Boris Rozenblit v VR Tek Pty Ltd - [2013] APO 49

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Boris Rozenblit v VR TEK Pty Ltd [2013] APO 49

Patent Application: 2010251745 & 2010281342

Title:Method, process and device for polymeric waste processing (2010251745)
Feeder and extrusion device and method of use thereof (2010281342)

Patent Applicant: VR TEK Pty Ltd (2010251745)
VR TEK Pty Ltd and APRIL Ltd (2010281342)

Requestor:  Boris Rozenblit
Delegate:  Dr B. Akhurst
Decision Date:  27 August 2013
Hearing Date:  Written submissions filed on 6 and 17 May 2013
Catchwords:  PATENTS – requests under section 32 - inventorship – insufficient evidence of inventorship – no material contribution to the inventions – applications successful

Representation: Patent applicant: Michael Vainer represented the applicant(s)
Requestor:Boris Rozenblit was represented by Lloyds and Barclay Lawyers.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010251745 & 2010281342

Title:Method, process and device for polymeric waste processing (2010251745)
Feeder and extrusion device and method of use thereof (2010281342)

Patent Applicant: VR TEK Pty Ltd (2010251745)
VR TEK Pty Ltd and APRIL Ltd (2010281342)

Date of Decision: 27 August 2013
DECISION
Boris Rozenblit is the sole inventor for patent application 2010251745. Boris Rozenblit, Dmitry Shtak and Sergey Azarenkov are the inventors for patent application 2010281342. Michael Vainer is not an inventor for patent applications 2010251745 and 2010281342.
I direct that applications 2010251745 and 2010281342 are to proceed without Michael Vainer as an inventor.
Costs are awarded according to Schedule 8 against the applicants.
REASONS FOR DECISION
Background

Standard patent application 2010251745 (’745) titled “Method, process and device for polymeric waste processing” was filed by VR TEK Pty Ltd on 3 May 2010 under the provisions of the PCT, claiming a priority date of 20 May 2009 from provisional application 2009902282. The inventors are listed as Michael Vainer and Boris Rozenblit.
Standard patent application 2010281342 (’342) titled “Feeder and extrusion device and method of use thereof” was filed via the PCT on 15 March 2010 by VR TEK Pty Ltd and APRIL Ltd., claiming priority from application 2009903685 filed on 7 August 2009. The inventors are listed as Michael Vainer, Boris Rozenblit, Dmitry Shtak and Sergey Azarenkov.
On 12 September 2012, Boris Rozenblit (‘Rozenblit’) applied under section 32 of the Patents Act 1990, for the removal of Michael Vainer as inventor from the records of patent applications 2010251745 and 2010281342. Mr Rozenblit did not pursue an equivalent section 32 request in respect of lapsed provisional patent application 2011902326, filed by VR Tek Wheels Pty Ltd on 15 June 2011.
It is convenient to mention here standard patent 2006241342 titled “Tyre segmenting device” filed on 23 November 2006, and granted to VR Tek Pty Ltd on 6 September 2007. The inventors of record are Michael Vainer and Boris Rozenblit. In his submissions Rozenblit states that he “did not file an objection to patent 2006241342 because it has since lapsed”. I note however, that although it was ceased for a period under section 143(a), patent 2006241342 was advertised as restored on 27 September 2012 after the Commissioner allowed an extension of time under section…

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.

Continue reading Boris Rozenblit v VR Tek Pty Ltd

Details

AGLC: Boris Rozenblit v VR Tek Pty Ltd [2013] APO 49
Case: [2013] APO 49
Decision Date: 27 August 2013

CaseChat Overview and Summary

Boris Rozenblit applied under section 32 of the Patents Act 1990 for the removal of Michael Vainer as inventor from the records of patent applications 2010251745 and 2010281342. Vainer did not dispute the entitlement of the other inventors of record. The dispute was confined to the question of whether Vainer was entitled to be named as an inventor for the patent applications. Rozenblit argued that Vainer had no involvement whatsoever with the research or development of the inventions, played no role in originating or developing the idea or conception of the inventions, had no qualifications, expertise or knowledge in the relevant technical areas, his involvement with the inventions commenced after they had already been developed, and his involvement with the inventions was limited to their commercial exploitation and not their technical development. Vainer argued that he was a co-inventor, but he did not dispute the entitlement of the other inventors of record. Vainer relied on the fact that he was recorded as a co-inventor in the patent applications and assignment documents, his handwritten notes (invention workings), his technical communications with third parties, his asserted qualifications in Computer Science and Engineering, and his asserted prior technical knowledge in relation to tyre recycling. The Commissioner found that Rozenblit carried the legal burden of proof on the balance of probabilities. Vainer failed to establish that he made a material contribution to the invention disclosed and claimed in patent applications 2010251745 and 2010281342. Rozenblit was the sole inventor for patent application 2010251745. Boris Rozenblit, Dmitry Shtak and Sergey Azarenkov were the only inventors for patent application 2010281342. Michael Vainer was not an inventor. The Commissioner awarded costs according to Schedule 8 against the applicants VR TEK Pty Ltd and APRIL Ltd.

Orders