Craige Jonathan Henrick v Granite Works Pty Ltd - [2008] APO 21

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2006100175 in the name of GRANITE WORKS PTY LTD

Title: A block for use in the construction of a wall

Action: Section 32 and 36 requests by CRAIGE JONATHAN HENRICK

Decision: Issued 12 September 2008.
Abstract

The evidence posed considerable difficulties of proof for both parties to the dispute as it was principally based on professions of recall unsupported by any corroborating contemporaneous documentation. Further, the nature of the evidence was itself problematic in that it largely related to the practical implementation of the invention as opposed to its conception. Nevertheless, it was found on balance that the conclusion most consistent with the evidence was that:

The invention which is the subject of the dispute was conceived by the requestor alone who as a consequence derived sole entitlement under section 15(1)(a);

The conception was complete at the time the requestor communicated the invention to the named inventor;

The named inventor merely contributed to the subsequent development of the invention and therefore could not be regarded as a co-inventor; and

There was no collaborative relationship between the requestor and the named inventor by which the requestor’s original rights in the invention transferred to the applicant under section 15(1)(b).

The original hearing was adjourned due to the very late filing of evidence by the applicant, and reconvened almost a year later. Costs were awarded against the applicant in respect of both hearings.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Innovation Patent Application No. 2006100175 in the name of Granite Works Pty Ltd, and requests under sections 32 and 36 by Craige Jonathan Henrick

BACKGROUND

Innovation patent application 2006100175 (the innovation application) was filed on 7 March 2006 by Granite Works Pty Ltd (Granite Works) claiming priority from provisional application 2005901079 (the provisional application) filed on 7 March 2005. The innovation application names Richard Eaton Taplin (Taplin) as the sole inventor.
On 10 March 2006, requests under sections 32 and 36 were filed by Craige Jonathan Henrick (Henrick) claiming that he rather than Taplin is the inventor and that the innovation application should, as a consequence, proceed to grant in his name alone. After an exchange of evidence, a hearing to determine the matter took place in Melbourne on 1 March 2007. However, the hearing was adjourned indefinitely on the agreement of the parties due to the very late filing of further evidence by Granite Works.
After a further exchange of evidence, the hearing was re-convened in Melbourne on 18 February 2008. Granite Works was represented by Mr Keith Leslie and Mr Ross Clark of Davies Collison Cave, and Taplin was represented by Mr Ed Heerey of counsel assisted by Mr Wayne McMaster and Ms Carolyn Rolls of Mallesons Stephen Jaques. Taplin was summoned to appear as a witness at the re-convened hearing. Mr Simon Leslie and Mr Ross Leslie, co-directors of Granite Works, were also in attendance.
THE SPECIFICATION
The specification filed in respect of the innovation application indicates that the invention relates to a block for use in the construction of a wall and, in particular, a retaining wall.
The specification explains that retaining walls have previously been constructed by building a block wall, or an off-form concrete wall, and then fixing a stone facing to the wall. The step of fixing the facing to the wall is typically undertaken by a stonemason. The time and cost of constructing retaining walls in this manner is prohibitive and customers generally look for cheaper alternatives.
The invention seeks to address this drawback by providing a block for use in the construction of a wall which includes a body portion and a facing panel secured to a side of the body portion. Preferably, the body portion is a concrete block while the facing panel comprises any suitable facing such as sandstone, bluestone, granite or marble and is secured to the concrete block by an epoxy, adhesive or mortar. The preferred adhesive is made by Mapei Australia Pty Ltd. The concrete blocks are installed using a stainless steel pinning system.
The invention thus provides a composite product in which the facing panel is affixed to the body portion before construction of the wall, thereby reducing the time to construct the wall and avoiding the cost of a stonemason.
The specification ends with seven claims which are in the following terms:
“1. A block for use in the construction of a wall but not forming part of a wall, including a body portion and a facing panel, wherein the facing panel is secured to a side of said body portion.
2. The block claimed in claim 1, wherein the body portion is a concrete block.
3. The block claimed in claim 1 or claim 2, wherein the facing panel is a stone panel.
4. A process for constructing a wall from blocks including a body portion and a facing panel secured to one side thereof, including the step of laying a plurality of said blocks.
5. The process claimed in claim 4, wherein the blocks are arranged so that the respective facing panels face a common direction.
6. A wall formed in accordance with the process claimed in claim 4 or claim 5.
7. A process for manufacturing blocks including a body portion and a facing panel secured to one side thereof, including the step of securing the facing panel to said side of the body portion of the block.”
THE HENRICK APPLICATION
It is convenient to mention here that standard patent application 2006200975 (the Henrick application) was filed on 7 March 2006 by Henrick alone which claims priority from the provisional application. The Henrick application designates Henrick as the sole inventor.
While the Henrick application and the innovation application are essentially concerned with the same subject matter, the Henrick application is not covered by the current section 32 and 36 requests. Nevertheless, it is conceivable that my findings in relation to the innovation application will be relevant to any related proceedings that may be instigated under section 32 or section 36 in respect of the Henrick application.
THE EVIDENCE
Evidence in Support
The evidence in support filed by Henrick consists of a statutory declaration made by him on 25 May 2006, together with exhibits CJH-1 to CJH-13 (the first Henrick declaration).
In order to preserve the confidentiality of the documents comprising exhibits CJH-7 and CJH-9 (which relate to the provisional application), these documents were subsequently produced in response to a notice served on Henrick at his own request. Henrick also requested that the documents not become open to public inspection in view of their confidential nature. The Commissioner invoked regulation 4.3(2)(b) on this basis.
The evidence in support filed by Granite Works consists of:
- A statutory declaration made by Taplin on 26 July 2006 (the first Taplin declaration);
- A statutory declaration made by Taplin on 28 July 2006, together with exhibits RT01 to RT03 (the second Taplin declaration);
- A statutory declaration made by Simon Ellis Leslie (Leslie) on 31 July 2006, together with exhibits GW01 and GW02 (the first Leslie declaration); and
- A second statutory declaration made by Leslie on 31 July 2006; together with exhibits SL01 to SL10 (the second Leslie declaration).
Evidence in Response
The evidence in response filed by Henrick consists of a second statutory declaration made by him in September 2006 (day unknown), together with exhibits CJH-14 to CJH-20 (the second Henrick declaration).
The evidence in response filed by Granite Works consists of a statutory declaration made by Taplin on 8 November 2006, together with exhibits RT D3 1 to RT D3 18 (the third Taplin declaration).
Further Evidence
The further evidence filed by Henrick consists of:
- A statutory declaration made by Michael John O’Shea (O’Shea) on 7 February 2007, together with exhibits MOS-1 to MOS-5 (the O’Shea declaration);
- A statutory declaration made by Stephen Bates (Bates) on 12 February 2007, together with exhibit SB-1 (the Bates declaration):
- A statutory declaration made by Henrick on 5 December 2007, together with exhibits CJH-21 and CJH-22 (the third Henrick declaration);
- A second statutory declaration made by Henrick on 5 December 2007, together with exhibit CJH-23 (the fourth Henrick declaration);
- A statutory declaration made by Joseph Leahy (Leahy) on 8 January 2008, together with exhibits JL-1 to JL-4 (the Leahy declaration); and
- A statutory declaration made by Simon Michael Barac (Barac) on 30 January 2008 (the Barac declaration).
The third Henrick declaration and the Barac declaration variously refer to notices to produce dated 30 June 2007 which were served on Taplin, Granite Works and Leslie.
The further evidence filed by Granite Works consists of:
- A statutory declaration made by Taplin in February 2007 (day unknown), together with exhibits RT 04 01 to RT 04 03 (the fourth Taplin declaration);
- A statutory declaration made by Andrew Raymond Marsh (Marsh) on 28 February 2007, together with exhibits AM 01 and AM 02 (the Marsh declaration); and
- A statutory declaration made by Timothy George Andrew Creecy (Creecy) on 14 May 2007 (the Creecy declaration).
In addition to the above material, on 12 September 2006 a notice was issued for the production of Henrick’s 2004 and 2005 diaries. On receiving an objection to the production of the diaries in their entirety, the Commissioner advised the parties that she would be satisfied that the notice had been complied with if Henrick were to produce certified copies of the diaries which had been redacted to exclude any commercially sensitive and confidential information that is not relevant to the present proceedings. Certified copies of the redacted versions of the diaries were produced on 10 October 2006.
RELEVANT LAW
Statutory framework
Section 32 provides that, if a dispute arises between any two or more interested parties, the Commissioner may make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the interested parties or for regulating the manner in which it is to proceed, as the case requires. Under schedule 1 of the Patents Act, interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person.
Henrick has claimed that he is entitled to the grant of a patent to the exclusion of Granite Works, and thus clearly meets the description of an “interested party” for the purposes of section 32.
Section 36(1) provides for a person to apply to the Commissioner for a declaration that the nominated person is not an eligible person but that some other person is an eligible person. Nominated person is defined by schedule 1 to mean the person identified in a patent request as the person to whom the patent is to be granted, and eligible person is defined as a person to whom a patent may be granted under section 15.
Section 15(1) provides that 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 personal representative of a deceased person mentioned in paragraph (a), (b), or (c).
Thus section 15 contemplates the grant of a patent only to a person who falls into one of the four specified categories. It makes a distinction, so far as is relevant, between the inventor in paragraph (a) and a person who derives title to the invention from the inventor under paragraph (b). Further, the Act recognises that each of the categories of person within section 15(1) may be made up of a body of persons and that, for example, a body of persons who, together, are “the inventor”, is “a person” entitled to the grant of a patent (University of British Columbia v ConorMedsystems, Inc [2006] FCAFC 154 at [75]).
The authorities
The law on inventorship was recently discussed by the Federal Court in University of WesternAustralia v Gray [2008] FCA 498 (UWA) and Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9. The Federal Court considered a number of authorities in this country, Canada, the United States and the United Kingdom which were observed to draw a distinction between the conception of an invention and its verification or implementation (called “reduction to practice” under US patent law).
As noted in University of Southampton’s Application [2005] RPC 11 (at [46]) (and cited with approval in Synthon BV v SmithKline Beecham [2005] 235 All ER (D) at [28] and IDA Ltd v The University of Southampton [2006] EWCA Civ 15), devising an invention and disclosing a means of enablement may both be necessary to secure valid patent protection, but they relate to different aspects of patent law. This was elaborated in IDA at [39]:
“In the context of entitlement to a patent a mere, non-enabling idea, is probably not enough to give the patent for it to solely the devisor. Those who contribute enough information by way of necessary enablement to make the idea patentable would count as “actual devisors”, having turned what was “airy-fairy” into that which is practical … On the other hand those who contribute no more than essentially unnecessary detail cannot on any view count as “actual devisors””. (original emphasis)
In UWA French J said at [1433] that “[w]hile UK authorities applying the 1977 UK Act have to be read in the light of the particular definition [of the term “devisor”] the general jurisprudence is still relevant for Australia.”
This approach is similar in concept to that adopted in the United States.
In Gunter v Stream 573 F.2d 77 (1978) the “conception” of the invention was described as the complete performance of the mental part of the inventive act. That is to say the invention is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. What remains belongs to the department of construction, not invention. A concept can be complete although experimentation may continue. It is complete when a person of ordinary skill in the art could construct the invention without unduly extensive research or experimentation. In Polwood (at [46]) the Full Court referred to Mueller Brass Co v Reading Industries Inc 17 USPQ 361 for the proposition that inventorship is a role in the final conception of that which is sought to be patented:
“It is clear that, in working out the inventive concept in a patent, each patent will be different and it will be necessary to ascertain the inventive concept from the whole of the specification. Contribution after the invention was fully conceived where that contribution was under the direction of the inventor does not give rise to entitlement to the invention. A person must be able to say that without his or her contribution to the final conception it would have been less.”
The Full Court described this philosophy as “apt”.
The reference in Mueller to “the final conception” does not mean that a co-inventor need necessarily devise the final form of the invention. As noted in Monsanto Co v Kemp 154 USPQ 259, a co-inventor’s role could occur at any stage in the development of the invention:
”Each needs to perform but a part of the task if an invention emerges from all of the steps taken together. It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work together. One may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that each inventor plays a different role and that the contribution of one may not be as great as that of another does not detract from the fact that the invention is joint, if each makes some contribution, though partial, to the final solution of the problem.”
I understand this to mean that where one person makes an initial step leading toward the invention and their work is taken up and finalised by another, both may be considered to have jointly contributed to the invention. This of course does not generally apply to someone who merely points out the state of the art or explains well known principles.
There has been some consideration of the principles of joint inventorship in Australia. In Costa vG R and I E Daking Pty Ltd 29 IPR 241 and Row Weeder Pty Ltd v Nielsen 39 IPR 400 joint inventorship was found where one person had a general idea of what was required in a machine but did not necessarily know how to put those ideas into effect and the other person did so. In Costa the delegate said that, in his view, the question was whether the invention would have occurred without the second person’s involvement (at 246). In Row Weeder joint inventorship was said to arise where one person has a general idea for solving a problem but is unable to give effect to the idea while another person is able to do so. The delegate concluded in Row Weeder (at 405) that a person has entitlement to an invention if that person’s contribution, either solely or jointly with others, had a material effect on the final concept of the invention.
The same point was made in Mueller at 372:
“... 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 something of benefit.”
This was reinforced in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32:
“… it seems to be the case that a second person, engaged because of that person’s expertise to construct a device or prototype based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device, is not normally regarded as an inventor of the device, and this holds true even if the second person suggests ways to aid its design or operation. However if the second person’s suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device.” (original emphasis)
Although not referring to the distinction drawn in other jurisdictions between inventorship based on conception and verification or implementation, the delegate in Falkenhagen did differentiate between the involvement of a person in the final concept of the invention as opposed to a mere “preferred workable embodiment” of it.
In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd 67 IPR 68 it was said (at [132]) that rights in an invention are determined by objectively assessing contributions to the invention rather than assessing the inventiveness of respective contributions. The invention is to be looked at as a whole, as well as the component parts. The relationship between the participants, such as a collaboration (citing CSIRO v Gilbert& Hazlewood 31 IPR 67 at 72-73) is also a relevant factor.
THE PRESENT DISPUTE
Basis of the dispute
The essence of Henrick’s claim to entitlement is that he first conceived the invention described in the innovation application and the provisional application (the invention) in March 2004, and subsequently disclosed the invention to Taplin during a telephone conversation in early July 2004. For their part, Granite Works contend that Taplin first conceived the invention in March 2004, and disclosed the invention by telephone to Henrick at that time. It is therefore apparent that Henrick and Taplin are at the centre of the present dispute.

No distinction arises between the invention the subject of the dispute and the inventive concept within the innovation application.
Issues for determination
Henrick claim soles entitlement under section 15(1)(a). Granite Works relies on Taplin’s alleged original entitlement as sole inventor as the source of their rights in the invention under section 15(1)(b) and section 15(1)(c).
During the course of the hearing, Mr Clark put the alternative proposition that Granite Works is jointly entitled by virtue of a collaborative relationship between Taplin and Henrick. There is no contention of joint entitlement by Henrick. Nevertheless, it is evident from Stack v Davies Shepard [2001] FCA 501 that even if, contrary to Henrick’s primary submission, I was not inclined to a finding of sole entitlement in his favour, the question of whether he is jointly entitled within section 15(1) would then fall for consideration. This is because a patent for a joint invention could not be granted to Granite Works alone (Stack at [21]).
It is therefore apparent that, if I am to make any determination in this matter, the primary issue to be resolved is whether Henrick or Taplin, or the two of them together, conceived the invention. The alternative proposition put by Mr Clark raises the secondary consideration of whether Granite Works derives any entitlement from the person(s) found to be responsible for the invention. It is clear from the authorities that resolution of the primary issue turns on an assessment of whether Henrick or Taplin made any contribution to the conception of the invention which had a material impact or led to a result or advantage not contemplated, in contrast to a better way of physically implementing the invention. The question may otherwise be stated as would the invention have come about without Henrick’s or Taplin’s involvement.
Relevant principles
As is often the case where a dispute between parties becomes acrimonious, the weight of evidence does not lie clearly on one side or the other. In these circumstances it is normally expected that testing the declaratory evidence under cross-examination would prove to be of assistance. However, as it turns out the cross-examination of Taplin unfortunately did little to address the many questions left unanswered by the declaratory evidence much of which is unsupported by any corroborating contemporaneous documentation. Further, the nature of the evidence is itself problematic in that it largely relates to the practical implementation of the invention, as opposed to its conception.
Nevertheless, ultimately I must decide whether any entitlement lies with Henrick and in this he carries the burden of proof. However, as cautioned by the delegate in Stack v Davies Shepard PtyLtd 34 IPR 117 at 126:
“… where there is proper cause to query the entitlement of the patentee it is incumbent upon them to provide substantiation of their asserted entitlement to the grant of a patent. Inability to substantiate entitlement must prima facie leave it open to find that the patentee was not entitled to be granted the patent.”
In deciding the matter I am entitled to act on any material which is “logically probative” and, in reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (Dunlop Holding Ltd’s Application ([1979] RPC 523 at 543-4).
THE COMPETING CLAIMS
To help understand the competing claims to inventorship, I will now broadly outline each party’s version of events as to how the invention arose.
Henrick’s version
Henrick is the quarry manager of Capital Quarries Pty Ltd (Capital Quarries) which sells quarried stone to Granite Works among others. The stone to be extracted lay beneath unusable rock and clay. As a consequence, it was decided to crush this “overburden” to produce more marketable products such as aggregate and sand. The aggregate was intended to be used as white decorative chip and the sand was to be sold or rehabilitated. Capital Quarries commenced crushing on 24 March 2004[1]. However, it was realised within a matter of days that crushing produced an unacceptably low proportion of aggregate which prompted Henrick to “think of other ways to use and market the sand as it constituted half of the product from crushing”.
[1] See exhibit CJH-1
As asserted by Henrick[2]:
“It was then that I arrived at the Invention based on the idea of (i) cutting stone facia from the bedded dimension stone, (ii) producing a composite masonry block from the sand produced by the crusher and (iii) applying the stone facia to the composite masonry block. I particularly had in mind the type of composite masonry block known as “Besser ^TM” blocks made by … Cowra Concrete at its manufacturing site in Cowra which is readily accessible from Boorowa.”
[2] See the first Henrick declaration at [7]
I observe that Capital Quarries has two sites, one of which is located at Boorowa in New South Wales. Henrick explained the invention at a meeting of the Capital Quarries Board of Directors held on 29 March 2004. Exhibit CJH-3 is a copy of the minutes of the meeting which relevantly record:
“Craig [sic] proposed to the meeting a way of selling our sand products. This involved the manufacture of a block and the fixing of a stone product to it.
It was agreed that we should concentrate on our core quarrying business and not go into new ventures.
... sales were still too slow.
More active marketing needed to be undertaken.
Craig [sic] agreed to follow up with Granite Works.”
The minutes were caused to be created and thereafter signed by Bates, the Chairman of Capital Quarries. As confirmed by Bates[3]:
“I remember that during the meeting Craige Henrick proposed to the meeting an invention of his that would provide a new way of selling Capital Quarries sand. The invention included attaching stone facia to concrete blocks manufactured using the Capital Quarries sand.”
[3] See the Bates declaration at [6]
Although effectively rebuffed by the Capital Quarries Board of Directors, Henrick was free to separately pursue the invention. After some initial enquiries, Henrick continued to look into the cost of cutting stone facia to attach to a Besser^TM type composite masonry block[4]. He also requested Cowra Concrete Products Pty Ltd (Cowra Concrete) to trial the manufacture of this type of block using Capital Quarries sand. His diary entry for 31 March 2004 records “Cowra Besser Set up meeting re sand + block”. Henrick subsequently investigated the cost of transporting sand from Capital Quarries to Cowra Concrete after it had been found to be suitable for manufacturing Besser^TM type blocks at an acceptable cost[5].
[4] See exhibit CJH-4 and the O’Shea declaration at [6]-[8]
[5] See eg Henrick’s diary entry for 6 April 2004
During the first week of July 2004, Henrick attended Taplin’s office where he requested and was given some samples of sandstone facia imported by Granite Works from China. Exhibit CJH-5 is a copy of a photograph of one of the samples dated 25 July 2004 which Henrick says he took within three weeks of attending Taplin’s office. Henrick recalls thinking that[6]:
“the invention was not limited as to what stone facia I could use as long as it was cost effective. Not only could I produce a composite masonry block using Capital Quarries sand and stone facia but I could also use imported facia of the type [Taplin] provided to me.”
[6] See the first Henrick declaration at [14]
Henrick consequently telephoned Taplin later that day “regarding the Invention and asked if he knew of potential markets.” The call was made by Henrick while travelling to the Capital Quarries site at Boorowa. Henrick asserts that Taplin “did not refer to having already had the idea, in fact the impression he gave me was that this was the first time he had heard of the Invention”[7].
[7] See the second Henrick declaration at [9]
Taplin’s version
Taplin’s initial version of events is that he made a telephone call to Henrick on or around April 2004 to discuss how the cost associated with stone wall construction could be reduced. He subsequently amended his evidence by placing the discussion sometime between 9 March and 30 March 2004[8]. According to Taplin[9]:
“Henrick stated that he needed to find ways to increase the sales for Capital Quarries. I thought there was a necessity to develop a walling system that looked like solid stone but was really a veneer and that the system had to be cost effective. The price had to range somewhere between the solid stone price and the concrete block/rendered wall price. Henrick was grasping for options to increase the sales at the quarry but he really did not have any expertise in the sales side of the market. We discussed possible solutions to our individual problems.
During the telephone conversation, I suggested to Henrick that one solution to my problem was to construct a wall using concrete blocks, where each block had a stone facing panel already attached to it. The wall of concrete blocks would have stone facing panels automatically fitted to a common side. There would be no need to later contract a stone mason to fit the stone veneer.”
[8] See the third Taplin declaration at [7]
[9] See the second Taplin declaration at [2.4]-[2.5]
As explained by Taplin, he “shared the Invention with Henrick because of his knowledge of stone for use as veneers for concrete block walls.” [10] Taplin states that it was agreed to source the stone facia from Capital Quarries, and that Henrick would ask Cowra Concrete whether they could manufacture the concrete blocks using Capital Quarries sand. Taplin contacted Leslie after his discussion with Henrick.
[10] See the first Taplin declaration at [4.3]
Preliminary findings
The foregoing narrative has established that the period from March to July 2004 is critical to the present dispute. It also reveals that the parties have each put a completely contradictory account as to the circumstances in which the invention was conceived. I will have more to say on this later.
One of the rare examples of common ground in this case was that the stone wall concept communicated between Henrick and Taplin is encompassed by the invention. As noted by Mr Heerey, the concept of constructing a wall from concrete blocks having stone facing attached thereto “corresponds uncannily” with claims 2 and 3 of the innovation application. Accordingly, the question of when the conception of the invention was complete does not arise for consideration in these proceedings.
There is some disagreement between the parties on the issue of technical competence. However, on weighing the evidence, I am satisfied that Henrick and Taplin each appear capable of contributing independently to the invention. Henrick is a stonemason by trade and, although employed by Granite Works in a sales position, I believe that Taplin would have been required to exercise at least a basic level of relevant technical know-how in his area of principle responsibility. Indeed, there is direct evidence that Taplin was offered employment partly on the basis of “his expertise in the building and construction industry”[11].
[11] See the second Leslie declaration at [1.7]
I also accept that, based on their respective accounts, Henrick and Taplin both had sufficient imperative to devise the invention. The scope of Taplin’s employment with Granite Works is set out in an agreement signed by him on 26 February 2002[12]. Paragraph 10 of the agreement provides as follows:
[12] See exhibit RT01
“Ownership of inventions
(a)All inventions, discoveries and improvements which you (whether alone or not) may conceive of or make during the period of your Appointment relating to or connected with any of the matters which have been, are or may become the subject of Granite Works’ business or in which Granite Works has been, is or may become interested will be the exclusive property of Granite Works.
(b)You irrevocably assign to Granite Works all proprietary rights, including all ownership rights, copyright and the exclusive right to develop, make, use, sell, license or otherwise benefit from any information, discovery, process or other form of knowledge conceived, made or improved by yourself during your employment.
(c)Any such creation, conception or improvement by you will be deemed to be a work made in the scope of and during the course of your employment with Granite Works and will be promptly disclosed to Granite Works and you will have no proprietary or other rights in the work.
(d)You will take any action that may be necessary to give full effect to these provisions including, but not limited to, any assignment of rights in specific designs, developments, processes, formulae, information or products and preparation of patent or design applications.”
These provisions do not, in my view, carry the implication that it was part of Taplin’s employment to invent products for Granite Works, and nor does the evidence point to any instance of innovative activity undertaken by him before the start of the period relevant to these proceedings. Nevertheless, it is apparent from Attachment A to the agreement that Taplin had a duty to advance Granite Works’ business opportunities, and it seems to me that the pursuit of a more cost competitive alternative to stone wall construction would fall squarely within the performance of this duty.
The position with Henrick is not as straightforward. Henrick, it will be recalled, has stated that he conceived the invention in response to the problem of excess sand encountered by Capital Quarries when crushing overburden. In his written submissions, Mr Clark has argued that it is stretching credibility to suggest that Henrick devised the invention on his own initiative when it appears that he was not even aware of the problem relating to the high cost of stone wall construction which Taplin sought to address.
I do not find this argument persuasive. It is clear from contemporaneous documents in evidence that Henrick and the Capital Quarries Board of Directors were anxious to find a market for the excess sand produced by crushing overburden. Taplin himself has acknowledged Henrick’s stated desire to “increase the sales for Capital Quarries”. With this objective in mind, and taking into account both his expertise as a stonemason and the contacts he had established as a quarry manager with those engaged in the industry, including Cowra Concrete, I consider it plausible that the idea of combining a concrete block made from the excess sand with stone facie extracted from Capital Quarries could have occurred to Henrick as a possible solution to the particular problem which confronted him. I find some support for this view in Taplin’s own evidence that the raw materials for the invention were to be sourced from Capital Quarries.
FACTUAL ISSUES
The evidential conflict which has arisen in these proceedings is not entirely unexpected, particularly as the present dispute is based on events which took place a number of years before the hearing. On their face, the respective accounts of Taplin and Henrick might conceivably be an accurate depiction of events, but as these accounts are largely based on recollections which are unsupported by any corroborating contemporaneous documentation, they must be weighed carefully against the following warning in Christofidellis et al v Zdrilic et al [1999] FCA 39 at [20]:
“Even in matters in which the witnesses are genuinely attempting to recall, in good faith, what was said so long before, it is impossible that any such unaided recollection could be accurate.”
In perhaps recognising the shortcomings inherent in the evidence, both parties have placed reliance on the inferences to be drawn from, or the ultimate facts to be derived from, the surrounding circumstances. I now direct my attention to the circumstances on which the parties specifically rely. As will become apparent, these have in turn raised serious concerns as to the credibility of the evidence advanced by Granite Works.
The alleged telephone conversations
Taplin contends that he first conceived the invention in March 2004, and disclosed the invention to Henrick during a telephone conversation at that time. Henrick’s opposing contention is that he first conceived the invention in March 2004, and disclosed the invention to Taplin during a telephone conversation in early July 2004.
Taplin does not deny that he received the telephone call from Henrick in July 2004, but claims he has no recollection of it. Henrick alleges he made the call while travelling to the Capital Quarries site at Boorowa upon realising the potential applicability to the invention of the imported stone facia he had “spotted” in Taplin’s office earlier in the day. Henrick’s telephone account records reveal three calls originating from Boorowa to Taplin’s mobile phone at the relevant time[13]. One call was of seven minutes duration. Although this is certainly not direct evidence of anything Henrick may have said to Taplin during this period, it does lend credence to the proposition that he communicated the invention in the circumstances to which he has deposed.
[13] See exhibit CJH-23
Taplin questions the cogency of Henrick’s account by pointing out that Henrick attended his office “[at a guess] every two weeks or so” where the imported stone facia had been located since 30 March 2004. On this basis, he contends that Henrick was aware of the stone facia well before the first week of July 2004[14]. Henrick does not challenge this contention. He does, however, make the point that the stone facia could not be attached to Besser blocks “because it was the wrong size”[15] which answers to my satisfaction why the possibility of using the imported stone facia in the invention may not have naturally occurred to him beforehand.
[14] See the third Taplin declaration at [16]
[15] See the second Henrick declaration at [27]
Taplin continues as follows[16]:
“[I]t does not make sense that Henrick would contact me to ask if I knew of ‘potential markets’ for the Invention. Surely, he would have known this already if he was the Inventor. In my opinion, to properly understand the Invention, you need a good understanding of the stone market and its requirements.”
[16] See the third Taplin declaration at [18]
As I have previously stated, this line of argument is not persuasive. Furthermore, Taplin has himself confirmed that Henrick did not have any expertise “in the sales side of the [stone] market” and, consequently, it seems entirely plausible that Henrick would seek advice of this kind from a close associate whom he knew to have relevant marketing experience.
For his part, Henrick states that he and Taplin were in regular contact during the period March to July 2004, mostly by telephone and “often six, seven or more times per day”[17]. Henrick has failed to explain why he delayed disclosing the invention to Taplin for some three months despite having ample opportunity to do so earlier. However, and as his evidence as a whole tends to confirm, one possible explanation is that Henrick was preoccupied during the relevant period with evaluating the cost effectiveness of the invention, and it was only after satisfying himself of its viability that he brought the invention to the attention of Taplin ultimately to secure financial backing from Granite Works which had not been forthcoming from Capital Quarries[18]. Although lacking in some detail, I see no reason to doubt the veracity of Henrick’s evidence.
[17] See the fourth Henrick declaration at [3]-[6]
[18] See eg the first Henrick declaration at [16]
It is at this point that anomalies with Granite Works’ evidence emerge. On 9 March 2004, following an exchange of correspondence, Taplin ordered a crate of sample stone facia from Xiamen XinHengLong Stone Co (Xiamen Stone), a stone supplier in China. The crate of sample stone arrived in Australia on 30 March 2004.

According to Taplin[19]:
“In [the second Taplin declaration], I stated … that I believed that the conversation I had with [Henrick] about the Invention took place in April or May 2004. However, after reviewing [correspondence with Xiamen Stone], I believe that this conversation took place at a slightly earlier point in time. I believe that the telephone conversation … took place after ordering the crate of samples on 9 March 2004 and before the crate of samples arrived on 30 March 2004.”
[19] See the third Taplin declaration at [7]
I find particular difficulty in accepting this evidence. Taplin’s evidence elsewhere shows that he first contacted Xiamen Stone on 27 January 2004[20] which, on any view, is well before the invention was conceived. His evidence additionally indicates that Granite Works merely intended to sell the imported samples of stone facia[21]. This is totally inconsistent with the notion that Taplin ordered the samples with the invention in mind. My consequential lack of faith in this evidence was fortified by Taplin himself who agreed under cross-examination that the samples were for general use and not expressly for the invention.
[20] See exhibit RT D3 01
[21] See exhibits RT D3 04 and RT D3 05
It is against this background that Taplin has asserted a new-found belief that he disclosed the invention to Henrick in March 2004, and not April or May as he had originally deposed. I do not believe that this newly formed belief simply reflects Taplin’s faulty memory of events due to the passage of time since, as indicated above, his evidence was corrected on the basis of a review of correspondence which is unrelated to the invention, and even then only in the face of evidence that Henrick had devised the invention before April 2004. This raises the suspicion that Taplin has attempted to reconstruct events ex post facto in a manner which bolsters his own position.
Taplin’s reconstruction of events does not receive support from Leslie who has repeated the claim that Taplin conceived the invention on or around April or May 2004[22]. Further, a closer scrutiny of Leslie’s evidence reveals a second version of events, namely, that this was the time when he was told of the invention by Taplin[23]. Leslie offers no explanation or justification for this apparent shift in focus which does not inspire faith in his evidence generally. Nevertheless, neither version of events averred to by Leslie sits comfortably with Taplin’s evidence given in cross-examination that he informed Leslie of the invention within “a couple of days or a week” after his telephone conversation with Henrick in March 2004.
[22] See the first Leslie declaration at [9] and the second Leslie declaration at [3.5]
[23] See the second Leslie declaration at [2.1]
Leaving aside the alleged timing of their conversation, Taplin’s stated reason for telephoning Henrick is far from convincing. The evidence suggests that Taplin did not believe Henrick to be suitably qualified, or the initiator of product development[24]. If so, then it is quite surprising that Taplin would contact him for the express purpose of exploring cheaper options for constructing stone walls which, according to Taplin, was “a constant problem in the industry”[25].
[24] See the third Taplin declaration at [14]
[25] See the second Taplin declaration at [4.1]
This not only casts doubt on Taplin’s motive for telephoning Henrick, but on his entire version as to the timing and details of their conversation.
The notices to produce
Taplin’s and Leslie’s professions of recall are in turn uncorroborated by any other documents tendered as evidence. On 30 July 2007 notices to produce were served on Leslie and Granite Works requiring the production of, among other things, any correspondence (including Board Minutes of Granite Works) relating to (1) the proposed development and actual development of the invention, (2) the authorisation of Taplin to develop or deal with the invention, and (3) the shipment from China of granite facia for use in the invention by Granite Works.
Mr Clark responded to the notices as follows:
“… Granite Works does not have board minutes relating to the invention in their possession. They submit that correspondence relating to the proposed development and the actual development of the invention was largely done by [Leslie] via telephone, e-mail, or in person. As a matter of practice, [Leslie] does not archive all e-mails received and has lost and/or deleted a number of e-mails relating to this matter. Enclosed herewith and marked as item A are copies of e-mails in his possession that relate to the proposed development … and actual development of the invention … Enclosed herewith and marked as item B are copies of invoices relating to payment for the development of the invention.”
Item B referred to by Mr Clark is unhelpful in that it merely comprises a copy of an invoice for US$11.50 arising from the importation by Granite Works of the sample stone facia from China in March 2004 which, as noted earlier, was not specifically for use in the invention. Item A comprises copies of a number of e-mails and invoices associated with the commercialisation of the invention. The earliest of these is an e-mail from Taplin to Leslie dated 30 July 2004 which attaches photographs of a product TRB intended to market. All other documents comprising item A originated in 2005 or 2006. It seems rather odd that Leslie and/or Granite Works would retain these documents, and yet not have possession of any contemporaneous record regarding the conception of the invention or its initial development.
Taken together, the various shortcomings I have related above add to the misgivings I have already expressed regarding the credibility of the evidence for Granite Works.
Patenting and the proposed joint venture
Leslie has submitted that at the time Taplin allegedly conceived the invention[26]:
“Henrick did not claim to be the sole inventor, or even a co-inventor. In the time that passed from conception of the Invention to the date of filing the [provisional application] filing [sic], Henrick did not claim to be the sole inventor, or the co-inventor, of the Invention. Henrick was aware that Granite Works filed the [provisional application] for the Invention. At that stage, he did not contest ownership of the Invention with Granite Works. Henrick first stated that he was the sole inventor after he rejected the offer of a one third share in the Invention.”
[26] See the second Leslie declaration at [3.5]
Taplin is similarly critical of Henrick’s actions[27]:
“… I understand that Henrick’s sister works as a lawyer with his legal representatives. If Henrick was the true inventor, then it seems odd that he would have relied upon Granite Works to protect the Invention without having first entered into a commercial agreement with Granite Works.”
[27] See the third Taplin declaration at [22]
This criticism is easily rebutted. Taplin confirms that he and Henrick discussed a potential joint venture between them and Granite Works to commercially exploit the invention[28]. Henrick claims that at the time he also raised the prospect of patenting the invention, to which Taplin allegedly responded that “he would investigate the patenting issue and the structure of the potential joint venture”. The evidence further establishes that Granite Works were prepared to “reward” Henrick for his assistance in developing the invention, but could not reach agreement on how he should be rewarded. As events occurred, Leslie contacted Mr Clark’s firm, Davies Collison Cave (DCC), to discuss the possibility of recognising Henrick’s contribution by sharing rights in the invention with him[29].
[28] See the third Taplin declaration at [19]
[29] See the second Leslie declaration at [3.3]
On 21 October 2004, Henrick telephoned Taplin to “ask how investigations were going regarding patenting the Invention and what progress had been made regarding preparation of contracts for our business”. Henrick’s 2004 and 2005 diaries show that he raised these issues with Taplin on a number of occasions. According to Henrick, Taplin assured him that “everything was in hand” which I think shows Henrick had a significant measure of trust in Taplin, and was content to let him attend to business arrangements.
In early 2005, Taplin provided Henrick with a draft copy of a provisional specification in respect of the invention for comment. Henrick recalls being given a copy of the as-filed provisional specification in late March or early April 2005, from which he noted[30]:
“that the letter to the patent office cited Granite Works as applicant. I asked [Taplin] why the application had not been filed in my name and he said that a complete application would be filed in March 2006 and the applicant would be changed back to me at that time.”
[30] See the first Henrick declaration at [25]
Taplin says he has no recollection of this conversation. Henrick continued to press Taplin and, later, Granite Works, on the issue of ownership and the status of the proposed joint venture. He next states[31]:
“By the start of 2006 I became concerned that I had not seen any formal agreement and my enquires of Ross Leslie and [Taplin] had not given me any comfort. I was concerned that we had better clear up the business arrangement before we proceed much further. In mid to late January 2006 I contacted my sister Sharon who is a partner of Mallesons in Sydney to ask her advice.”
[31] See the first Henrick declaration at [39]
Henrick’s sister telephoned DCC to discuss the matter. Exhibit RT D3 16 is a copy of Mr Clark’s file note of the discussion which places the telephone call on 24 October 2005, and not in early 2006 as attested to by Henrick. However, nothing presently turns on this. Interestingly, the file note indicates that Mr Clark told Henrick’s sister that he had been instructed by Taplin to “file in the name of Granite Works and that an agreement b/w Granite Works and [Taplin] and the other inventor will be worked out later” (my emphasis). In the context of these proceedings, “the other inventor” could only have meant Henrick. The file note also substantiates Henrick’s claim that he was told by Taplin that the joint venture would be formed once the provisional application had been filed[32].
[32] See the second Henrick declaration at [33]
Henrick subsequently telephoned DCC to ask when he could expect to receive the documentation needed to give effect to the proposed joint venture. On 2 March 2006, Mr Clark sent a draft copy of a deed of assignment to Mallesons[33]. The draft deed purported to record an agreement between Granite Works, Henrick and Taplin that each would hold a one third interest in the invention as tenants in common. It is not in dispute that Henrick did not sign the deed of assignment. To the contrary, Henrick conveyed his displeasure to DCC that the draft deed did not reflect, as he had anticipated, a business arrangement whereby he would benefit from the commercialisation of the invention[34]. DCC were also advised that Henrick had never intended to transfer ownership of the invention to either Taplin or Granite Works.
[33] See exhibit CJH-13
[34] See exhibit SL09
The provisional application
The provisional application was filed on 7 March 2005. The patent request which accompanied the provisional application nominates Granite Works as the applicant but does not include the name of the actual inventor[35]. This seems a strange omission given that the invention had allegedly been conceived by Taplin almost a year earlier, and nor can it be explained by Granite Works’ offer to Henrick of a one-third interest in the invention since the evidence demonstrates that Leslie did not even contemplate making such an offer until close to a year after the filing date of the provisional application.
[35] See exhibit CJH-9 “Confidential”
The provisional specification was prepared by DCC with the assistance of Taplin which he implies further substantiates his inventor status[36]. I do not agree. The invention is simplistic in nature as illustrated by the brevity of the innovation specification, and thus it is equally likely, in my opinion, that information concerning the invention which Taplin communicated to DCC had been imparted to him by Henrick. This could be the very reason why Henrick’s comment on the draft copy of the provisional specification was solicited by Taplin.
[36] See the third Taplin declaration at [22]
While certainly not determinative of the matter, these circumstances seem at odds with Granite Works’ insistence that they regarded Taplin as the sole inventor at all relevant times.
The design applications
On 10 May 2005, DCC filed three design applications on Taplin’s instructions. Each application was in the name of Taplin and Henrick, and sought registration in respect of a building block[37]. Henrick states that he “recognised depictions of the Invention” from the photographs filed as representations of the building block.
[37] See exhibits SL03 to SL05
As contended by Taplin[38]:
“Henrick had I [sic] jointly selected the stone veneer for the Designs shown in the Design Applications. Consequently, my understanding was that Henrick may be considered a co-creator of the relevant Designs. I decided to file the Design Applications jointly in the names of Taplin and Henrick because it was not clear to me the Granite Works [sic] derived title to the Designs from Henrick.”
[38] See the second Taplin declaration at [3.19]
There is disagreement as to when Henrick became aware of the design applications, but this has no present significance. However, he denies having contributed to the selection of stone veneer, and in so doing asserts that the colour of the only stone veneer he and Taplin affixed to concrete blocks differed markedly from that shown in the photographs filed with the design applications[39]. Taplin does not contest this evidence and, consequently, the basis for his “understanding” as to co-authorship of the building block design is not apparent. This in turn raises questions as to Taplin’s motive for sharing entitlement in the design with Henrick, but no useful inferences can be drawn here.
[39] See the second Henrick declaration at [36]-[37]
The sample
Taplin states that in May 2004 he met with Marsh, who was at the time a director of a company which had been subcontracted by Granite Works to construct a stone feature wall as part of the redevelopment of the HIA building in North Ryde, Sydney, to discuss the installation of the wall[40]. Taplin further claims that during the meeting he showed Marsh a sample of the invention (the sample) he had in the boot of his car. Taplin sought Marsh’s experience as a stonemason on how glue could be applied “to fix the sandstone facing panels to the Besser^TM blocks”.
[40] See the fourth Taplin declaration at [4]
Marsh deposes to the same facts, and additionally agrees that Taplin had spoken to him about the invention prior to their meeting in May 2004. On the other hand, I note that there is no contemporaneous record of this meeting in evidence. Exhibit RT 04 01 is a copy of a letter dated 18 May 2004 which includes a quotation for the construction of the stone feature wall said to be based on costings provided by Marsh to Taplin at the meeting. However, Taplin stated in cross-examination that the quotation was unrelated to the invention.
The alleged disclosure of the sample is the subject of considerable debate between the parties. In short, Mr Clark has argued that the evidence of Taplin as corroborated by Marsh runs contrary to Henrick’s assertion that Taplin first learnt of the invention from him in July 2004.
Henrick in turn requested production of the sample[41]. Arrangements were eventually made for Taplin and Barac to attend the premises of Carkeet Transport (Carkeet) in Hume, an industrial suburb of Canberra, on 14 September 2007 to inspect the sample only to find that Taplin had instead produced a pallet of blocks, the majority of which had stone facia adhered to them. Exhibit CJH-22 consists of copies of photographs taken by Henrick of these products. Henrick explains that adhesive used in stonemasonry tends to change colour and become hard as it ages[42]. He states that an assessment of the condition of the adhesive used in the products he inspected revealed that the only products in which the adhesive had aged were those having facia sourced from Capital Quarries and cut by Genato Stone. Henrick says he gave two of the facia to Taplin to adhere to Besser^TM blocks, while others had been adhered to Besser^TM blocks by Taplin, Martin Sultana (Sultana) and himself in 2004. Sultana was at the time a representative of Mapei Australia Pty Ltd (Mapei), an adhesives manufacturer.
[41] See exhibit CJH-21
[42] See the third Henrick declaration at [10]
To understand the full implication of this statement, it is necessary to recount the evidence of Taplin concerning the choice of adhesives for use in the invention. Taplin states that on or around July 2004 he spoke to Brian Repeti (Repeti), a licensed stonefixer, who provided an introduction to Sultana. Taplin initially met with Sultana on 30 July 2004[43]. He says that he prepared four samples of the invention in readiness for his meeting with Sultana[44], but Taplin’s description of exhibit RT D3 08 strongly intimates that the samples were prepared on the day of the meeting and not beforehand. This account is, in any event, contradicted by his own evidence where he attests that the first mock-ups of the invention were not prepared and trialled until August 2004[45]. Henrick and Sultana assisted in this. These mock-ups, or at least some of them, were among the products inspected by Henrick at Carkeet which, on either version of Taplin’s evidence, could not have been available in May 2004. Henrick claims that Taplin, Sultana and Henrick first affixed stone facia to blocks “some weeks earlier” than the trial[46] using standard Mapei products. Whatever the case may be, this is still well after the timing of the meeting between Taplin and Marsh.
[43] See exhibit RT D3 12
[44] See the third Taplin declaration at [23]
[45] See the second Taplin declaration at [3.3], [3.5] and [3.6]
[46] See the third Henrick declaration at [30]
Returning now to the inspection at Carkeet, Henrick determined that, with one exception, the remaining products had only recently been created given the condition of the adhesive. The exception was a product Henrick identified that he had made himself. A comparison of exhibits CJH-22 and JL-1 readily suggests that the facie used in the remaining products had in fact been cut by Leahy and collected by Taplin early in 2006[47]. Henrick accordingly concluded that:
“amongst all the blocks produced in the yard of [Carkeet] I did not identify any which could be the block [shown by Taplin to Marsh].”
[47] See the Leahy declaration at [9]
Henrick’s visit to Carkeet took place over four years after Taplin allegedly disclosed the sample to Marsh. Given this passage of time, it is a distinct possibility that the sample may no longer have been in the possession or control of Taplin. However, Taplin did not raise this as a lawful excuse for why he could not comply with the notice to produce. While I draw no inferences from his subsequent failure to produce the sample, I have formed the view that Taplin and Marsh are mistaken as to what transpired during their meeting in May 2004. More particularly, the weight of the evidence establishes that mock-ups of the invention were not prepared until July or August 2004, and thus Taplin could not have been in possession of the sample when he met with Marsh.
Disclosure to Creecy

100. Creecy alleges that Taplin visited him at a construction site on around April or May 2004 and suggested that the cost for rebuilding a wall section on the site could be reduced by using a product Taplin had developed. According to Creecy, “[t]he product Taplin described included a Besser^TM block and a sandstone facing panel … adhered to it”. There is, however, no confirmation of this evidence, even by Taplin. Given the grave doubts I have raised in relation to the credibility of Granite Works’ evidence, I am not prepared to accept Creecy’s uncorroborated evidence at a face value.

Events after July 2004
101. Mr Heerey has submitted that Granite Works’ own evidence reinforces the notion that Taplin first learnt of the invention in July 2004. In taking this submission further, Mr Heerey draws attention to the fact that while their evidence demonstrates that Taplin and Granite Works had engaged in a range of activities related to the invention from July 2004 onwards, it also exposes a dearth of such activity before then. He submits this is consistent with an ignorance of the invention on the part of Taplin prior to July 2004.
102. I accept this submission. The evidence generally indicates that Granite Works were keen to exploit the invention, chiefly through the agency of Taplin. It therefore seems quite extraordinary that if, as alleged, Taplin had already conceived the invention in March 2004:

The earliest document Granite Works were able to produce “relating to the proposed development and actual development of the Invention” was dated 30 July 2004;

By the first week of July 2004, Taplin still had not acted on the crate of imported stone facia he took receipt of on 30 March 2004;

Taplin waited until July 2004 before contacting Repeti;

The first trial run of the invention was not conducted until August 2004;

Taplin waited until August/September 2004 before investigating the cost of stainless steel pinning for use with the invention, or taking steps to have the invention certified by a structural engineer[48];
[48] See the second Taplin declaration at [3.9]-[3.10]

Taplin did not contact DCC to discuss patenting the invention until September 2004; and

The new company through which Granite Works intended to commercialise the invention was not formed until late in 2004[49].
[49] See the second Leslie declaration at [2.3]

103. These unexplained delays are in contrast to the investigations which Henrick commenced as early as 31 March 2004, thus strengthening a perception that his evidence offers a more reliable guide to events.
CONCLUSION AS TO INVENTORSHIP
The source of the invention
104. As is mentioned above, these proceedings have arisen in the circumstances of events which took place some years before the hearing and, as would be expected, there is significant dispute about much of what occurred. Furthermore, the unaided professions of recall on which the parties have principally relied have posed considerable difficulties of proof for them.
105. However, having weighed all the evidence, I find that the invention was conceived by Henrick alone. My reasons follow below.
106. Taplin claims that he made a telephone call to Henrick to discuss how the cost associated with stone wall construction could be reduced. Taplin has not explained why he sought Henrick’s input on what was evidently a long-standing problem in the industry. Taplin next asserts that he conceived the invention as a possible solution to this problem and disclosed it to Henrick during their conversation. Taplin initially placed the telephone call on or around April 2004, but on reviewing correspondence involving Xiamen Stone expressed the belief that it took place sometime between 9 March and 30 March 2004. The sample facia was not exclusively for the invention. Thus, as submitted by Mr Heerey:
“As [sic] best, [Taplin] merely asserts a new-found belief that the relevant discussion with [Henrick] could have been earlier than April 2004, and the basis of that belief is by reference to general correspondence with [Xiamen Stone] which itself does not refer in any way to the invention or otherwise corroborate such a belief that [Taplin] thought about the invention at that time.” (original emphasis)

107. For the reasons already set out, Taplin’s new-found belief exhibits a preparedness to recall events in a light which is favourable to him. Further, Taplin’s corrected evidence is not supported by Leslie. Taplin states he told Leslie about the invention after the telephone conversation with Henrick, but Leslie says this did not occur until as late as May 2004. There are other factors which have emerged from the evidence that do not assist Taplin’s position. Some of these, as previously discussed, seemingly contradict his assertion that he had knowledge of the invention prior to Henrick’s telephone call to him in July 2004. The fact that Taplin sought Henrick’s comment on the draft copy of the provisional application, and was not named as inventor in respect of that application, also do not reflect well on his claim to inventorship.
108. This state of affairs leads me to conclude that Taplin has created the details of a conversation which did not take place. Although it is open to speculation as to whether the conversation occurred at all, it is not necessary for me to do more than find, as I do, that Taplin did not communicate the invention to Henrick in March 2004.
109. In contrast, Henrick’s evidence has an overall sense of consistency and integrity about it. Henrick states he devised the invention in March 2004, and his evidence credibly suggests that he immediately set about assessing whether it would offer a commercially viable solution to the problem of excess sand encountered by Capital Quarries when crushing overburden. After some encouraging results, Henrick sought advice as to the market potential of the invention from Taplin, a close associate and experienced salesman, possibly also with an eye to securing financial support from Granite Works. I am satisfied from the evidence that Taplin first learnt of the invention from Henrick at this time. Henrick’s claim as to when he conceived the invention receives undisputed support from the minutes of the Capital Quarries Board of Directors meeting held on 29 March 2004, which Mr Heerey characterised as the “key contemporaneous document” in these proceedings. The minutes were caused to be created and thereafter signed by Bates, the Chairman of Capital Quarries, who has nothing to gain from the facts asserted and I therefore consider his evidence to be impartial.
110. It is conceivable that Bates may have simply recorded Henrick’s recount of the invention based on knowledge he had acquired from Taplin prior to the meeting. However, as stated above, I have rejected Taplin’s evidence at least so far as it relates to the content of the telephone conversation he allegedly held with Henrick in March 2004.
111. The evidence shows that Henrick did not expressly assert rights in the invention to Granite Works from the beginning, but that this was only because of a misguided belief that his interests would be protected by the proposed business venture and the provisional application. However, Henrick did not at any time depart from the position that the invention was his alone, as evidenced in particular by his instructions to Mallesons to prepare and file the Henrick application immediately after he had rejected the draft deed of assignment proffered by Granite Works.
The question of co-inventorship
112. In according Henrick the status of sole inventor, I have not overlooked the fact that Taplin contributed to the subsequent development of the invention, both directly and through his industry contacts. Nevertheless, there is nothing in evidence to indicate that Taplin’s efforts to progress the invention, the conception of which was by then complete, brought about some result or advantage not envisaged by Henrick. That is to say, Taplin’s involvement went no further than assisting to produce a workable embodiment of the invention. In light of the authorities, Taplin does not, as a consequence, meet the description of a co-inventor.
THE ENTITLEMENT OF GRANITE WORKS
113. I have found Henrick to be the sole inventor and, consequently, entitlement to the original grant of a patent for the invention rests with him under section 15(1)(a). Mr Clark has submitted that, as Taplin’s employer, Granite Works is jointly entitled under section 15(1)(b) by virtue of a collaborative relationship amounting to a co-partnership between Taplin and Henrick.
114. As stated in Vrubel v Upham [1997] APO 51, the classes of person prescribed by section 15(1) to whom a patent may be granted include the actual inventor as well as persons deriving title from the inventor by way of assignment, an employer-employee relationship, or a collaborative relationship. The manner in which entitlement may derive from a collaborative arrangement was explained in this way:
“… there is nothing which establishes that the relationship was of such nature that it amounted to a co-partnership in respect of on-going developments arising from or incidental to the relationship, whereby any rights to inventions from individual developments rested with the partnership rather than the individual party responsible for such inventions.”

115. Central to Granite Works’ claim to joint entitlement is the verbal agreement allegedly reached between Taplin and Henrick to mutually develop and share rights in the invention. However, this allegation is fundamentally flawed since the evidence establishes beyond doubt that Henrick did not consent to sharing any patent rights. Furthermore, although Taplin and Henrick agreed to mutually develop the invention, this did not impose any contractual obligations, implied or otherwise, on Henrick (compare with Mackay and Commissioner of Patents [2005] AATA 1185). Granite Works’ reliance on the agreement to create a joint venture to commercialise the invention is also of no assistance to them since the proposed joint venture did not eventuate.
116. I therefore find that Granite Works is not jointly entitled under section 15(1)(b).
117. For completeness, I note that on 26 July 2006 Taplin assigned his right, title and interest in the invention to Granite Works[50]. However, based on my findings above, at the time of the assignment Taplin had no rights in the invention to assign.
[50] See exhibit GW02
CONCLUSION
118. I have found on balance that the conclusion most consistent with the evidence is that entitlement lies with Henrick to the exclusion of Taplin and Granite Works.
119. Pursuant to section 36(1), I declare that Henrick is the sole eligible person in relation to the invention. I determine under section 32 that the innovation application is to proceed in the name of Henrick alone. Subject to any appeal, I allow a period of two (2) months from the date of this decision for Henrick to request amendment of the patent request to reflect my determination, following which I direct that the innovation application proceed to sealing.
120. Although not in issue in these proceedings, I observe that the co-existence of the innovation application and the Henrick application may present difficulties under section 64(2).
COSTS
121. Having taken account of all relevant circumstances, I see no reason to depart from the usual practice that costs follow the event. I therefore award costs under schedule 8 against Granite Works in respect of the reconvened hearing, noting that the only costs applicable are those relating to the hearing itself (John Edward Vines v John McDonald [2005] APO 25).
122. Mr Heerey also sought an award of costs in respect of the original hearing which was adjourned due to the very late filing of further evidence by Granite Works. Mr Clark argued that Henrick should be held responsible for this disruption in proceedings as he had filed further evidence only a week before the hearing. While perhaps regrettable, I do not view Henrick’s conduct as justifying the filing of evidence by Granite Works on the day of the hearing and without forewarning. This clearly has imposed considerable inconvenience on Henrick as well as the Commissioner who is charged with the expeditious disposal of actions brought before her. In these circumstances, I agree with Mr Heerey and award costs under schedule 8 for the original hearing against Granite Works.
O L Haggar
Delegate of the Commissioner of Patents
12 September 2008
Patent attorneys for the applicant: Davies Collison Cave, Melbourne
Patent attorneys for the requestor: Mallesons Stephen Jaques, Melbourne