears to be Mr Gleeson’s understanding that hydroponic systems could not be certified as organic,[14] and therefore this necessitated a change to a soil-based system.
[13] Gleeson #1 at 6 and 32-33
[14] Gleeson #1 at 32, also Gleeson #2 at 42
42.In 2006, according to Mr Gleeson, the Requestors created a version of the technology that was soil-based but did not involve fish.[15] In 2007 the Requestors assertedly considered it “highly advantageous to flexibly integrate” the aquaponic system and the soil-based system.[16] This is corroborated by a contemporaneous consultant’s report (confidential exhibit HG-8).
[15] Gleeson #1 at 35
[16] Gleeson #1 at 42
43.Mr Nupponen’s evidence is that his first encounter with Mr Gleeson was at a Protected Cropping Australia conference in 2011 where he describes Mr Gleeson as giving a presentation on an organic food production process.[17] Subsequently, after commencing employment with the joint venture, Mr Nupponen said he received approximately 1500 documents describing the existing system from Mr Gleeson.[18] One of these, a “technical overview”, clearly describes a soil based plant cultivation system.[19]
[17] Nupponen #1 at 17-18
[18] Nupponen #1 at 24
[19] LEN-1 at pages 18-30
44.On balance, it is clear that Mr Gleeson had conceived of the idea of applying the UESL patent to a soil-based system, in order to obtain organic certification, prior to commencing commercial relationships with the Applicant. Mr Nupponen does not appear to claim credit for the idea of an organic or soil-based system. Although I do not have any direct evidence from Mr Bodlovich as to his contribution to the conception, Mr Gleeson’s evidence is that Mr Bodlovich collaborated with him in the prototyping of the soil-based system.[20]
[20] Gleeson #1 at 32
45.Taking into account the criterion in Polwood that “the inventor need not have known the invention would work to conception to be complete” I am satisfied that the Requestors were responsible for conceiving the inventive element of the soil-based system, and that their work in prototyping the system constituted more than the mere “commercial stimulus” referred to in Vehicle Monitoring Systems v SARB.
Sequencing Batch Reactor
46.Mr Gleeson’s evidence is to the effect that the bioconverter (or vermimodule) of the Nimbin System[21] performs the same function as the sequencing batch reactor. I note that the paragraphs of Mr Gleeson’s first declaration addressing this feature in the Application do not explicitly mention a sequencing batch reactor or an aeration device – rather they simply address the broader concept of a “solid settling tank”.[22] Mr Gleeson addresses the sequencing batch reactor at paragraphs 109-122 of his second declaration, in which he appears to acknowledge that the sequencing batch reactor has “somewhat different parts and processes” from a vermimodule[23] but asserts that it fulfils the same essential functions, has the same input and outputs, and was simply “slotted into the framework of the overall system” by Mr Nupponen and Mr Cameron.[24]
[21] Referred to in the UESL patent as the waste digestion unit or worm farm.
[22] Gleeson #1 at 124 and 136
[23] Gleeson #2 at 119
[24] Gleeson #2 at 122
47.Mr Nupponen’s evidence is that the Green Camel system, developed by himself and Mr Cameron between 2014 and 2016, is characterised by the sequencing batch reactor technology.[25] Mr Nupponen’s testimony is that efforts to scale up the UESL system had numerous difficulties, inter alia with the worm units, which he states could not handle the increased flow from the larger aquaculture modules, with odoriferous consequences.[26] Ultimately, Mr Nupponen recalls a 2014 conversation with Adam Steel (a director of the Applicant) to the effect that the UESL system should be decommissioned and that he should start work on an alternative system.[27]
[25] Highlighted at Nupponen #2 at 11
[26] Nupponen #1 at 118 “I remember dry-retching”
[27] Nupponen #1 at 222
48.Having come to the conclusion that worm units were not feasible for a commercial scale facility,[28] Mr Nupponen then details that Mr Cameron and himself undertook a research project to find an alternative system. This involved looking into water treatment systems ranging from wineries to sewage treatment plants.[29] The named inventors settled on the sequencing batch reactor technology after apparently discarding a number of other approaches as being unsuitable for organic certification, and conducting scale up experiments with sequencing batch reactors.[30]
[28] Nupponen #1 at 250
[29] Nupponen #1 at 251
[30] Nupponen #1 at 252-3
49.It is notable that Mr Gleeson does not claim to have come up with the concept of using a sequencing batch reactor but puts forward the opinion that this element is simply an equivalent of the vermimodule in the UESL technology.
50.On the balance of the evidence, I am satisfied that although sequencing batch reactors were not a new technology, the use of a sequencing batch reactor was critical for solving the problem of scaling up a recirculating aquaculture system for soil-based production. Furthermore, it does not appear from Mr Nupponen’s evidence that he ever considered success in this project to be assured, particularly after the significant difficulties he had encountered with the Nimbin system.
51.I therefore consider the research undertaken by the named inventors in order to settle upon the sequencing batch reactor to be, in the language of Kafataris, a qualitative contribution and not simply the input of a competent technician. It follows that the named inventors are the inventors of this element.
Feeding solid waste into a composting system
52.Having already found that both the Requestors and the named inventors have contributed to the first and second elements of the inventive concept respectively, the question of who conceived the remaining element is somewhat moot. Nevertheless, for the following reasons it seems to me that the element of feeding solid waste into the composting system is a synthesis of the first two elements and hence it comes from both the parties.
53.Mr Gleeson asserts that worm castings from the vermimodule were used to produce compost in the Nimbin system.[31] However Mr Nupponen’s understanding seems to be that the output of the vermimodule is a liquid leachate containing a suspended solids component, which is different from the invention presently claimed.[32] I am minded to think that Mr Nupponen’s reading is more consistent with the context of the Requestors’ supporting exhibit HG-11 which on the whole is directed to an aquaponics system rather than a soil-based system.
[31] Gleeson #1 at 60 and 140 with reference to p. 17 of confidential exhibit HG-11.
[32] Nupponen #2 at 46
54.On balance it seems to me that the feature of feeding solid waste into a soil-based compost comes from applying the solid settling function of a sequencing batch reactor (contributed by the named inventors) to a soil based system (contributed by the Requestors). Therefore I conclude that all parties contributed to the conception of this element.
Commercial and Fiduciary considerations
55.I have found that the Requestors (Mr Gleeson and Mr Bodlovich) and the named inventors (Mr Nupponen and Mr Cameron) all contributed to the inventive concept of the Application. The named inventors’ rights devolve to the Applicant as per the notice of entitlement filed on 1 July 2021. The Requestors’ contribution occurred prior to their commencing a commercial relationship with the Applicant, and in any event their consultancy agreements with the Applicant explicitly allow them to retain ownership of their existing intellectual property.[33] Therefore, there are no apparent commercial or fiduciary constraints applicable to the Requestors.
[33] See exhibits HG-1 and HG-2 at 6.2
56.It follows that the scenario contemplated in s36(1)(c)(ii) applies – both the s36 applicants and the current nominated person are eligible persons.
Conclusion
57.I therefore declare that Andrew Bodlovich, Kevin William (Hogan) Gleeson, and Green Camel Pty Ltd are all eligible persons for Australian Patent Application 2017258843. I direct that the application proceed in the name of all three parties.
58.I note that the application is currently under examination. Pursuant to Reg 13.4(1)(f), the period to gain acceptance will expire no earlier than three months from the date of this decision, but I have the power under Reg 13.4(3) to substitute a longer period if appropriate.
59.To ensure that the two newly added eligible persons have sufficient time to prosecute this application to their satisfaction, I direct under Reg 13.4(3) that the period to gain acceptance will be six months from the date of this decision. I further direct under s49A(1)(a) and (2) that acceptance shall be postponed until not earlier than three months from the date of this decision.
Costs
60.Costs typically follow the event. In this case, the Requestors were only partially successful insofar as I have found them to be eligible persons but the Applicant of record also remains an eligible person. It is therefore appropriate for the parties to each bear their own costs.
Felix White
Delegate of the Commissioner of Patents
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