David Leigh Wake v Soniclean Pty Ltd - [2010] APO 12

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Innovation patent : No. 2008100881 in the name of SONICLEAN PTY LTD

Title: An apparatus and method for cleaning and recycling water used in cleaning of barrels

Action: Opposition under section 101M of the Patents Act by DAVID LEIGH WAKE

Decision: Issued 30 July 2010
Abstract

The only ground of opposition relied on relates to ownership of the innovation patent.
Although suggestive of some earlier inventive activity on the part of the opponent, the evidence was insufficient to verify that the opponent had devised the invention as described and claimed by the innovation patent, either alone or jointly.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Innovation Patent No. 2008100881 in the name of Soniclean Pty Ltd and opposition under section 101M of the Patents Act by David Leigh Wake

BACKGROUND

Innovation patent 2008100881 (the innovation patent) in the name of Soniclean Pty Ltd (Soniclean) was filed as a divisional application from standard patent application 2004283761 which claims priority from provisional application 2003905801 filed on 22 October 2003. The innovation patent was certified on 27 November 2008, and names Wah Tong Lee, Peck Yok Lee and Julian Macdonald Smith as co-inventors.
On 15 May 2009, David Leigh Wake (Wake) filed a notice of opposition to the innovation patent together with a statement of grounds and particulars. Wake served evidence in support of the opposition on 22 April 2009. Soniclean requested that the opposition be dismissed since the evidence in support was not served on them at the same time as the statement of grounds and particulars as required by regulation 5.8(1)(a)(i). On 22 May 2009, Wake and Soniclean were advised that the Commissioner would defer dismissing the opposition to afford Wake the opportunity to either file a request for an extension of time or to withdraw the opposition. As events occurred, Wake requested and was granted an extension of time under section 223 in which to serve the evidence in support.
The service of evidence in answer and evidence in reply was completed by 29 September 2009. On 8 April 2010, Soniclean filed a request under section 5.10(4) to serve further evidence which was accompanied by the evidence the subject of the request. The request was granted unopposed. Wake filed evidence in response to the further evidence on 23 April 2010.
The only ground of opposition on which Wake relies is his claim that he alone is entitled to the innovation patent. Wake has similarly alleged sole entitlement in requests under sections 32 and 36 filed by him against patent application 2005200778 in the name of Cavitus Pty Ltd (the Cavitus entitlement dispute). 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”.
The opposition was heard in Canberra on 30 April 2010. Soniclean were represented by Mr Julian Smith (Smith) who is their Managing Director. Wake declined to appear at the hearing, but filed written submissions as did Smith.
THE SPECIFICATION
The specification of the innovation patent indicates that the invention relates to the cleaning of barrels, and in particular to the use of ultrasonics to clean wooden wine barrels.
The specification explains that wine and liquor producers use oak barrels to impart certain flavours to wine and other beverages. Oak barrels are expensive and are only able to be cleaned a certain number of times before they are unable to impart much flavour to the wine. Wine makers must therefore carefully age their wine in a mix of new and used barrels to achieve the desired characteristics for each wine. Care must be taken in the cleaning and reuse of older barrels, since the interior surfaces can harbour bacteria and yeasts that might contaminate the wine that is placed in the barrel. Such contamination results in vast amounts of spoilt wine each year. 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, the inner surface of the wine barrel is often shaved to remove wine maturation residue. The process involves either the dismantling of the barrel or the removal of one end. The interior of the barrel is then shaved to remove residues. While shaving the wood reduces the chance of wine contamination, it also removes the toasting which is critical to the flavour imparting characteristics of the barrel. The inner surface of the barrel must therefore be re-toasted. Moreover, this method is not time effective since the barrel must be moved to a location where it can be shaved.
Other methods that have been used to clean or decontaminate a barrel involve the use of high pressure and/or hot water. However, these methods often result in the flavour imparting characteristics of the barrel being washed away by the water and also require a large amount of water which is problematic in drier areas where wine makers have limited water available.
An object of the invention is to overcome at least some of the aforementioned problems by providing a method and apparatus for cleaning barrels by the use of ultrasonics.
The specification summarises the invention in language corresponding to that of the independent claims, and describes a preferred embodiment of the invention with reference to some drawings.
In accordance with the preferred embodiment, a wine barrel is at least partially filled with water. The shaft of an ultrasonic processor or transducer mounted on a movable support boom is then inserted through the bung hole of the barrel and immersed in the water. The ultrasonic processor is induced to produce ultrasonics which in turn produce microscopic cavities within the water and hence on the inner surface of the barrel. Ultrasonic cleaning works by the action of these cavitities collapsing and releasing shock waves which loosen bacterial and yeast contaminants. The detritus along with the water contained in the barrel can then be pumped out through the bung hole and fed to a filtration device where it is disinfected by an ultrasonic cleaning device before being reused to clean another barrel, thereby reducing the possibility of transferring contaminants to other barrels during the cleaning process.
The specification ends with five claims as follows:
“1. An ultrasonic apparatus for the cleaning of at least one barrel of the type having an internal chamber, said apparatus including:
a fluid holding means;
a means of supplying said barrel chamber with fluid from the fluid holding means;
a support means for supporting at least one ultrsasonic processor and allowing said ultrasonic processor to be moved to a barrel location for cleaning of said chamber;
a fluid recycling means for recycling fluid from a cleaned barrel so that it is suitable for supply to the fluid holding means for reuse.
2. An ultrasonic apparatus as in claim 1 wherein said barrel is a wine barrel that includes a bung hole.
3. An ultrasonic apparatus as in claim 1 or claim 2 further including a transport means for successively transporting a plurality of barrels to said barrel location for cleaning.
4. An ultrasonic apparatus as in any one of the above claims wherein said recycling means includes a filtration device and/or an ultrasonic cleaning device.
5. A method for ultrasonic cleaning of barrels having an internal chamber, including the steps of:
transporting a barrel to a barrel cleaning location;
filling the internal chamber of the barrel with liquid supplied from a liquid holding tank;
cleaning the inside of the barrel using an ultrasonic processor associated with a support means allowing the ultrasonic processor to be moved to said cleaning location;
recycling liquid from inside the cleaned barrel; and
supplying the liquid holding tank with said recycled liquid.”
THE EVIDENCE
Evidence in support
The evidence in support consists of a statutory declaration made by Wake on 22 April 2009 with attachments A to H, G1, H1, and I to U.
Wake says he first met Peck Yok Lee, one of the named inventors and a Director of Soniclean (and known to Wake as Susan Lee) in November 2002 when she told him that Soniclean were looking to diversify their business. At the invitation of Susan Lee, Wake agreed to research potential business opportunities for Soniclean. He says ‘[w]e did not, at that time or subsequently, discuss any form of payment or remuneration, nor did we discuss any issues relating to the creation and/ownership of intellectual property. In essence, I was to be a “guest” of Soniclean.”
On 14 January 2003, Susan Lee introduced Wake to Soniclean’s General Manager, Bill Wright (Wright). On 17 January 2003, Susan Lee and Wright invited Wake to attend a seminar on high-power ultrasonics (HPU) where he was introduced to the presenter, Darren Bates (Bates). Wake claims that he was aware from 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. Wake asserts his decision was met with enthusiasm by Susan Lee and Wright.
In February 2003, Wake began “building a knowledge base in relation to HPU” with the assistance of Bates. In March 2003, Wake commenced the development of what he considers to be his “core invention”, namely, the invention the subject of the innovation patent. He 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 wood. These investigations included laboratory studies conducted by a microbiologist, Andrew Yap (Yap), which demonstrated that ultrasonic technology successfully eradicated Brettanomyces yeast infection (attachment K).
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. With the support of Susan Lee, Wright recruited Wake, Bates, Richard McLoughlin (McLoughlin), Yap and Smith as consultants.
According to Wake, he continued to develop the invention in April and May, and completed it in June 2003.
At this time, Wake and Wright met with Drazen Lesicar (Lesicar), patent attorney of Lesicar Perrin, to instruct him to prepare and file a number of provisional applications, including provisional application 2003905801 from which the innovation patent ultimately claims priority. Wake says that Figure 1 of the provisional application is derived from the “novelty development sketches” he provided to Lesicar, copies of which are shown in attachments H, G1 and H1. Wake claims to have agreed to the provisional application being filed in the name of Soniclean given assurances by Wright “that arrangements would be put in place to ensure that my inventions would be commercialised and that I would receive proper benefit”.
Lesicar filed certain other provisional applications in the name of either Soniclean or Vinsonics Pty Ltd (Vinsonics) which I have identified in my decision relating to the Cavitus entitlement dispute. As explained by Wake:
“Vinsonics is a company which was set up on behalf of Soniclean by Wright. Its purpose was to hold, and develop all HPU intellectual property developed by me … I was to be the owner of 50% of the shares in Vinsonics, to be a director of Vinsonics and to be its General Manager.”
Evidence in answer
The evidence in answer consists of a statutory declaration made by Wah Tong Lee (Lee) on 21 August 2009 with exhibits WTL-1 to WTL-8.
Lee is another of the named inventors. He has been a Director of Soniclean since 1992 when that company was jointly founded by him and his wife, Susan Lee.
Lee says that while the core business of Soniclean lies in the sale of ultrasonic cleaning machines to the medical and dental industries, Soniclean have always looked to expand into other business areas. The wine industry presented itself as a possible area for expansion which according to Lee was to some extent prompted through his attendance at an overseas sonochemistry conference in July 1996.
To facilitate this expansion, Lee and his wife engaged a number of consultants who had come to the attention of Susan Lee “either because of their technical expertise in related areas … or perhaps some perceived expertise in various business fields.” The consultants included Wright, Yap, McLoughlin, Wake, Bates and Smith (collectively, the Consultants). Lee disagrees that any of the Consultants could be described as “guests” as asserted by Wake as they “were working on behalf of Soniclean, using the resources of Soniclean, with access to Soniclean’s resources, technology and know-how to further Soniclean’s business interests … [and were] paid by Soniclean on this basis.” He expresses the opinion that with the exception of Bates, none of the Consultants had prior knowledge of ultrasonic cleaning technology. Arrangements were therefore made for the Consultants to execute a Confidential Disclosure Agreement to enable them to access some of the proprietary technology already developed by Soniclean.
Lee states that Vinsonics were established as start-up company with the view to attracting various government grants for the exploitation of ultrasonic cleaning technology in the wine industry, and are now inactive.
Evidence in reply
The evidence in reply consists of:
- A second statutory declaration made by Wake on 28 August 2009 with attachments 1-17;
- A statutory declaration made by Andrew Whittaker (Whittaker) on 28 August 2009 with attachments 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 are identical (with the exception of the reference numerals) to Figures 1 to 3 of the innovation patent and provisional application 2003905801 from which the innovation patent derives its earliest priority.
Wake asserts Lee’s evidence is misleading in that neither Lee nor Soniclean had any involvement or knowledge of HPU technology prior to January 2003. He claims the products manufactured and distributed by Soniclean before then incorporated low-power ultrasonics (LPU) technology which is quite different in character from HPU technology. He says the Confidential Disclosure Agreements referred to by Lee related only to the former technology.
The evidence from Whittaker and Macpherson has no bearing on the question of inventorship.
Wake further states that the sole reason why the wine industry had “presented itself” as “one possible area for business development/expansion” was that he had identified the wine industry as a potential diversification opportunity for Soniclean. Wake says that to his knowledge there was no prior belief within the wine industry as to the potential use of HPU technology.
Further evidence
The further evidence consists of a statutory declaration made by Smith on 8 April 2010 with exhibits JMS-1 to JMS-6. Smith is the final named inventor, and has held the position of Managing Director at Soniclean since 2004.
The further evidence is largely confined to assertions by Smith as to various business relationships between Soniclean, Vinsonics and another company called HPU Pty Ltd (HPUPL) established by Wright, Wake, McLoughlin, Yap and Bates. I consider these assertions to be irrelevant to the issue of entitlement and, consequently, will not have any further regard to them.
Evidence in response
The evidence in response consists of a third statutory declaration made by Wake on 22 April 2010 with attachments A1 and B1.
Wake totally refutes the evidence of Smith. He contends Smith’s assertion that he (Smith), the other Consultants, Susan Lee and Lee all “contributed to the development of the new technology that led to patents being filed” is wrong. Wake says that Yap, McLoughlin and Bates were not recruited by Wright until after he (Wake) had conceived his “core invention” and following reports by him to Wright (as General Manager of Soniclean) concerning the potential commercial applications of HPU. He also points out that Smith, Lee and Susan Lee have not themselves provided evidence to substantiate their alleged contribution to the invention.
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 Cavitus entitlement dispute. Consequently, I also intend to have regard to the latter body of evidence when deciding the present opposition.
RELEVANT LAW
Statutory framework
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 opposition and the Cavitus entitlement dispute leaves me with the clear impression that Wake is asserting inventorship in respect of a number of patent applications variously filed by Soniclean, Vinsonics, HPUPL and Cavitus which relate to the application of ultrasonic cleaning technology in the wine industry. It must, however, be stressed that for present purposes I need only determine whether Wake can legitimately claim inventorship in respect of the innovation patent.
Wake alleges that he alone devised the invention and is therefore solely entitled to the innovation 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 Wake could not be excluded from patent rights for a joint invention (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 Soniclean have accrued any rights in the invention from Wake.
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 cleaning the internal chamber of a barrel. In its broadest sense, the apparatus includes means for supplying fluid to the chamber from a fluid holding means, at least one ultrasonic processor supported by means which allows the processor(s) to be moved to a barrel location for cleaning the chamber, and means for recycling fluid from a cleaned barrel to the fluid holding means for reuse.
Wake’s assertion that this is what he considers to be his “core invention” is inconsistent with both his written submissions and the evidence filed by him in the Cavitus entitlement dispute from which it has become quite apparent that Wake did not regard his core inventive contribution as anything more than the use of a single sonotrode which was able to be inserted through the standard bung hole of a wine barrel. This formed the subject of provisional application 2003903659. Wake has variously referred to his other “related inventions” but there is little conclusive evidence as to what these related inventions involved except perhaps for the employment of multiple mini-sonotrodes in place of a single sonotrode as disclosed in provisional application 2003903660.
Wake’s account of how he arrived at the invention as described and claimed in the innovation patent is in any event unconvincing. Wake principally relies on a number of file documents “concerning the development by me of the inventions” which he provided to Lesicar to assist him to prepare the Soniclean and Vinsonics provisional applications I have referred to earlier. Attachments H, G1, H1 and L are said to relate to material created by Wake and discussed with Lesicar “as relevant material for description of novelty in the development of [provisional application] 2003905801.” However, this is not corroborated by Lesicar, and the material contained in these attachments bears no discernible resemblance to the disclosure of the provisional application. Attachment I is a copy of Figure 1 of provisional application 2003905801 which was presumably prepared by Lomman. Wake claims that this drawing was derived from handwritten sketches given by him to Lesicar, but again there is no noticeable correspondence between the two. There is also no evidence to substantiate that the drawing reflected anything developed by Wake.
Attachment J is particularly problematic. It is a review by Wake of what is purportedly a draft version of provisional application 2003905801, but the document subjected to the review is dated 31 August 2005 which is almost two years after the filing date of provisional application 2003905801. Thus this attachment cannot possibly support the position for which Wake contends.
On the basis of the foregoing, I find that there is insufficient evidence to verify that Wake is a sole inventor.
IS WAKE A JOINT INVENTOR
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.
It is 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 Lee that Wake was engaged by Soniclean because of his marketing expertise. 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.
Wake’s 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 and Lomman.
However, as I have previously explained, it appears most likely from the evidence that the only inventive contribution which can be attributed to Wake is the idea of cleaning and disinfecting a wine barrel by inserting a sonotrode through the bung hole of the barrel. His own written submissions seem to confirm this view. On this basis, the only common thread between Wake’s “core invention” and the subject invention is the use of “an ultrasonic processor” for barrel cleaning. It would therefore in my opinion be stretching credibility to suggest that Wake’s contribution represented a material step toward the development of the subject invention.
I therefore find that Wake does not, according to authority, 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 innovation patent. The issue of whether Soniclean have accrued any rights in the invention from Wake consequently does not arise for determination.
The opposition mounted by Wake is accordingly unsuccessful.
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.
O L Haggar
Delegate of the Commissioner of Patents
30 July 2010
Patent attorneys for the patentee: Lesicar Perrin, Adelaide
Patent attorneys for the opponent: