David Leigh Wake v Cavitus Pty Ltd
[2010] APO 11
•29 July 2010
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2005200778 in the name of CAVITUS PTY LTD
Title: An Apparatus and Method of Ultrasonic Cleaning and Disinfection
Action: Requests under sections 32 and 36 of the Patents Act by DAVID LEIGH WAKE
Decision: Issued 29 July 2010
Abstract
It was found that the requestor did not devise the invention as described and claimed, either alone or jointly.
Although the evidence established that the idea of inserting a single sonotrode through the standard bung hole of an oak wine barrel to effect ultrasonic cleaning and disinfection of the barrel most likely originated with the requestor, this idea was not integral to what the evidence referred to as the “sheath concept” which underpinned the subject invention.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2005200778 in the name of Cavitus Pty Ltd, and requests under sections 32 and 36 of the Patents Act by David Leigh Wake
BACKGROUND
Patent application 2005200778 (the present application) was filed on 22 February 2005 by Cavitus Pty Ltd (Cavitus) claiming priority from provisional application 2005900531 filed on 8 February 2005. The present application names Darren M Bates, Andrew Sin Ju Yap, Arthur R McLoughlin and William A Wright as co-inventors.
On 15 April 2009, requests under sections 32 and 36 were filed by David Leigh Wake (Wake) claiming sole ownership of the invention disclosed in the present application. Wake concurrently filed a notice of opposition to innovation patent 2008100881 in the name of Soniclean Pty Ltd (the Soniclean opposition). The only ground pursued by Wake in the Soniclean opposition again relates to ownership. On 19 October 2009, all parties were advised that in view of these circumstances “the Commissioner has decided that she will have regard to the evidence from both matters when deciding each matter” and that “each party be given an opportunity to consider the evidence of the other matter to decide whether they will supply further evidence in their matter”.
After an exchange of evidence in support and evidence in response, the present dispute was heard in Canberra on 29 April 2010. Cavitus were represented by Dr Donald Angus of Collison & Co. Wake declined to appear at the hearing, but filed written submissions as did Dr Angus. Mr Arthur McLoughlin (apparently known as “Richard”), one of the named inventors, and Mr Julian Smith, the Managing Director of Soniclean, were also present as observers.
THE SPECIFICATION
The specification filed in respect of the present application indicates that the invention relates generally to ultrasonics and, more specifically, to the cleaning of containers and in particular wine barrels.
The specification explains that the practice of recycling wine barrels by way of cleaning is used extensively within the wine industry. However, bacterial and yeast contaminations resulting from incomplete cleaning costs the wine industry vast amounts each year in spoilt wine. Furthermore, the wine maker will not know whether a wine has been spoilt until it has spent some time in the barrel.
In order to overcome this problem, wine barrels are either partially or totally dismantled before shaving their inner surface to remove residues. This is not time effective since the barrel must be moved to a location where it can be shaved. Recently, high pressure water or steam has been used as an alternative means of decontaminating a barrel. However, this presents other problems especially in drier areas where wine makers have limited water available.
The invention seeks to overcome, or at least substantially ameliorate, these shortcomings.
The specification broadly summarises one aspect of the invention as residing in an ultrasonic apparatus including a sonotrode which is at least substantially surrounded by a membrane, an ultrasonic generator connected to the sonotrode, and an ultrasonic transducer connected to the ultrasonic generator. In use, the sonotrode is placed within a container which contains a first liquid. The membrane is positioned between the first liquid and a second liquid which at least partially surrounds the sonotrode so that the sonotrode is in direct contact with the second liquid but not the first liquid.
The first and second liquids are preferably water, while the membrane preferably forms a bladder which expands when filled with the second liquid.
In another aspect, the invention is said to reside in a method for ultrasonic disinfection. The method comprises the steps of placing a first liquid in the temperature range 25oC to 95oC in contact with a portion of an inner surface of a container, placing an ultrasonic sonotrode at least substantially surrounded by a membrane within the container, and filling the membrane with a volume of a second liquid in the temperature range 5oC to 50oC to fill a void volume of the container. An ultrasonic generator is connected to the sonotrode and an ultrasonic transducer is connected to the generator. When in use, the sonotrode is in direct contact with the second liquid but not the first liquid, and is operated to effect cavitations in the first and second liquids to disinfect the inner surface of the container.
According to the specification, ultrasonic energy created in the second liquid is transmitted through the membrane into the first liquid in the container. It is found that the presence of the membrane serves to, by way of partial internal reflection of the ultrasonic waves generated by the sonotrode, enhance the resultant cleaning and disinfection effects arising from the ultrasonic energy transmitted into the first liquid. Specifically, the invention relies on the action of microscopic cavities collapsing and releasing shock waves. The microscopic cavities are formed by sending sound at high frequencies into the first liquid which is in the temperature range 25oC to 95oC and in contact with the inner surface of the container. The shock waves produced by the collapse of the cavities in the presence of a body of heated liquid disrupt the cell walls of the spoilage microorganisms thus killing the organisms.
When used to clean and disinfect a wine barrel, the sonotrode is introduced into the barrel by insertion through the conventional bung hole or a larger opening formed for example by removing an end of the barrel.
The specification ends with eighteen claims of which the independent claims read 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 sonotrone is in direct contact with the second liquid and not the first liquid.13. A method for ultrasonic disinfection, comprising:
placing a first liquid in the temperature range 25oC to 95oC and in particular in the temperature range 30oC and 60oC [sic] 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 5oC to 50oC and in particular in the temperature range 5oC to 25oC, 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.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 through an opening, the container containing a first liquid in the temperature range 25oC to 95oC and in particular in the temperature range 30oC and 60oC [sic], and the sonotrode being at least partially surrounded by a second liquid in the temperature range of between 5oC to 50oC;
activating the sonotrode to induce cavitations in the liquids during rotation of the container to expose the surface layers of the inner surface and soilage 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.”THE EVIDENCE
Evidence in support
Wake
The evidence in support filed by Wake consists of a statutory declaration made by him on 25 June 2009 with attachments A to H, G1, H1, I to Z, and AA to SS.
Wake states that in January 2003 he attended a high-power ultrasonics (HPU) seminar in Adelaide at the invitation of Soniclean Pty Ltd (Soniclean) who wished to explore opportunities to diversify their business. The seminar was presented by Darren M Bates (Bates) who is one of the inventors named by the present application.
Wake says he was aware from his previous involvement in the wine industry that there was no reliable method for cleaning and disinfecting oak wine barrels used in wine maturation. He consequently decided to investigate the potential for applying HPU in the wine industry as this could represent a business opportunity for Soniclean. In February 2003, Wake began “building a knowledge base in relation to HPU” with the assistance of Bates. He claims to have investigated the potential for HPU to clean porous surfaces, such as wood, and to kill microbial contamination both on the surface of the wood and embedded in the wood. These investigations included laboratory studies conducted by a microbiologist, Andrew Yap (Yap), which demonstrated that ultrasound successfully eradicated the wine spoilage yeast Brettanomyces (attachment K). Wake proceeded with his investigations in the following months with the approval of the general manager of Soniclean, William A Wright (Wright). Wright is another inventor named by the present application. Encouraged by Wake’s progress, Wright proposed the establishment of a “think tank” comprising various consultants with a particular interest in the potential commercial application of HPU. Wright and Wake subsequently recruited Bates and the remaining named inventors, Yap and Arthur R McLoughlin (McLoughlin). Wake, Wright, Bates, Yap and McLoughlin are hereafter collectively referred to as “the Consultants”.
Wake contends that he completed the development of the invention, along with other “related inventions”, in June 2003 without any creative input from another person. He did, however, allegedly disclose his inventions to the other Consultants “in early 2003” after each of them had executed a confidentiality agreement. Wake also assisted Dr Drazen Lesicar (Lesicar), a patent attorney with Lesicar Perrin, to prepare and file the following provisional applications which he says relate to his inventions:
- provisional application 2003903659 filed on 16 July 2003 in the name of Soniclean (the first Soniclean provisional application) from which international application PCT/AU2004/000960 (the first Soniclean international application) derived priority;
- provisional application 2003903660 filed on 16 July 2003 in the name of Soniclean (the second Soniclean provisional application) from which international application PCT/AU2004/000959 (the second Soniclean international application) derived priority;
- provisional application 2003905800 filed on 22 October 2003 in the name of Vinsonics Pty Ltd (Vinsonics) (the first Vinsonics provisional application);
- provisional application 2003905801 filed on 22 October 2003 in the name of Vinsonics (the second Vinsonics provisional application); and
- provisional application 2003905802 filed on 22 October 2003 in the name of Vinsonics (the third Vinsonics provisional application).
On 22 October 2003, Wright wrote to Wake in the following terms (attachment S):
“I refer to our recent discussions concerning the formation of Vinsonics and the ownership of IP in relation to our various wine initiatives.
As agreed by the Board of Directors, the following provisional patent applications that were taken out by Soniclean on behalf of Vinsonics are hereby assigned to [Vinsonics].
·[the first Soniclean provisional application]
·[the second Soniclean provisional application]
The consideration for the assignment of this intellectual property is the payment of one dollar ($1) which shall be payable on or before 30th November 2003.
We understand that you will be entering into confidentiality agreements with various wine companies and others and it will be important that these agreements cover the above mentioned IP as well as other provisional patents lodged by [Vinsonics].”
As explained by Wake:
“Vinsonics is a company which was set up on behalf of Soniclean by its then general manager, Wright, in October 2003. Essentially, Vinsonics was intended to be a form of joint venture between Soniclean and me. This intention was never fulfilled, which led to the departure of [the Consultants] from Soniclean; to the formation of a company named High Power Ultrasonics Pty Ltd [HPUPL]; and, ultimately, to the formation of Cavitus. Yap, McLoughlin, Bates, Wright … are involved at every stage. They seek, through ownership of the patent for my invention, to profit from intellectual property created solely by me.”
Cavitus
The evidence in support filed by Cavitus consists of:
- A statutory declaration made by Wright on 25 June 2009 with exhibits WW01 to WW04, WW04.1 to WW04.4, WW05, WW06, WW06.1, WW06.2, WW07 and WW08; and
- A statutory declaration made by McLoughlin on 25 June 2009 with exhibits RM01 to RM08.
Wright states that he has been the Director of Finance and Product Management at Cavitus since its formation on 5 January 2005. He confirms his previous employment, firstly, with Soniclean, and then with HPUPL.
According to Wright, Wake originally commenced service with Soniclean in early 2003 as an unpaid consultant. Soniclean considered Wake’s skills in marketing and sales would supplement the technological and product development skills of McLoughlin. Wright recalls that Wake had proposed the possible use of low-power ultrasonics to clean the interior of a wine barrel which involved creating an opening in the side of the wine barrel as the only other opening (the bung hole) was too small to accommodate the ultrasonic equipment available at the time.
Wright was present at a Soniclean meeting in late March 2003 where Wake presented a prototype of his approach to a cooperage firm, Heinrich Cooperage Pty Ltd (Heinrich), for comment. Heinrich advised Wake that it was highly unlikely that winemakers would accept the idea of compromising the integrity of a barrel, and that cleaning through the existing bung hole was therefore the only way to proceed.
On 9 April 2003, Wright attended a meeting with Bates who was a specialist in HPU. Bates advised that the only way to clean and disinfect through the bung hole was by means of a sonotrode to deliver HPU into a water-filled barrel. Soniclean then decided to follow this particular line of research and development. Soniclean subsequently filed their first and second provisional applications, and their first and second international applications. No inventors were named by the provisional applications, but Wake, Bates and Yap were named amongst others as joint inventors by the international applications.
On learning that Soniclean were no longer interested in commercialising their wine barrel cleaning technology, Wright, Wake, Bates, Yap and McLoughlin decided to form HPUPL as a separate entity. Wright says that Wake was involved with HPUPL in a marketing capacity and provided no input into technical development. On 20 April 2004, Wake sent Wright an email containing his amendments to a proposed HPUPL Board resolution on the matter of inventorship (exhibit WW04.2). The proposed resolution relevantly reads as follows:
“At a meeting on 16th April, 2004, the Board of [HPUPL] unanimously agreed that [Wake] should lodge provisional patents for various ultrasonic barrel cleaning technologies (‘The Technologies’) on behalf of the Company, on or before Wednesday 21 April, 2004. The four provisional patents listed below by title and described by abstract, have been progressively developed by the five Board members of [HPUPL] during 2003 and 2004 to date. These board members are: [Wake], [Wright], [Mcloughlin], [Yap] and [Bates].[Wake] is authorised by the Board of [HPUPL] to lodge these applications listing only himself as the founding inventor of the four ultrasonic barrel cleaning technologies.
[Wake] has agreed that all of the above mentioned individuals should be listed as inventors of each of the four ultrasonic barrel cleaning technologies on the IP Australia patents register, on or before December 31st, 2004 or such earlier date conditional upon approval of an R&D Start Grant Application currently being prepared by [HPUPL], and which relates to the commercialisation of these technologies.”
In accordance with the above resolution, Wake filed provisional applications 2004902353, 2004902354, 2004902355 and 2004902394 (the HPUPL provisional applications) on 5 May 2004 which named Wake, Wright, Yap, Bates and McLoughlin as joint inventors (exhibits WW04.3, WW04.4 and WW05).
On 5 August 2004, the Board of HPUPL (which included Wake) resolved that “all the inventors listed assign their interests in all the patent applications” to HPUPL. As shown by exhibit WW06.2, these applications included the first and second Soniclean provisional applications, the first, second and third Vinsonics provisional applications, and the HPUPL provisional applications. Wright claims that Wake later refused to sign the assignment deed which eventually led to his resignation as a Director of HPUPL in December 2004.
Cavitus was as a result formed in January 2005 between Wright, McLoughlin, Yap, Bates and two other individuals with the intention of focusing on the application of HPU in the food and beverage industry. On 8 February 2005, Cavitus filed provisional application 2005900531 from which the present application derives priority. International application PCT/AU2006/000150 filed by Cavitus on 8 February 2006 (and published as WO 2006/084038 on 17 August 2006) also claims priority from this provisional application.
Wright alleges that Wake has never disclosed to him “any invention during the period of 15 January 2003 and 31 December 2003 or at any time thereafter” that related to the use of a sheath or membrane in combination with HPU as claimed in the present application, and nor did he at any time sign a confidentiality agreement with Wake “on any matters to do with any concepts that he may have had, be they related to the field of ultrasonics or otherwise”.
McLoughlin is a qualified research chemist who says he has acquired significant experience in the design and manufacture of ultrasonic cleaning equipment for hospital, industrial and defence applications. He is currently the Director of Engineering and Product Support at Cavitus.
McLoughlin corroborates Wright’s evidence that the proposal put forward by Wake to Soniclean for cleaning wine barrels involved making a hole in the side of the barrel to enable the then available ultrasonic equipment to be introduced into the barrel (exhibit RM01). McLoughlin continues as follows:
“[Wake] and I had several discussions from the time that he joined Soniclean on how a hole or access point could be integrated into a wine barrel. The aim was to be able to introduce fabricated ultrasonic energy emission equipment, designed by Soniclean, into the barrel. Attached and marked as Exhibit RM06 is a patent application raised by Soniclean [viz. the second Soniclean international application], which describes the design of this equipment. The bung hole was too small and so [Wake] had decided to enlarge the hole to facilitate insertion of the ultrasonic emitter assembly, as a possible industry acceptable solution to the problem.”
On 2 April 2003, Wake forwarded McLoughlin details of correspondence between himself and the Sales Manager at Heinrich Cooperage (exhibit RM03). McLoughlin says this correspondence contains advice from Wake “that it was now possible to use ultrasonic cleaning through the existing bung hole in a wine barrel”, and expresses the belief that this had come about from discussions with Bates who had drawn attention to the availability of a sonotrone from a commercial supplier of ultrasonic equipment in Germany, Hielscher Ultrasonics GmbH (Hielscher), which could be inserted into a conventional bung hole.
McLoughlin states that after leaving Soniclean and HPUPL, he set out to create new intellectual property for Cavitus. He claims that around 25 October 2004:
“I had thought of the idea of using ultrasonics in a dual phase environment, that is where the sonotrode was in a first liquid phase that was favourable to allowing development of sound waves and the evolution of cavitations, and a second liquid phase that was different to the first and would be in intimate contact with the interior of the wall of the container to be cleaned. This second liquid phase would be separated from the first liquid phase by means of a sheath or membrane. This is referred to as the “sheath” concept.”
Cavitus concluded that the sheath concept was new over what was previously known which ultimately led to the filing of the present application. McLoughlin contends that Wake had never disclosed “any theory or concept employing anything related to the sheath concept” to him, and points out that none of the patent applications filed during the time that Wake was associated with Soniclean disclosed the sheath concept.
Evidence in response
Wake
The evidence in response filed by Wake consists of:
- A second statutory declaration made by Wake on 22 April 2009 with attachments DW1 to DW4, DW4A, DW5 to DW10, DW10A, DW11 to DW22, and DW22A;
- A statutory declaration made by Andrew Whittaker (Whittaker) on 28 August 2009 with exhibits AW1 and AW2;
- A statutory declaration made by Mark Lomman (Lomman) on 27 August 2009 with attachments A to C; and
- A statutory declaration made by Greg Macpherson on 26 August 2009 with attachments A to F.
Lomman states that in 2003 he was engaged by Lesicar as a technical illustrator to assist Wake with the production of illustrations for several patent applications that involved the use of HPU technology. Attachments B and C are examples of the illustrations prepared by Lomman which I observe correspond to Figure 1 and Figures 3 and 4, respectively, of the second Vinsonics provisional application and the first Soniclean provisional application. Lomman says these illustrations represent the “oak surfaces cleaning appliance concept” developed by Wake.
The evidence from Whittaker and Macpherson has no bearing on the question of inventorship.
Wake is highly critical of the evidence in support filed by Cavitus. He contends that McLoughlin and Wright are both mistaken as to the nature of his initial concept which was to create a removable panel incorporating the bung hole in the top of a wine barrel to facilitate the insertion of a sonotrode. This was necessitated by the fact that the diameter of the smallest sonotrode available at the time was larger than the standard diameter of a bung hole. Wake’s initial concept was effectively rebuked by Heinrich following which he investigated the use of a plurality of mini-sontrodes which were each small enough to be inserted into a conventional bung hole. This alternative concept formed the subject of the second Soniclean provisional application. Wake redirected his attention to the employment of a single sonotrode on learning from Bates that a suitably sized sonotrode could be sourced from Hielscher. This is said by Wake to constitute the essence of his invention and is the subject of the first Soniclean provisional application.
Wake appears to have at least initially confused the sheath concept with McLoughlin’s proposal in September 2003 to introduce a small bladder attached to a pulsating device into a water-filled wine barrel as a means of generating turbulence in the water to improve the action of the sonotrode (attachment DW6). As asserted by Wake:
“[t]his is exactly the same concept as that described in … [the present application]. A ‘small bladder’ is the same thing as a ‘sheath’.”
Most notably, however, Wake freely acknowledges that the sheath concept (however interpreted) originated with McLoughlin. Nevertheless, he is dismissive of the significance of this concept:
“The inclusion of the ‘sheath’ concept in the [present application] constitutes the sole difference between the invention disclosed therein and my invention. The Cavitus ‘invention’ is, in fact, my invention shrouded in an unnecessary, impracticable and useless ‘sheath’, with an unnecessary, impracticable and useless tube [to convey water into and out of the sheath] attached. Once the ‘sheath’ and tube are removed, only my invention remains.”
Wake additionally argues that it is clear from attachments DW13 to DW19 that Cavitus does not employ any form of sheath or tube in the HPU barrel cleaning devices which they advertise and market and that, as a consequence, there is no difference between the “as built” Cavitus devices and his invention.
Cavitus
The evidence in response filed by Cavitus consists of:
- A second statutory declaration made by McLoughlin on 27 August 2009;
- A statutory declaration made by Bates on 26 June 2009; and
- A statutory declaration made by Yap on 3 August 2009.
Bates is the Director of Technology and Chief Technical Officer at Cavitus. He has a PhD in HPU as applied to industrial chemical processing, as well as approximately 20 years of relevant experience. He deposes that to his knowledge Wake has no specific understanding or background in relation to ultrasonics or the problems faced with its application in commercial or industrial settings. He then states:
“… Wake had never disclosed to me either during the period of 4 March 2003 to 31 December 2003 or any other time, that I can recall, any idea of the use of a sheath to surround a sonotrode as disclosed in [the present application], nor was I aware of any motivation that [Wake] might have for doing so as he did not have the appropriate level of understanding of the chemical and physical process of ultrasound.”
Yap is the Director of Oenology and Industry Marketing at Cavitus. He acknowledges that the sheath concept was conceived by McLoughlin “with support from [Bates] and myself”. Yap and Bates both deny that they signed a confidentiality agreement with Wake in relation to the sheath concept.
I will return to the evidence where appropriate later in my decision. Further, the facts which have emerged from the evidence are inextricably linked to those arising from the evidence filed in the Soniclean opposition. Consequently, I also intend to have regard to the latter body of evidence when deciding the present dispute.
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 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.
Wake has claimed that he is entitled to the grant of a patent on the present application to the exclusion of Cavitus, 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(1) contemplates the grant of a patent only to a person who falls into one of the four specified categories. As stated in Vrubel v Upham [1997] APO 51, these categories 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.
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 Conor Medsystems, Inc [2006] FCAFC 154 at [75]).
The authorities
Inventorship
The law on inventorship was most recently discussed in University of Western Australia v Gray [2009] FCAFC 116 (UWA) and Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9. The Full Court in Polwood considered a number of authorities in other jurisdictions 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).
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”. A concept can be complete although experimentation may continue. 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 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. Thus, for example, 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.
There has also been some consideration of the principles of joint inventorship in Australia. In RowWeeder Pty Ltd v Nielsen 39 IPR 400, 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, 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 preferred working embodiment of it.
The Full Court in UWA did not depart from the above principles, and in fact reaffirmed (at [248]) that the law in Australia in respect to inventorship:
“remains that a putative inventor or putative joint inventor must have made a material contribution to the invention. What [Polwood] illustrates is that the reduction to practice of an inventive concept may or may not require an invention or inventive step. If not, reduction to practice does not demonstrate inventorship.”
Ownership of employee inventions
The Act does not deal expressly with the circumstances in which an employer of an inventor is entitled to the grant of a patent. Rather, the question of entitlement is to be determined on the basis of common law and equitable principles which show that in the absence of any express contractual obligation, an invention made by an employee is not inevitably the property of the employer. What is relevant is whether the employment relationship suggests that the invention concerned was made in the course of employment or, in other words, whether it is something it was the employee’s job to invent.
The law governing employer entitlement to employee inventions was conveniently summarised in Victoria University of Technology v Wilson [2004] VSC 33 at 104:
“The law is well settled upon the position of an officer or employee who makes an invention affecting the business of his or her employer. It is an implied term of employment that any invention or discovery made in the course of the employment of the employee in doing that which he is engaged and instructed to do during the time of his employment, and during working hours, and using the materials of his employers, is the property of the employer and not of the employee. Having made a discovery or invention in the course of such work, the employee becomes a trustee for the employer of that invention or discovery, and he is therefore as a trustee bound to give the benefit of any such discovery or invention to his employer. But the mere existence of the employer/employee relationship will not give the employer ownership of inventions made by the employee during the term of the relationship. And that is so even if the invention is germane to and useful for the employer’s business, and even though the employee may have made use of the employer’s time and resources in bringing the invention to completion. Certainly, all the circumstances must be considered in each case, but unless the contract of employment expressly so provides, or the invention is the product of work which the employee was paid to perform, it is unlikely that any invention made by the employee will be held to belong to the employer.”
Collaborations
The manner in which entitlement to an invention may derive from a collaborative arrangement was explained in this way in Vrubel:
“… 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.”
This approach is similar in concept to that adopted in Re Applications byCSIRO and Gilbert 31 IPR 67.
ISSUES FOR DETERMINATION
The evidence filed in both the present dispute and the Soniclean opposition leaves me with the sense that the question of inventorship remained largely unresolved by the key personnel of Soniclean, Vinsonics and HPUPL. This is perhaps not surprising given the connection between these bodies and the multitude of directly related patent applications variously filed by them. Nevertheless, it must be stressed that for present purposes I need only determine whether Wake can legitimately claim inventorship in respect of the present application.
Wake alleges that he alone devised the invention and is therefore solely entitled to the grant of a patent. There is no contention of joint inventorship by Wake. Nevertheless, it is evident from Stack v Davies Shepard [2001] FCA 501 that even if I was not inclined to a finding of sole inventorship in his favour, the question of whether Wake is a joint inventor would then fall for consideration. This is because a patent for a joint invention could not be granted to the exclusion of Wake (Stack at [21]-[28]).
It is as a consequence apparent that, if I am to make any determination in this matter, the primary issue to be resolved is whether Wake conceived the invention independently of or together with the named inventors, and in this Wake carries the legal burden of proof on the balance of probabilities (Dunlop Holding Ltd’s Application [1979] RPC 523 at 542-4). It is clear from the authorities that resolution of the primary issue turns on an 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.
If Wake is found to be an inventor, either solely or jointly, a secondary consideration arises as to whether Cavitus have accrued any rights in the invention from Wake.
Before dealing with these issues, I will for convenience again set out the relationship between the key personnel in this dispute.
RELATIONSHIP BETWEEN KEY PERSONNEL
Wake commenced services with Soniclean in January 2003 where he was soon joined by the other Consultants. Vinsonics were set up as a form of joint venture with the view to attracting funding for the commercial exploitation of Soniclean’s ultrasonic cleaning technology in the wine industry. Vinsonics apparently never traded. Whatever the case may be, on learning that Soniclean were no longer interested in commercialising their wine barrel cleaning technology, Wright, Wake, Bates, Yap and McLoughlin formed HPUPL as a separate body. As the result of a dispute regarding ownership of patent rights, Wake later resigned as a Director of HPUPL which led to the formation of Cavitus by Wright, McLoughlin, Yap and Bates.
IS WAKE THE SOLE INVENTOR
According to authority (see Polwood at [60]), the question of inventorship is considered by reference to the invention as discerned from the whole of the specification, including the claims.
In the present case, the invention as described and claimed resides in apparatus and a method for ultrasonically disinfecting the interior of a container. In a broad sense, the apparatus includes an ultrasonic sonotrode which is at least substantially surrounded by a membrane, an ultrasonic generator connected to the sonotrode, and an ultrasonic transducer connected to the ultrasonic generator. When used for ultrasonic disinfection, the sonotrode is placed within a container which contains a first liquid. The membrane is positioned between the first liquid and a second liquid which at least partially surrounds the sonotrode so that the sonotrode is in direct contact with the second liquid but not the first liquid. The feature of a sonotrode that is at least substantially surrounded by a membrane to separate the first and second liquids has been conveniently referred to by McLoughlin as the “sheath concept”.
For reasons which will become apparent, the evidence satisfies me that investigations, firstly, by Soniclean, and subsequently by Vinsonics and HPUPL, into the potential application of ultrasonic cleaning technology in the wine industry were initiated by Wake.
Nevertheless, Wake has expressly disavowed that he made any contribution to the sheath concept. An appraisal of the whole specification establishes beyond doubt that this concept underpins the invention as described and claimed in the present application. This holds true irrespective of whether Wake is misguided in his efforts to discredit the importance of the sheath concept. Consequently, as Wake had no role in devising the sheath concept, his claim to sole inventorship is unsustainable.
IS WAKE A JOINT INVENTOR
It is here that the evidence has proven most problematic. Certainly Wake is emotionally involved in this matter and the objectivity of his evidence suffers at times because of this. Not all sits well with the evidence for Cavitus either which is suggestive of a preparedness on the part of their declarants to assist Cavitus at the expense of Wake. Specifically, the evidence for Cavitus seemingly evades the question of whether the sheath concept owed anything to the research undertaken by Wake into the feasibility of utilising ultrasonics to clean and disinfect wine barrels.
It is however common ground that Wake was engaged by Soniclean to further their business interests. The core business of Soniclean at that time rested in the sale of ultrasonic cleaning machines to the medical and dental industries, but there is nothing in evidence to indicate that Soniclean had recognised the potential application of this technology in the wine industry prior to Wake’s arrival.
Wake contends that the wine industry presented itself as a possible area for business expansion as he was aware from previous experience that oak wine barrels could not be reliably cleaned and disinfected using known techniques. Although Wake does not elaborate on the extent of his background in the wine industry, it appears from the evidence of Wright that Wake was engaged by Soniclean because of his marketing and sales expertise. Thus it is not surprising that Wake relied on others such as Bates for technical advice. Nevertheless, I accept that there was a business imperative for Wake to acquire a reasonable knowledge of the ultrasonic cleaning technology for which he hoped to ultimately gain market acceptance in the wine industry, and that he was as a consequence capable of contributing to its development as he has alleged.
Wake’s uncontested evidence is that after attending the HPU seminar conducted by Bates, he proceeded to follow a number of lines of enquiry to assess the suitability of ultrasonics for use in the wine industry. This program of research included a national survey of wine industry personnel (attachment D), the commissioning of the laboratory studies by Yap to test the efficacy of HPU for barrel disinfection (attachment DW20), and discussions held with Bates, Heinrich and Lomman. Wake also investigated the use of sontrodes from different sources before locating a product which critically was able to be inserted into a wine barrel through a standard bung hole.
It is overwhelmingly clear from the evidence that this is what Wake considers to be “his” invention.
Wake further states, again unchallenged, that he assisted Lesicar to prepare the Soniclean and Vinsonics provisional applications I have referred to earlier in this decision. On 10 June 2004, Lesicar emailed Wake as follows (attachment T):
“I refer to our recent meetings in relation to your IP related to the wine industry. As you know there are currently a number of provisional patent applications that have been filed to preserve patent rights both locally and internationally for a period of 12 months from the filing date. These provisional patent applications were filed following a number of meetings between you and your colleagues where I was personally present and where the inventions formed shape. As such you are clearly a co-inventor on these applications and, together with your colleagues, have the right to have filed these and any further patent applications.”
However, this does not of itself substantiate that Wake can be considered to have jointly contributed to the invention as described and claimed in the present application. To answer the question this poses, it must be determined whether any contribution made by Wake was integral to the development of the subject invention.
Wake’s invention was made the subject of the first Soniclean provisional application. His invention is broadly disclosed as comprising an ultrasonic apparatus for cleaning a wine barrel of the type having a bung hole, the apparatus including a longitudinal shaft of a diameter less than the diameter of the bung hole, an ultrasonic generator, and at least one ultrasonic transducer associated with the shaft. The first Soniclean provisional application effectively served as a precursor to the other provisional applications filed by Soniclean and Vinsonics. A striking feature of these applications (and for that matter the HPUPL provisional applications in which it was proposed to list Wake as the “founding inventor”) is the absence of any suggestion of the sheath concept.
The position, then, is that the only common thread between Wake’s invention and the subject invention is the use of a single sonotrode which is inserted through the bung hole of a wine barrel. It would therefore in my opinion be stretching credibility to suggest that Wake’s invention led toward the subject invention, and more particularly the introduction of the sheath concept.
Further, McLoughlin has contended that he arrived at the sheath concept after setting out to create intellectual property “that differentiated the IP of [Cavitus] from that of a former company entity with which [Wake] had been associated.” McLoughlin’s account of how the sheath concept came to him is short on detail but plausible, and I accept his statement that this concept was derived to address problems not previously considered by Wake. On this basis I am satisfied that the sheath concept does not merely form part of a preferred working embodiment of Wake’s invention.
For these reasons, I find that Wake does not meet the description of a joint inventor.
CONCLUSION
I have found that Wake is not an inventor, either alone or jointly, in respect of the invention as described and claimed in the present application. The issue of whether Cavitus have accrued any rights in the invention from Wake consequently does not arise for determination.
Accordingly, I declare pursuant to section 36(1) that Cavitus are the sole eligible person in relation to the subject invention. I determine under section 32 that the present application is to continue to proceed in the name of Cavitus.
COSTS
I see no reason to depart from the usual practice that costs follow the event. I therefore award costs under schedule 8 against Wake, noting that the only costs applicable are those relating to the hearing itself.
O L Haggar
Delegate of the Commissioner of Patents29 July 2010
Patent attorneys for the applicant: Collison & Co, Adelaide
Patent attorneys for the requestor:
7
5
0