David Leigh Wake and Commissioner of Patents Cavitus Pty Ltd OTHER PARTY
[2014] AATA 43
•30 January 2014
[2014] AATA 43
Division GENERAL ADMINISTRATIVE DIVISION File Number
2010/3614
Re
David Leigh Wake
APPLICANT
And
Commissioner of Patents
RESPONDENT
And
Cavitus Pty Ltd
OTHER PARTY
Decision
Tribunal Deputy President K Bean and
Dr G Hughes, MemberDate 30 January 2014 Place Adelaide The decision under review is affirmed.
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Deputy President K Bean
Catchwords
INTELLECTUAL PROPERTY – Patents – Whether patent application should proceed in the name of the applicant and/or the Other Party – Whether applicant is an inventor, either alone or jointly, of the relevant invention – Whether applicant made a material contribution to that invention – Consideration of claims defining invention – No material contribution by the applicant – Decision under review affirmed.
Legislation
Patents Act 1990, ss 32, 36, 15, 18, 7, 224, Schedule 1
Administrative Appeals Tribunal Act 1975, s 25
Cases
Geographical Indications Committee v The Honourable Justice O’Connor (2000) 64 ALD 325
Lee and Commissioner of Patents and Komipharm International Co., Ltd [2011] AATA 818
Polwood Pty Ltd v Foxworks Pty Ltd (2008) 165 FCR 527
University of British Columbia v Conor Medsystems, Inc (2006) 155 FCR 391
University of Western Australia v Gray (2009) 179 FCR 346University of Western Australia v Gray (No. 20) (2008) 246 ALR 603
REASONS FOR DECISION
Deputy President K Bean
Dr G Hughes, Member30 January 2014
introduction
This application relates to a dispute over inventorship of a method of cleaning and disinfecting wine barrels using ultrasonic sound waves.
There is no dispute that the applicant, Mr Wake, is an ‘inventor’ of the process of cleaning wine barrels through the insertion of a sonotrode through the bunghole of the barrel, which then emits ultrasonic sound waves. However, a dispute has arisen as to whether he is also an inventor of a subsequent invention, which involves the use of a sheath or bladder surrounding the sonotrode, so as to enable liquid surrounding the sonotrode to be kept cooler than the liquid in contact with the interior surface of the barrel, thus enhancing the cleaning process (the sheath invention).
The sheath invention is the subject of patent application 2005200778 (the application) filed on 22 February 2005 by the Other Party, Cavitus Pty Ltd (Cavitus), naming four individuals (other than Mr Wake) as co-inventors.
Mr Wake claims to be an inventor of the sheath invention, and seeks to have the patent application proceed in his name as well as that of Cavitus. However, in a decision dated 29 July 2010, a delegate of the Commissioner of Patents determined, pursuant to s 32 of the Patents Act 1990 (Cth) (the Act), that Mr Wake was not an inventor, either alone or jointly, in respect of the invention as described and claimed in the application, and that the application was therefore to continue to proceed in the name of Cavitus alone. The delegate also declared, pursuant to s 36(1) of the Act, that Cavitus was the sole eligible person in relation to the subject invention.[1]
[1] Exhibit 1, T2/21-37 at [87].
Mr Wake has applied to this Tribunal for review of the delegate’s determination under s 32[2], and it is common ground that the Tribunal’s jurisdiction is limited to reviewing the delegate’s determination under s 32, and does not extend to the delegate’s decision under s 36 of the Act.
[2] Exhibit 1, T1/2-3.
As we understand the position, Mr Wake does not claim to have been directly involved in the conception of the sheath invention, insofar as it involves a membrane or bladder enabling liquids within a wine barrel to be separated and heated to different temperatures. However, he claims that he was a key contributor to the insights and inventive steps upon which that invention is based, in particular insofar as it involves the insertion of a sonotrode through the bunghole in a wine barrel for the purpose of cleaning and disinfecting the wine barrel.
Accordingly, the main issue before us is whether Mr Wake made a sufficient contribution to the invention the subject of Cavitus’s application such that, pursuant to s 32 of the Act, that invention should proceed further through the steps set out in the Act in the name of Cavitus and Mr Wake, rather than solely in the name of Cavitus.
However, before addressing that issue more directly, we propose to first set out the relevant factual background and the applicable statutory framework.
We should also formally record the fact that, having regard to the principles discussed in Geographical Indications Committee v The Honourable Justice O’Connor[3], the respondent sought to be and was excused from active participation in the proceedings and attendance at the hearing.
[3] (2000) 64 ALD 325.
background facts
There is no dispute that Mr Wake joined a company known as Soniclean Pty Ltd (Soniclean) as an unpaid consultant in January 2003. In that month, Mr Wake also attended a seminar on high powered ultrasonics (HPU) given in Adelaide by Dr Darren Bates. He says that having learned more about HPU in the course of this seminar, it occurred to him that a potential application of HPU was to clean wine barrels, as he was aware that this was a difficult and costly problem for the wine industry.
Mr Wake says that over the ensuing months, he researched the potential use of HPU to clean wine barrels, and “commenced networking into wineries in the Barossa Valley and Clare Valley areas”.[4] He says he also developed and circulated to various wineries a survey document “relating to the then-current methods used by wineries to clean and disinfect oak barrels used in wine maturation.”[5] He also says that he:
[i]nvestigated the potential for HPU to clean porous surfaces, such as wood, and to kill microbial contamination both on the surface of wood and embedded in wood. I conducted experiments with a micro biologist at Regency TAFE laboratories Adelaide. The outcome of these experiments was to show that my novelty worked in that HPU would kill undesirable yeast strains such Brettanomyces residing in oak pores.”[6]
Mr Wake says that he conducted these activities with the “approval and encouragement” of Mr William Wright, who in 2003-2004 was the General Manager of Soniclean.[7]
[4] Exhibit 1, T7/72.
[5] Exhibit 1, T7/72.
[6] Exhibit 1, T7/72.
[7] Exhibit 1, T7/71-72.
Mr Wake also says that:
… in March 2003, on the basis of my reports to him concerning the potential commercial applications of HPU, Wright took to the Board of Soniclean a proposal for the establishment of a “think tank” comprising various consultants with a common belief as to the potential application of HPU technology in their clients’ businesses. Subsequently Wright and I recruited …Consultants Yap, Bates and McLoughlin … Each member, apart from Wright, had a particular interest in the potential applications of HPU in specific industries.[8]
…
I continued the development the [sic] Invention, and of my Related Inventions, in April and May 2003, and completed it in June 2003. No other person had any creative input into this process.[9]
[8] Exhibit 1, T7/72.
[9] Exhibit 1, T7/73.
There is no dispute that patent applications were subsequently lodged in the name of Soniclean in relation to inventions involving the insertion of sonotrodes into wine barrels for the purpose of cleaning and disinfecting them,[10] listing Mr Wake as an inventor. Those inventions did not involve any form of inflatable sheath or bladder surrounding the sonotrode. It is also clear on the evidence that the Soniclean applications have now lapsed[11] and been published, with the result that the information contained in them has entered the public domain and is not the subject of any patent.[12]
[10] T8/290-351.
[11] Exhibit 2, Item 6.
[12] Exhibit 2, Item 6.
It is further not disputed that in February 2004, Mr Wake, together with Mr Andrew Yap, Mr Richard McLoughlin, Dr Darren Bates and Mr William Wright, incorporated a company known as High Powered Ultrasonics Pty Ltd (HPUPL). Mr Wake states that:
The purpose of High Power Ultrasonics was to commercialise my Invention and my Related Inventions … The purpose of High Power Ultrasonics was not fulfilled as I refused to assign my interest in my Invention and in my Related Inventions to High Power Ultrasonics on the terms offered to me.[13]
[13] Exhibit 1, T7/76.
Following Mr Wake’s departure from HPUPL in September 2004, Dr Bates, Mr Yap, Mr McLoughlin, Mr Wright and others incorporated Cavitus in January 2005.[14]
[14] Exhibit 1, 7/77.
As we have indicated above, as we understand the position, Mr Wake does not dispute that insofar as Cavitus’s application relates to an invention which incorporates a sheath or bladder surrounding the sonotrode, this aspect of that invention was conceived of by Mr McLoughlin in late 2004 and Mr Wake had no involvement in the sheath or bladder concept manifested in the Cavitus application. However, Mr Wake does claim involvement in and contribution to that invention insofar as it relies upon prior inventive concepts he was responsible for or involved in.
statutory framework
Section 15 of the Act identifies who may be granted a patent as follows:
15 Who may be granted a patent?
(1)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).
(2)A patent may be granted to a person whether or not he or she is an Australian citizen.
Further, it is clear from the relevant case law that each of the categories of persons within s 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.[15]
[15] University of British Columbia v Conor Medsystems, Inc (2006) 155 FCR 391 at [75].
Relevantly for the purposes of this matter, it is also clear from the terms of s 18, as well as other provisions of the Act, that an invention the subject of a patent application is defined by reference to the claim or claims in the application. Section 18 relevantly provides as follows:
18 Patentable inventions
Patentable inventions for the purposes of a standard patent
(1)Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an inventive step; and
(c) is useful; and
(d)was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.
Patentable inventions for the purposes of an innovation patent
(1A)Subject to subsections (2) and (3), an invention is a patentable invention for the purposes of an innovation patent if the invention, so far as claimed in any claim:
(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i) is novel; and
(ii) involves an innovative step; and
(c) is useful; and
(d)was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.
The Act also makes clear that whether an invention is novel or involves an inventive or innovative step will be assessed by reference to “prior art information”, or information already in the public domain at the time the patent application was filed. Section 7 provides that:
7 Novelty and inventive step
Novelty
(1)For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a)prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b)prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
Inventive step
(2)For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3)The information for the purposes of subsection (2) is:
(a) any single piece of prior art information; or
(b)a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claims, be reasonably expected to have combined.;
Innovative step
(4)For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed(whether in or out of the patent area) before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
(5)For the purposes of subsection (4), the information is of the following kinds:
(a)prior art information made publicly available in a single document or through doing a single act;
(b)prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.
(6)For the purposes of subsection (4), each kind of information set out in subsection (5) must be considered separately.
[Notes: (1) For the meaning of document see section 2B of the Acts Interpretation Act 1901.
(2)See also the definitions of prior art base and prior art information in Schedule 1: see also paragraph 18(1)(b) and subsection 98.][16]
[16] Although it has been slightly amended in recent years, this provision has been in similar terms at all relevant times.
Section 32 of the Act, being the provision pursuant to which the decision under review was made, provided at the relevant time:
32 Disputes between applicants etc.
If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.[17]
[17] Section 32 of the Act was subsequently amended by items 36-39 of Schedule 6 to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Those provisions commenced on 15 April 2013, and item 133(5) under Part 2 of Schedule 6 provides that the amendments ‘apply in relation to disputes arising on or after the day those items commence’. Therefore, the amendments do not apply to this matter.
Relevantly, Schedule 1 to the Act also provides that an:
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.
For completeness, the Tribunal’s jurisdiction to review the delegate’s decision arises from s 224(1)(a) of the Act and s 25 of the Administrative Appeals Tribunal Act 1975.
the issues
Having regard to the scope of the evidence and contentions of the parties therefore, the main issue for us to determine is whether Mr Wake was an inventor of the invention the subject of the Cavitus application, such that the patent application should proceed in his name as well as Cavitus’s. As the delegate observed, having regard to the applicable authorities, resolution of that issue in turn depends on assessment of:
whether Wake made any contribution to the conception of the invention which had a material impact or led to a result or advantage not originally 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 Wake’s involvement.[18]
[18] Exhibit 1, T2/34.
Before grappling with that issue more directly however, it is convenient to first attempt to identify with more precision the invention which is in fact the subject of Cavitus’s application.
what is the invention which is the subject of cavitus’s application?
As is clear from the provisions of the Act set out above, the invention which is the subject of an application for a patent is defined primarily by reference to the claims made in the patent application, and the inventive concept disclosed by them,[19] albeit in the context of the application as a whole.[20] Whether an invention is sufficiently novel, inventive or innovative such as to qualify for a patent is also assessed by reference to what is already in the public domain, or “prior art”.
[19] See also University of Western Australia v Gray (No. 20) (2008) 246 ALR 603 at [1418], [1442]-[1443]; University of Western Australia v Gray (2009) 179 FCR 346 at [221], [253].
[20] See Polwood Pty Ltd v Foxworks Pty Ltd (2008) 165 FCR 527 at [60].
Dr Angus, who appeared on behalf of Cavitus at the hearing, accordingly submitted that the invention the subject of the Cavitus application should be construed by reference to what Cavitus knew to be already in the public domain, namely the information contained in the prior Soniclean patent applications published on 27 January 2005, and we accept that submission.[21]
[21] Exhibit 1, T8/448, T8/467.
Therefore in order to attempt to define the patentable invention the subject of Cavitus’s application, we propose to first attempt to identify the invention/s the subject of the earlier Soniclean applications, which constitute prior art for the purposes of the Cavitus application, and compare the claims in those applications with those made in Cavitus’s application. We expect this process to be instructive in defining the actual scope of Cavitus’s application and the extent to which it overlaps with or draws upon the inventions Mr Wake was involved in.
What invention was the subject of the relevant Soniclean applications?
Relevantly for the purposes of this matter, Soniclean filed provisional specifications in connection with two patent applications on 16 July 2003.[22] Soniclean subsequently filed international applications giving a more detailed description of the inventions and setting out its claims in respect of the relevant inventions.
[22] Exhibit 1, T8/290, T8/306.
Soniclean Application PCT/AU2004/000960
Mr Wake and Dr Angus both agreed that the most relevant Soniclean application for our purposes was the international application PCT/AU2004/000960, which contained the following claims:
1. An ultrasonic processor … for ultrasonic cleaning characterized in that it includes:
at least one shaft … of a diameter less than the diameter of the bung hole of a wine barrel;
an ultrasonic generator …; and
at least one ultrasonic transducer associated with said shaft.
2. An ultrasonic processor … according to claim 1, characterized in that multiple ultrasonic transducers … are associated with said shaft and wherein each ultrasonic transducer associated with said shaft is connected to a single ultrasonic generator.
3. An ultrasonic processor according to claim 1, characterized in that said ultrasonic processor includes a plurality of shafts … and wherein each shaft has a respective ultrasonic generator … associated therewith.
4. An ultrasonic processor … according to claim 1, characterized in that the ultrasonic generator is located within a handle … of the ultrasonic processor … .
5. An ultrasonic processor … according to claim 1, characterized in that it includes at least one sensor … which monitors ultrasonic activity.
6. An ultrasonic processor … according to claim 1, characterized in that the shaft is made from titanium.
7. An ultrasonic processor … according to claim 1, characterized in that the shaft … is of a linear configuration.
8. An ultrasonic processor … according to claim 1, characterized in that the shaft … is of a curvilinear configuration.
9. An ultrasonic processor … according to claim 1, characterized in that, the shaft … of the ultrasonic processor … is constructed with nodules … along its length, said nodules … serving to act as wave guide and help to amplify the resonance of the ultrasonics waves generated by the generator … .
10. An ultrasonic processor … according to claim 1, characterized in that, the shaft … of the ultrasonic processor … incorporates a series of sensors …. along its length.
11. A method for ultrasonic cleaning of a container which has restricted access characterized in that includes the steps of the steps of [sic]:
introducing at least one ultrasonic processor through the opening of the container, said ultrasonic processor including a shaft of a diameter less than the diameter of the bung hole of a wine barrel; an ultrasonic generator; and at least one ultrasonic transducer associated with said shaft;
using said ultrasonic transducer to induce ultrasonic waves within said container to clean the interior surface container; and
removing the detritus through the restricted opening of the container.
12. A method for ultrasonic cleaning according to claim 11, characterized in that the container contains water that can be agitated.
13. A method for ultrasonic cleaning according to claim 11, characterized in that the ultrasonic transducer is vertically placed within the container and located in the opening with an intermediate flange.
14. A method for ultrasonic cleaning according to claim 11, characterized in that multiple ultrasonic processors are introduced into a single container and wherein a respective ultrasonic transducer associated with each shaft of each ultrasonic processor is connected to a single ultrasonic generator.
15. A method for ultrasonic cleaning according to claim 11, characterized in that the container is able to rotate on at least one axis during the cleaning process.[23]
[23] Exhibit 1, T8/346-347.
The application also contained a number of illustrations, one of which is reproduced below[24]:
[24] Exhibit 1, T8/349.
Other illustrations contained in the PCT application depict the sonotrode at an angle[25] or a two-pronged sonotrode with the prongs of the sonotrode being curved in such a way as to veer away from one another such as to give greater coverage within the interior of the wine barrel. Where the illustrations depict fluid in the wine barrel, they depict the wine barrel being approximately half filled with liquid.
[25] Exhibit 1, T8/349.
Significantly, there is no mention in this application of the use of a sheath, membrane, or bladder. Nor is reference made to the use of fluids at different temperatures. However, integral to the invention the subject of the application is the use of a shaft shaped sonotrode with a diameter less than the diameter of the bunghole of a wine barrel. Also integral to the invention is the use of an ultrasonic signal to clean the interior of a wine barrel. As described in the application, the cleaning effect is produced as follows:
The ultrasonic cleaning method works by the action of microscopic cavities collapsing and releasing shock waves. The microscopic cavities are formed by sending sound at high frequencies into a body of liquid that is in contact with the surface to be cleaned. In the present example the microscopic cavities form on the interior surface of the wooden staves … of the wine barrel … The shock waves produced by the collapse of the said cavities loosen the wine residue, tartrates and the like. This detritus can then be drained by the use of a pump or by inverting the barrel and allowing the said detritus to drain out through the bunghole …. .[26]
[26] Exhibit 1, T8/343.
Soniclean Application PCT/AU2004/000959
The invention the subject of this application has many similarities with that the subject of the other Soniclean application. The claims contained in this application are as follows:
1. A space adaptable ultrasonic cleaning apparatus … for cleaning a barrel … of the type having a restricted opening …, characterised by:
a plurality of ultrasonic transducers …, wherein said transducers are attached and able to pivot in relation to each other; and
an ultrasonic generator.
2. A space adaptable ultrasonic cleaning apparatus … as in claim 1, wherein the ultrasonic transducers … are of a diameter less than the diameter of the restricted opening ...
3. A space adaptable ultrasonic cleaning apparatus … as in claim 1, wherein the apparatus … includes a flange … which is able to be positioned within the restricted opening … to secure said ultrasonic cleaning apparatus … .
4. A space adaptable ultrasonic cleaning apparatus … as in claim 1, wherein the ultrasonic transducers … are attached to a single ultrasonic generator.
5. A space adaptable ultrasonic cleaning apparatus … as in claim 1, wherein the ultrasonic transducers … are able to pivot more than 90 degrees in relation to one another.
6. A space adaptable ultrasonic cleaning apparatus … for cleaning a barrel … of the type having restricted access, characterised by:
a plurality of ultrasonic transducers … adapted to be positioned within the barrel …, wherein said transducers are attached and able to pivot in relation to each other;
an ultrasonic generator; and
an elevation means by which the transducers are prevented from resting against the internal surface of the barrel … .
7. A space adaptable ultrasonic cleaning apparatus … as in claim 6, wherein the elevation means is a flotation device.
8. A space adaptable ultrasonic cleaning apparatus … as in claim 7, wherein the flotation device is attached to at least one of the ultrasonic transducers … .
9. A space adaptable ultrasonic cleaning apparatus … as in claim 6, wherein the elevation means is a magnetic field device.
10. A space adaptable ultrasonic cleaning apparatus … as in claim 9, wherein the magnetic field device includes a first magnet … attached to at least one of the ultrasonic transducers …, which is repelled by magnets …, thereby preventing said transducers from resting against the internal surface of the barrel … .
11. A space adaptable ultrasonic cleaning apparatus … as in any of the above claims, wherein the apparatus … includes an ultrasonic activity sensor adapted to indicate the amount of ultrasonic activity within the barrel … .
12. A method for cleaning the internal surface of a barrel …, of the type having a restricted opening …, characterised by the steps of:
inserting ultrasonic transducers … of a space adaptable ultrasonic cleaning apparatus through the restricted opening;
operating ultrasonic transducers … to induce ultrasonic cavitation thereby cleaning the internal surface of the barrel ...
13. A method for cleaning the internal surface of a barrel … as in claim 12, wherein the barrel … is filled with a cooling means … .
14. A method for cleaning the internal surface of a barrel … as in claim 12, wherein the barrel … is able to rotate on at least one axis.[27]
[27] Exhibit 1, T8/328-329.
The main difference between this and the other Soniclean application is that this application relates to the use of at least two transducers which “are attached and able to pivot in relation to each other”.[28] One of the illustrations contained in this application is depicted below[29]:
[28] Exhibit 1, T8/328.
[29] Exhibit 1, T8/330.
Notably, Figure 3 in this application also depicts the use of inflatable balloons attached to the end of the transducers in the vertical plane, although the function of the balloons in this illustration appears to be simply to assist in positioning/suspending the transducers. Similarly, Figure 4 depicts “a space adaptable ultrasonic cleaning apparatus including floatation devices …”[30], and Figure 5 also depicts the use of an “… elevation device in the form of a series of magnets.”[31]
[30] Exhibit 1, T8/323.
[31] Exhibit 1, T8/323.
Relationship between the relevant Soniclean applications and Mr Wake’s claimed invention
In his ‘Statutory Declaration’ signed on 29 April 2013, Mr Wake states:
The invention described in PCT/AU2004/000960 is the Applicant’s key inventive step (KIS) invention, and in particular is a PCT Application relating to an invention entitled ‘An apparatus and method of ultrasonic cleaning’.[32]
[32] Exhibit 2, Item 16, page 14 at [67].
Accordingly, it is our understanding that what Mr Wake claims to be his invention is described in Soniclean application PCT/AU2004/000960 (the second Soniclean application). As we have noted above, it is clear on the evidence that this application has lapsed, as has the other Soniclean application, and that these applications have also been published, with the result that the ideas and information contained in those applications have entered the public domain and are available to be used by any member of the public with impunity. In other words, the content of those applications is no longer, if it ever was, ‘patentable’.
Dr Angus has also directed our attention to an “international search report” carried out in the context of the second Soniclean international application, which appears to indicate that the officer who conducted the search concluded that the claimed invention could not be considered to involve an inventive step “when the document is combined with one or more other such documents, such combination being obvious to a person skilled in the art”.[33]
[33] Exhibit 1, T8/464.
However, regardless of whether either of the Soniclean patent applications contained any patentable inventive step, we understand that both applications lapsed and were subsequently published, the international publication date of PCT/AU2004/000960 apparently being 27 January 2005.[34]
[34] Exhibit 1, T8/448.
It is against this background therefore that we must assess the subject matter of the Cavitus application.
The Cavitus Application
Although it was also the subject of an earlier provisional application,[35] we understand that the invention the subject of the Cavitus application is best described in the “complete specification” filed on 22 February 2005.[36]
[35] Exhibit 1, T8/357.
[36] Exhibit 1, T4/40.
The “claims defining the invention” are set out in that application as follows:
1.An ultrasonic apparatus, including:
a sonotrode at least substantially surrounded by a membrane;
an ultrasonic generator connected to the sonotrode; and
an ultrasonic transducer connected to the ultrasonic generator and associated with the sonotrode;
such that when in use the sonotrode is placed within the inside of a container; the container containing a first liquid, the sonotrode being at least partially surrounded by a second liquid, the membrane being positioned between the first and second liquids so that the sonotrode is in direct contact with the second liquid and not the first liquid.
2.The ultrasonic apparatus of claim 1, wherein the membrane is distensible.
3.The ultrasonic apparatus of claim 2, wherein the membrane forms a bladder at least partially surrounding the sonotrode.
4.The ultrasonic apparatus of claim 2, further characterised in that the membrane has a reinforced region where the membrane comes into contact with opening of the container so as to provide protection to the membrane when inserted into the container.
5.The ultrasonic apparatus of claim 4, further characterized in that there is a conduit for transferring liquid into and out of the membrane.
6.The ultrasonic apparatus of claim 5, further characterized in that the conduit is located within the sonotrode.
7.The ultrasonic apparatus of claim 6, wherein the sonotrode is selected from the group consisting of a hollow and solid sonotrodes.
8.The ultrasonic apparatus of claim 7, wherein the sonotrode is further characterized in that the sides of the sonotrode are profiled to be parallel, concave, or convex.
9.The ultrasonic apparatus of claim 8, wherein the sonotrode includes an end that has an orientation of a plurality of orientations, the plurality of orientation including flat, normal or otherwise to a long axis, concave or convex normal or otherwise to the long axis, and of a symmetrical or asymmetrical reduced or constant section.
10.The ultrasonic apparatus of claim 9, wherein the ultrasonic transducer creates ultrasonic energy at frequencies within a range of 10kHz to 2000kHz.
11.The ultrasonic apparatus of claim 10, wherein the ultrasonic transducer creates ultrasonic energy at frequencies within a range of 10kHz to 40kHz.
12.The ultrasonic apparatus of claim 11, further comprising an ultrasonic activity sensor adapted to indicate an amount of ultrasonic activity within the container.
13. A method for ultrasonic disinfection, comprising:
placing a first liquid in the temperature range 25○C to 95○C and in particular in the temperature range 30○C and 60○C in contact with a portion of an inner surface of a container;
placing an ultrasonic sonotrode at least substantially surrounded by a membrane, inflating said membrane with a volume of a second liquid in the temperature range 5○C to 50○C and in particular in the temperature range 5○C to 25○C, to fill a void volume of the container;
having an ultrasonic generator connected to the sonotrode; and
an ultrasonic transducer connected to the ultrasonic generator;
such that when in use the sonotrode is placed within the inside of a container the container containing a first liquid, the sonotrode is thus in direct contact with the second liquid and not the first liquid; and
operating the ultrasonic sonotrode to effect cavitations in both the first liquid and the second liquid.
14.The method of claim 13, wherein operating the ultrasonic sonotrode comprises operating the ultrasonic sonotrode to induce ultrasonic cavitations within the heated fluid and disinfects the inner surface of the container.
15.The method of claim 14, further comprising rotating the container to place the heated fluid in contact with a next portion of the inner surface.
16. The method of claim 15, further comprising removing detritus from the container.
17. The method of claim 13, further comprising:
positioning the sonotrode at least substantially surrounded by a membrane, externally above an opening of the container;
passing a lower portion of said membrane through the opening and into the container containing a first liquid in the temperature range 25○C to 95○C and in particular in the temperature range 45○C and 60○C;
filling said membrane with a second liquid in the temperature range 5○C to 50○C and in particular in the temperature range 5○C to 25○C so that said membrane is in contact with the first liquid contained within said container; and
operating the ultrasonic sonotrode to induce cavitations in the first and second fluids.
18.A method to disinfect an interior of a container having residue in the surface layers of an interior surface including
introducing an ultrasonic sonotrode at least substantially surrounded by a membrane, to the interior of the container though (sic) an opening, the container containing a first liquid in the temperature range 25○C to 95○C and in particular in the temperature range 30○C and 60○C, and the sonotrode being at least partially surrounded by a second liquid in the temperature range of between 5○C to 50○C;
activating the sonotrode to induce cavitations in the liquids during rotation of the container to expose the surface layers of the inner surface and spoilage microorganisms on, in and beneath said layers to ultrasonic energy and heated fluid; and
removing detritus resulting from exposure of the residue to the ultrasonic energy.[37]
[37] Exhibit 1, T4/58-61.
The application also contains a number of illustrations, including the following[38]:
[38] Exhibit 1, T4/63.
On our analysis, whilst it necessarily makes reference to the use of sonotrodes to produce cavitations within a wine barrel and related matters, the claims made in the Cavitus application, in the context of what was already in the public domain, relate essentially to the following inventive concepts[39]:
(a)the use of a sheath or membrane surrounding the sonotrode; and
(b)the use of a two-phase environment comprised of liquids at differing temperatures, intended to enhance the cleaning effect produced by the use of a sonotrode.
[39] See Lee and Commissioner of Patents and Komipharm International Co., Ltd [2011] AATA 818.
WAS MR WAKE AN INVENTOR OF THE INVENTION THE SUBJECT OF THE CAVITUS APPLICATION?
It accordingly follows that in order for Mr Wake to establish an entitlement to have the Cavitus application go forward either in his name or in his name and that of Cavitus jointly, he must establish that he is an inventor of the invention the subject of the Cavitus application. However, the difficulty he faces in making good that proposition is that there is very little evidence before us to suggest that he played a role in the development of what we regard as the Cavitus invention.
The evidence before us establishes that the concepts which we regard as defining the Cavitus invention, that is the use of a sheath or membrane and the use of a two-phase environment involving liquids at different temperatures, were thought of by Mr McLoughlin. In his statutory declaration, Mr McLoughlin explained what led to his development of these ideas, as follows:
18.After Mr Wake left HPU Pty Ltd, I thought of the idea of transmitting ultrasound sequentially through two liquid phases, such that the physical properties of the first liquid – in contact with the active face of the sonotrode – favoured a reduction in attenuation of the transmitted ultrasonic energy compared to that experienced by said ultrasonic energy as it passed through the second liquid medium.
19.The problem that I sought to address was that ultrasonic energy decays from source to target in an inverse square relationship. Thus at half the distance to the target, the energy has decayed to a quarter strength.
20.My process leading to the conception of the sheath approach was that the magnitude of this attenuation is related to the following physical properties of the liquid through which the ultrasonic energy passes on its way from the source to the target:
a. Density: The higher the density the less the attenuation
b.Temperature: The lower the temperature the higher the density the less the attenuation
c.Vapour Pressure: The lower the temperature, the lower the VP the less the attenuation
d.Mean path: The lower the temperature, the higher the density, the lower the vapour pressure the longer the mean path/W/L
21.Secondly, ultrasonic energy transmits through solids according to the following relationships:
a.Density: the higher the density the less the attenuation of ultrasound passing through the solid
b.Distance travelled through the solid: The smaller the distance travelled the less the attenuation of ultrasound passing through the solid
22.None of this was ever discussed with Mr Wake as he had left HPU Pty Ltd by the time I had conceived the sheath idea. I did not make use of any material that Mr Wake describes as being his “kis” or his so-called algorithm as they were simply not a requirement in the conception of the sheath concept. The sheath concept is useful in many situations where a sonotrode might be employed to cause cavitations in a liquid. The cavitation phenomena has of course been known for decades.
23.I invented not only the expandable sheath to be the barrier separating the two liquid phases but also the associated equipment required to fill and empty the sheath with the first liquid. Mr Wake was not present at the time I had conceived this concept and nor was he to my knowledge aware of such issues concerning attenuation of signal strength as he did not have the appropriate scientific background.
24.This inventive process as described in 18 – 22 above, I did alone, at home, on or about the 25/10/2004 in response to the fact that the company formed by myself, Bill Wright, Darren Bates, Andrew Yap and Ned Strong to promote the commercial use of ultrasound, needed IP which was novel and inventive and exclusive to our new company, Cavitus Pty Ltd.[40]
[40] Exhibit 3, Item1, pages 3-4.
Mr McLoughlin essentially confirmed the contents of his statutory declaration in the course of his oral evidence, where he explained the origins of the Cavitus invention as follows:
… Mr McLoughlin, … I’m wondering if you could tell the tribunal and myself exactly what this sheath concept is all about?---Yes. The whole idea of the sheath is to improve the efficiency of propagation of ultrasound into a body of liquid. One of the problems you face is that there is an attenuation of energy from ultrasound going from source to perhaps a cleaning surface, and this is a function of distance and it’s actually an inverse square. So your energy drops off as the square of distance, which means that in a barrel-cleaning situation, for example, it would be very effective to improve the – sorry – to increase the amount of energy that finally arrives at the barrel internal wetted surface, and to do that you have got to increase the efficiency of energy transfer in some way or other. By using a sheath I conceptualised that we could put cold water within the sheath, certainly water at a lower temperature than was in the body of water that was wetting the interior surfaces of the container or barrel, and that that colder water would, because it’s denser, result in more energy being transmitted from the source, which is the sonotrode, to the edge of the sheath, which is halfway to the barrel. And in fact if you make your sheath big enough, which you can do, you can get to within 80 per cent of the distance from the edge of the sheath to the barrel, so you have only got another 20 per cent to go. And this means that the effectiveness of cleaning of that interior surface is advanced by the fact that you can get the energy of those soundwaves less degraded, to the point where you want to use them.[41]
[41] Transcript, 21 August 2013, page 116, lines 13-34.
In the course of his oral evidence, Mr McLoughlin also categorically and repeatedly refuted the idea that in developing the Cavitus invention, he drew upon ideas emanating from Mr Wake, or concepts they had previously developed together. He pointed out that the concepts described in the Soniclean applications were at the relevant time in the public domain and available to be used by anyone. Whilst he did not dispute having seen a document written by Mr Wake and which Mr Wake describes as an “algorithm”, he refuted the suggestion that this document played any role in his development of the Cavitus invention, stating “I don’t have it in front of me but it was merely a list of possible properties which could effect [sic] the propagation of ultrasound in an environment, but it’s just a list”.[42] When asked if it helped him at all, he replied “No way”.[43] Mr McLoughlin also acknowledged having assigned his intellectual property in the invention to Cavitus.[44]
[42] Transcript, 21 August 2013, page 116, lines 41-43.
[43] Transcript, 21 August 2013, page 116, line 45.
[44] Transcript, 21 August 2013, page 118, lines 30-31.
As we have alluded to above, the law requires that in order for a person to be regarded as a co-inventor, that person’s contribution must have made a material contribution to the invention.[45] However, on the evidence before us, we are not satisfied that Mr Wake made a material contribution to the Cavitus invention, properly understood. We accept, as Cavitus does, that Mr Wake was an inventor of the invention the subject of the Soniclean applications. He and Mr McLoughlin also discussed the application of HPU in the context of cleaning wine barrels and the possible means of using this technology in that context whilst they were both working at Soniclean in 2003, and they may have had some subsequent discussions before Mr Wake left HPUPL. We also accept that Mr Wake wrote a document which he has described as an “algorithm” and to which Mr McLoughlin had access. However, we accept Mr McLoughlin’s evidence that this document was of no assistance to him in developing the Cavitus invention in late 2004. We also note Mr Wake’s concessions in the course of his oral evidence that neither the “two-phase environment” nor the “membrane concept” were described or alluded to in his “algorithm” document.[46]
[45] University of Western Australia v Gray (2009) 179 FCR 346 at [248].
[46] Transcript, 20 August 2013, pages 57-58.
Mr Wake points to aspects of the Cavitus application which he says overlap with or are “plagiarised” from the Soniclean applications. However, as we have indicated above, because those applications had lapsed and been published before the Cavitus application was lodged, there is no barrier to Cavitus having used concepts and descriptions drawn from those applications in their application. That does not have the effect of making the invention the subject of the Cavitus application the same as that the subject of the Soniclean applications, and of course, if it was the same, it would not disclose any patentable invention.
In our view, the similarities are better explained on the basis that the Soniclean applications, in a sense, form the ‘jumping off point’ or background context to an explanation of the Cavitus invention, which, properly understood, is not the insertion of a sonotrode into a wine barrel, but the idea of surrounding the sonotrode with a bladder or membrane, introducing two liquids into the wine barrel, and heating them to different temperatures. As we have indicated, we are not satisfied on the material before us that Mr Wake made any material contribution to that invention.
Mr Wake further contends that:
… during the period January 2003 to September 16 2004 when the Applicant departed from the High Power Ultrasonics Pty Ltd work group the (alleged) actual inventors of the altered (‘sheath’) invention McLoughlin, Yap, Bates and Wright had enjoyed unfettered access to the Applicant’s research and intellectual property and related confidential documents for a period of approximately 21 months. After the Applicant’s departure from the work group in September 2004 the remaining individuals in the work group continued to have unfettered access to the following research and intellectual property and related confidential documents …[47]
[47] Exhibit 2, Item 14 at [64].
Mr Wake then goes on to refer to a number of documents, including his “algorithm”, the 2003 survey document he authored, access to a network of wine companies and access to the Soniclean applications before their publication in January 2005.
However, whilst we accept that Mr McLoughlin drew upon the subject matter of the Soniclean applications, we are not satisfied that any of the matters Mr Wake has referred to lead to a conclusion that Mr Wake made any material contribution to the Cavitus invention above and beyond his contribution to the Soniclean inventions. In other words, to the extent the Cavitus application is different from the Soniclean applications, we regard those differences as solely attributable to intellectual input from Mr McLoughlin and not in any way attributable to work Mr Wake had done toward development of the Soniclean inventions.
Further, Mr McLoughlin was privy to the Soniclean applications as an employee of Soniclean[48] who was also involved in the drafting of those applications.[49] The Soniclean applications were, of course, owned by Soniclean, and we see nothing untoward in Mr McLoughlin drawing upon the content of those applications, which, as we have indicated, had in any event lapsed and been published before the Cavitus application was filed. As Mr McLoughlin states in his statutory declaration:
25.Mr Wake mentions several times that he somehow provided unfettered access to various pieces of intellectual property. However I disagree with that assertion, because we were all aware that the intellectual property in question was in fact in provisional patent applications that were owned by Soniclean Pty Ltd. Of course we were all aware of the contents of those provisional patent applications as we were involved in the drafting of them at some stage, apart for Dr Bates as far as I recall.[50]
[48] Exhibit 1, T8/273 at [2].
[49] Exhibit 3, Item 1, page 5 at [25].
[50] Exhibit 3, Item 1, page 5.
Mr Wake also claims that the Cavitus invention was contributed to by a number of earlier inventions to which he contributed and which were developed in May and June 2004. He describes these respectively as “open tube and cone in bung hole”, “open tube and cone in bung hole and distensible bladder” and “large diameter open tube and cone in bung hole”.[51] In particular, insofar as the Cavitus application contains a claim relating to “positioning the sonotrode at least substantially surrounded by a membrane (sheath), externally above an opening of the container”,[52] Mr Wake contends that:
… McLoughlin sourced the novelty as described in Claim 17 from the novelty embodied within principles of novelty and the related inventive path jointly developed by the Applicant and McLoughlin in 2004 …[53]
[51] Exhibit 2, Item 16, pages 10-11 at [53].
[52] Claim 17 in the Cavitus application.
[53] Exhibit 2, Item 16, page 12 at [59].
However, with respect to the “open tube and cone in bunghole” device, Mr McLoughlin says he first saw this in the context of this matter, a number of years after he invented the ‘sheath’ invention.[54] Similarly, with respect to what Mr Wake describes as his “open tube and cone in bung hole and distensible bladder” invention, again Mr McLoughlin states that he had not seen the diagram Mr Wake has supplied in relation to this “invention” prior to these proceedings. He further states that the “invention” is premised on a “technical impossibility” because it is based on “harvesting” cavitation bubbles, which Mr McLoughlin states cannot be done due to “the random nature of their occurrence and their very short life span”.[55] He further states “I played no role in this concept that Mr Wake has drawn”.[56]
[54] Exhibit 3, Item 1, pages 5-6 at [32].
[55] Exhibit 3, Item 1, page 7 at [34].
[56] Exhibit 3, Item 1, page 7 at [34].
Mr McLoughlin also categorically denies any involvement in Mr Wake’s “large diameter open tube and cone in bung hole” invention, stating:
35.I categorically deny any involvement in the development of those “inventions” 5-7, with Mr Wake. I was not conducting any R&D in the period post Soniclean to 4/11/2004 – that is during the period that HPU Pty Ltd was a functioning entity, and to my recollection there was certainly no collaborative effort between Wake and myself, or indeed Bates, Yap, Wright. We had no equipment, or funds to conduct research and development. The concept diagrams authored by Mr Wake are not part of my doing, they do not make any technical sense, and I would therefore not have been an advocate of such a device to clean the interior of a barrel.
36.Mr Wake and I did not collaborate on any such invention making path after our involvement with Soniclean Pty Ltd.[57]
[57] Exhibit 3, Item,1, page 7 at [34].
Mr Wake further argues that an analysis of Cavitus’s application shows that the invention the subject of that application is simply a ‘disguised’ version of his invention.[58] However, as we have indicated above, the fact that Cavitus’s application in a sense ‘builds on’ the inventive concepts disclosed in the Soniclean applications does not mean the application does not also relate to different and separate inventive concepts which are potentially ‘novel’ when compared with the Soniclean applications.
[58] Exhibit 2, Item 16, page 39 at [109]-[113].
Mr Wake disputes Mr McLoughlin’s evidence that “No R&D was carried out during my time at HPU Pty Ltd with Mr Wake”[59], and has directed our attention to a number of emails generated during the life of HPUPL. He also contends that HPUPL:
provided an intensive research and development based work environment in 2004 for McLoughlin to develop the ‘sheath’ concept. The Applicant contends McLoughlin would not have been able to develop the ‘sheath’ invention without sustained exposure to the HPU P/L work environment in 2004 including McLoughlin’s unfettered access to the Applicant’s 2003 intellectual property which allowed McLoughlin to contribute to the development of an inventive path and principles of novelty jointly with the Applicant in 2004. McLoughlin in his Statutory Declaration(s) denies any involvement with the Applicant in the 2004 intellectual property development program in 2004. As such HPU P/L has made a material contribution to the development of the ‘sheath’ invention by providing principles of novelty and a work environment conducive to the development of intellectual property by McLoughlin and others in 2004. McLoughlin was literally surrounded by ‘R&D projects’ in 2004 but emphatically denies this was the case in his various Statutory Declarations. He simply denies in the face of evidence to the contrary presented in this ‘Outline of Submissions’ that he was ever involved in the many research and development projects sponsored and owned by HPU P/L in 2004. ….[60]
[59] Exhibit 3, Item 1, page 3 at [17].
[60] Exhibit 2, Item 17, page 19.
He further contends that he and Mr McLoughlin were “jointly involved in intellectual property development which ultimately led to the ‘sheath’ concept”.[61] However, examination of the evidence on which Mr Wakes relies[62] reveals only that:
[61] Exhibit 2, Item 17, page 20.
[62] See for example Exhibit 2, Schedule Items 9-19 and 30.
·On 10 February 2004, Mr Yap wrote an email in which he said “[t]he team at High Power Ultrasonics P/L are continuing trials on the use the [sic] HPU for barrel cleaning and remediation”[63];
[63] Exhibit 2, Schedule Item 19.
·On 27 February 2004, Mr McLoughlin sent an email to a person called Lloyd Simons in which he relevantly said:
…
A copy of the Yalumba contract will be coming your way today and Graham Gourley tells me that the MOU is with the CEO for signing off today or early next week.
…
Lastly, for the barrel cleaning, could you please send the long radial sonotrode, spanners and mechanical advantage torque pipes with the HPU unit?
… [64]
·On 11 May 2004, Mr McLoughlin sent an email to Mr Wake and others proposing a particular method of inserting sonotrodes into wine barrels[65];
·Mr Yap appears to have authored a document entitled “High Power Ultrasonics Pty Ltd – Draft Agreement Terms to Carry out Barrel Cleaning and Disinfection Trials” dated 10 August 2004[66];
·On 20 August 2004, Mr McLoughlin sent an email to Mr Yap, with a copy to Mr Wake, in which he indicated a need to physically examine a number of wine barrels with respect to ascertaining various characteristics of tartrate deposits in the barrels and referred to the possibility of a “trial” in the future, and the advantages of doing this in the Barossa[67];
·Between 25 and 27 August 2004, emails were sent between Mr Ned Strong, Mr Wright, Mr McLoughlin, Mr Wake, Mr Yap and Dr Bates in which there was discussion of running a “proof of concept” trial at a winery,[68] and the need for preparatory work beforehand; and
·On 14 September 2004, Mr McLoughlin sent emails to Mr Wake in which he suggested it was important to “prove in house” that the ultrasonic cleaning and disinfection process “works”, “before we involve other parties”[69] and also referred to paying “Adelaide Uni people” to have a “quick and dirty look at HPU issues”[70].
[64] Exhibit 2, Schedule Item 30.
[65] Exhibit 2, Schedule Item 16.
[66] Exhibit 2, Schedule Item 14.
[67] Exhibit 2, Schedule Item 12.
[68] Exhibit 2, Schedule Item 13.
[69] Exhibit 2, Schedule Item 10.
[70] Exhibit 2, Schedule Item 11.
Having had regard to this and the other evidence before us, we accept that HPUPL considered undertaking “proof of concept work” in relation to the application of HPU technology to cleaning wine barrels, including conducting a trial or trials. However, we are not satisfied that those activities, or any interaction between Mr Wake and Mr McLoughlin prior to Mr Wake leaving HPUPL in September 2004, made any meaningful contribution to Mr McLoughlin’s subsequent conception of the ‘sheath’ invention. Whilst that invention built upon the Soniclean inventions in which Mr Wake was involved, we are satisfied that it was not dependent upon or contributed to by any intellectual input from Mr Wake, apart from his input into the Soniclean inventions.
To the extent there are conflicts and inconsistencies between the evidence of Mr Wake and Mr McLoughlin in relation to these issues, we prefer the evidence of Mr McLoughlin. Whilst we accept that the evidence of both men was honestly given, we are satisfied that Mr McLoughlin had a much better understanding of the technical aspects of HPU, and also that his interpretation of relevant events and communications was more accurate than that of Mr Wake, partly because of his superior technical understanding and partly because of his relative emotional detachment from the issues in dispute.
While there were some minor factual inaccuracies in the evidence of Mr McLoughlin, we have concluded that these were not such as to impugn the reliability of his evidence overall. We also note that Mr McLoughlin made appropriate concessions in the course of his oral evidence, for example conceding that some of his activities at HPUPL could have been regarded as “development” in the “very loosest manner”.[71]
[71] Transcript, 21 August 2013, page 126, line 19.
We are also bolstered in our conclusions by the fact that, as Dr Angus pointed out at the hearing, in the context of examination of Cavitus’s application, a patent examiner has reviewed the second Soniclean PCT application and found it to be of no particular relevance to the claims in the Cavitus application.[72] Although we would have reached the same conclusions in any event, we note this is consistent with our conclusion that the inventive concepts the subject of the Cavitus application are different from those the subject of the Soniclean applications.
[72] Exhibit 1, T8/562.
For completeness, we note that Mr Wake also relied heavily in his submissions on the fact that the Cavitus application contained reference to a possible embodiment of the invention consisting of a sonotrode “encased within a non-expandable, porous sheath”.[73] Mr Wake contended that this embodiment was not consistent with the inventive concepts disclosed elsewhere in Cavitus’s application, and this somehow proved that the invention the subject of the Cavitus application was simply a “disguised” version of his invention. However, on our analysis, the presence of this potential embodiment in Cavitus’s application does not assist Mr Wake. As Mr McLoughlin pointed out in his oral evidence, patent applications are often drafted defensively so as to protect against possible variations. In our view, the presence of this embodiment in Cavitus’s complete specification does not alter our conclusion that the inventive concepts claimed in the Cavitus application are those we have described above, and Mr Wake did not contribute to those inventive concepts.
[73] Exhibit 1, T4/47.
conclusion
For the reasons given above, we have concluded that, properly construed, Cavitus’s application does not relate to the insertion of a sonotrode into a wine barrel, or any of the related ideas Mr Wake contributed to or was involved in. The Cavitus application seeks to patent the inventive concepts involved in adding to and changing the invention the subject of the Soniclean applications by placing a sheath or bladder around the sonotrode, so as to allow for a “two-phase” environment involving liquids at different temperatures, thus enhancing the cleaning/disinfection process. In other words, the invention Cavitus seeks to patent is a modification of the original “invention” in which Mr Wake was involved.
Having concluded that Cavitus’s application should be so regarded, we have further concluded that Mr Wake made no material contribution to the invention the subject of that application, either directly or as a result of information or ideas he provided to Mr McLoughlin.
As we are satisfied that Cavitus is an appropriate applicant in respect of the application, we have therefore decided to affirm the delegate’s decision that the application proceed in the name of Cavitus alone.
decision
The decision under review is affirmed.
I certify that the preceding 71 (seventy-one) paragraphs are a true copy of the reasons for the decision herein of Deputy President K Bean and Dr G Hughes, Member ... [Sgd] ...
Associate
Dated 30 January 2014
Dates of hearing 20, 21 and 22 August 2013 Applicant In person Respondent Excused from attendance Other Party Dr D Angus
Collison & Co Patent Attorneys
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