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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read David Leigh Wake v Soniclean Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2010] APO 12
Decision Date: 30 July 2010

CaseChat Overview and Summary

The dispute in this case involves an opposition by David Leigh Wake to an innovation patent held by Soniclean Pty Ltd. The patent in question, No. 2008100881, pertains to an apparatus and method for cleaning and recycling water used in cleaning wine barrels. Wake opposes the patent on the grounds of ownership, claiming that he is the rightful inventor and therefore entitled to the patent. The opposition was heard by a delegate of the Commissioner of Patents, O L Haggar, who ultimately dismissed Wake's opposition.

The key legal issues in this case revolve around the determination of inventorship and ownership of the innovation. According to section 15(1) of the Patents Act 1990, a patent can only be granted to a person who is the inventor, derives title from the inventor, or is the legal personal representative of a deceased person who falls into one of these categories. The case law emphasizes that inventorship is determined by a material contribution to the conception of the invention rather than merely its implementation. In collaborative settings, the involvement in the final conception of the invention is crucial.

The evidence presented by Wake, including statutory declarations and attachments, was scrutinized to determine his contribution to the invention. Wake claimed that he conceived the core invention independently and that he was not adequately compensated for his contributions. However, the delegate found Wake's evidence insufficient to substantiate his claims of sole or joint inventorship. The key points of contention included the lack of clear and corroborated evidence linking Wake's contributions to the specific invention claimed in the patent, as well as discrepancies in the timeline and content of his submissions.

Ultimately, the delegate concluded that Wake was neither a sole nor a joint inventor of the innovation as described and claimed in the patent. Consequently, the opposition was dismissed, and costs were awarded to Soniclean Pty Ltd. This decision underscores the importance of clear and compelling evidence in establishing inventorship and entitlement to a patent.

Orders