CNC Components Pty Ltd v SCD American Vehicles Pty Ltd - [2024] APO 18

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CNC Components Pty Ltd v SCD American Vehicles Pty Ltd [2024] APO 18
Patent Application: 2021203073; 2021102546

Title:Steering Transfer Assembly

Patent Applicant: SCD American Vehicles Pty Ltd

Requestor:CNC Components Pty Ltd

Delegate:Cathy Douglas

Decision Date: 15 May 2024

Hearing Date: 15 March 2024, by Video Conference

Catchwords: PATENTS – entitlement – inventive concept determined from specification – patentability under s18 of Patents Act not part of entitlement calculus – who was responsible for inventive concept – contribution not material - reduction to practice – further submissions sought on award of costs

Representation: Patent attorney for the Applicant: Philipp Orth
Counsel for the Requestor: A. R. Lang SC
Patent attorney for the Requestor: Michael Buck IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2021203073; 2021102546

Title:      Steering Transfer Assembly
Patent Applicant:   SCD American Vehicles Pty Ltd
Date of Decision:                15 May 2024
DECISION

The Requestor is successful. I declare that the Requestor, CNC Components Pty Ltd, is the sole eligible person under sections 36 and 191A of the PatentsAct 1990 for patent application 2021203073 and innovation patent 2021102546 respectively, and the Applicant of record is not an eligible person. In respect of innovation patent 2021102546, in accordance with s191A(3), the Commissioner will rectify the Register.
I allow the parties two weeks to provide submissions on the appropriate award of costs and defer the award of costs accordingly.
REASONS FOR DECISION

Background

This matter relates to a standard patent application and an innovation patent having identical specifications as they presently stand – that is, identical description, claims and drawings. Patent application 2021203073 (the application) and innovation patent 2021102546 (the innovation) were both filed on 13 May 2021, both in the name of SCD American Vehicles Pty Ltd (the Applicant), and both listing the inventor as Eddie Kocwa. The innovation patent was granted on 16 June 2021. I will refer to the description of the application and the innovation as “the description”. I will collectively refer to the application and the innovation as “the specifications”.

On 19 April 2023, the Commissioner received requests from CNC Components Pty Ltd (the Requestor) for a declaration under section 36(1) of the Patents Act 1990 (the Act) in respect of the application, and a request for the Commissioner to rectify an error in the Register under section 191A(2) in respect of the innovation patent, both in favour of the Requestor. Whilst the latter states that the grounds for the request are based on section 191A(1), it is quite clear that the matter in respect of the innovation is better characterised as a request under s191A(2), and the Commissioner has proceeded on this basis. In line with the requests, they submitted that Thomas Young, Director, together with Michael Irvine, Head of Research and Development, both of the Requestor company, designed and refined an improved steering transfer system between 2014 and 2021.[1] The Requestor stated that they were not informed…

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: [2024] APO 18
Decision Date: 15 May 2024

CaseChat Overview and Summary

This case concerns a dispute over patent entitlement for a steering transfer assembly. CNC Components Pty Ltd (CNC) claimed entitlement to two patents filed by SCD American Vehicles Pty Ltd (SCD), asserting that they were the true inventors. SCD contested CNC's claims, arguing that the named inventor, Eddie Kocwa, was indeed the inventor. The court needed to determine the inventive concept of the patents, identify the actual inventors, and assess whether any contractual or fiduciary relationships existed that could transfer the invention's rights to SCD.

The court first identified the inventive concept from the patent specifications, which described a steering transfer assembly involving two gearboxes connected by a two-part slidable shaft, adjustable to accommodate different distances between the gearboxes. This description aligned with drawings provided by CNC, which showed similar features. The court found that the inventive concept was best characterised by CNC, and not by SCD's narrower interpretation focusing on specific connection types.

Next, the court determined inventorship. CNC provided evidence from Thomas Young and Michael Irvine, who stated they were responsible for the design and development of the steering transfer assembly between 2014 and 2021. SCD did not dispute these claims, and there was no evidence that Eddie Kocwa was involved in the invention process. The court concluded that Young and Irvine were the true inventors, and as their employer, CNC was entitled to the invention.

Finally, the court examined whether any contractual or fiduciary relationships existed that could transfer the invention's rights to SCD. The court found no such relationships, as the drawings were marked as confidential and CNC had not authorised SCD to use them. The court held that CNC, as the employer of the inventors, was entitled to the invention.

The court declared that CNC Components Pty Ltd was the sole eligible person for both the standard patent and the innovation patent, and that SCD American Vehicles Pty Ltd was not entitled to either. The court also allowed the parties two weeks to provide submissions on the appropriate award of costs before making a formal award.

Orders