Dyno Nobel Asia Pacific Pty Ltd v Olitek Pty Ltd
[2022] APO 57
•10 August 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dyno Nobel Asia Pacific Pty Ltd v Olitek Pty Ltd [2022] APO 57
Patent Application: 2015407253
Title:Control system
Patent Applicant: Olitek Pty Ltd
Requestor: Dyno Nobel Asia Pacific Pty Ltd
Delegate: Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date: 10 August 2022
Hearing Date: 24 June 2022 (by videoconference)
Catchwords: PATENTS – control system for fluid delivery involving pumps and a hose – section 36 – entitlement – application for a declaration of an eligible person – application under section 36 refused – costs awarded against requestor
Representation: Counsel for the applicant: William Terrence Singleton
Patent attorney for the applicant: Damon Henshaw of Spruson & Ferguson
Counsel for the requestor: Cynthia Cochrane SC
Patent attorney for the requestor: Nicola Maxwell of Foundry Intellectual Property Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015407253
Title:Control System
Patent Applicant: Olitek Pty Ltd
Date of Decision: 10 August 2022
DECISION
The requestor, Dyno Nobel Asia Pacific Pty Ltd, is not a person entitled in respect to the present application. I refuse the application for a declaration under s36(1).
I provide 6 months for the applicant to gain acceptance.
I award costs according to Schedule 8 against Dyno Nobel Asia Pacific Pty Ltd.
REASONS FOR DECISION
BACKGROUND
Olitek Pty Ltd (“the applicant/Olitek”) filed patent application 2015407256 on 28 August 2015 as an international application under the Patent Cooperation Treaty (PCT). The application entered national phase on 28 February 2018 and on 9 December 2019 Dyno Nobel Asia Pacific Pty Ltd (“the requestor/DNAP”) filed a request for the Commissioner to issue a direction to request examination of the application. After the direction issued on 12 December 2019, Olitek requested examination and DNAP also filed material under section 27 of the Patents Act to be considered during examination. A first examination report issued on 1 February 2021 finding that the claimed invention was novel and inventive in accordance with the International Preliminary Report on Patentability that issued prior to national phase entry.
On 1 October 2021 DNAP filed an application for a declaration of an eligible person under section 36 of the Patents Act, forming the basis of the matter before me for consideration. DNAP filed evidence in support of their request, which was subsequently answered by Olitek. DNAP then filed evidence in reply to the evidence in answer.
The final date for acceptance of the application was 1 February 2022, however as the request to be heard in the present matter was filed after 15 April 2013, paragraph 13.4(1)(f) of the Patent Regulations is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.
The APPLICATION FOR A Declaration under s36(1)
The following is the ground for the application for a declaration currently before the Commissioner, being filed on 1 October 2021.
“Dyno Nobel Asia Pacific Pty Ltd (DNAP) of VIC 3006 Australia hereby applies for a declaration referred to in Section 36(1) stating that it is an eligible person and that the nominated person, Olitek Pty Ltd (Olitek), is not an eligible person, in respect of Australian Patent Application No. 2015407253 (the Application) filed on 28 August 2015 in the name of Olitek, naming James Oliver and Simon Paech as inventors. The Application has not been the basis of any granted patent application.”
The particulars upon which the requestor makes its case are as follows:
By virtue of the Terms and Conditions (T&C) accompanying and governing the Purchase Orders submitted by DNAP to Olitek in connection with Olitek’s work to design, build and/or commission DynoMiner 2.5 units, including Olitek’s work to update the control system and software, including but not limited to DNAP’s Purchase Orders Nos. 4500685577 and/or 4500751595, the invention the subject of the Application belongs to DNAP and not to Olitek.
Clause 17 of the T&C for Purchase Order No. 4500685577 provided that “Any… invention or improvement made by [Olitek] attributable in whole or in part to such specifications, plans, drawings, process information, patterns or designs [supplied by DNAP] shall be the property of the [DNAP]”. Clause 8.1 of the T&C for Purchase Order No. 4500751595 provided “Any intellectual property rights in an invention or improvement made by the Seller arising from performance of the Supply or attributable in whole or in part to such specifications, plans, drawings, process information, patterns or designs [supplied by DNAP] will vest in the Buyer [DNAP] as and when created and the Seller [Olitek] must assign all rights, title and interest in such invention or improvement to the Buyer [DNAP]”.
The invention described in the Application was conceived, developed and implemented during the course of a project involving collaboration between personnel of DNAP and Olitek to design, manufacture and commission into service “DynoMiner 2.5” mobile processing units for charging blastholes at mine sites with bulk explosive materials. In particular, the invention described in the Application relates to the “base-mapping” functionality incorporated into the control system software of the DynoMiner 2.5 units and was developed and reduced to practice by the named inventors James Oliver and Simon Paech of Olitek by reference to and reliance upon drawings, technical documents and other information supplied by DNAP (including from previous DynoMiner models).
Further or in the alternative, by virtue of the “Contract – Manufacture and Supply of Goods (and Associated Services (Contract Number: IPL260340)” executed in October 2011 (2011 Contract) by DNAP and Olitek in connection with Olitek’s engagement to construct DynoMiner 2.0 units, DNAP owns all “Project IP”, being all present and future Intellectual Property Rights including in relation to inventions (including all patents and patent applications).
To the extent that James Oliver or Simon Paech conceived, developed or reduced to practice the “base-mapping functionality” described in the Application, and such work was not undertaken pursuant to DNAP’s Purchase Orders Nos. 4500685577 and/or 4500751595 referred to above, each did so pursuant to the 2011 Contract such that the invention the subject of the Application constitutes Project IP belonging to DNAP and not to Olitek. Clause 3.42(d) of the 2011 Contract provides that “All Project IP shall be vested in [DNAP] and shall be [DNAP]’s property as and when created and [Olitek] assigns all rights, title and interest in and to the Project IP to [DNAP] (including by not limited to any Project IP created prior to or after the date of this Contract)”.
EVIDENCE
Evidence in support and reply was filed by DNAP and evidence in answer was filed by Olitek. The evidence filed is as follows:
· Evidence in support being a declaration by Mr Savas Samat (Samat) dated 17 September 2021 accompanied by annexures SS-1 to SS-7
· Evidence in answer being a declaration by Mr James Oliver (Oliver) dated 12 January 2022 accompanied by attachments 1 to 5
· Evidence in reply being a declaration by Mr Jon Bowerman (Bowerman) dated 1 March 2022 accompanied by annexures JB-1 to JB11-C
ONUS OF PROOF
As noted in Woodside Energy Limited v Richard John Moore [2018] APO 82 at [37], the Requestor bears the onus to prove their case on entitlement on the balance of probabilities. However, the evidentiary burden may shift under some circumstances, especially when knowledge of relevant facts lies particularly with one party or the other; see Dunlop Holdings Limited's Application [1979] RPC 523 at pp. [542] to [544].
APPLICABLE LAW
Section 36 applies to the application in this case and opens in the following terms:
If:
(a)a patent application has been made and, in the case of a complete application, the patent has not been granted; and
(b)an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
(c)the Commissioner is satisfied on the balance of probabilities, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
(i)that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii)that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed.
Schedule 1 of the Patents Act defines an eligible person as follows:-
“eligible person”, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.
10. Subsection 15(1) provides that a patent 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).
Accordingly, the primary person to whom a patent may be granted is the inventor. All other persons may derive title to the patent, and the invention claimed therein, via the inventor; Stack v Davies Shephard Pty Ltd, [2001] FCA 501 at [21].
11. In University of Western Australia v Gray (No 20), [2008] FCA 498 (“UWA”), French J commented, at [1426], that the inventive concept marks a boundary between invention and verification. French J then referred to the US Court of Appeals Federal Circuit decision, Burroughs Wellcome Co v Barr Laboratories Inc, [1994] USCAFED 1125, (1994) 40 F.3d 1223. He stated that this decision set out the following principles, amongst others, as established by US appellate courts:
1. Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2. Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
12. On appeal, the Full Court of the Federal Court, in University of Western Australia v Gray, [2009] FCAFC 116, did not appear to disturb French J’s position on the above points. The Full Court, at [253], also appeared to accept the following steps from the primary judge’s decision as appropriate:
1. identify the “inventive concept” of each relevant invention as defined by the claims;
2. determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
3. determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.
13. In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd, [2005] FCA 1474, (2005) 67 IPR 68 (“JMVB”), Crennan J stated as follows at [132]:
“Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a particular person’s involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants. The fact that the parties were in collaboration can be a major consideration.”
14. The passage was cited with apparent approval by the Full Court of the Federal Court in Polwood Pty Ltd v Foxworth Pty Ltd, [2008] FCAFC 9 (“Polwood”) at [53]. Furthermore, in Polwood at [34] - [36] (emphasis in original):-
“The entitlement to the grant of a patent as the inventor is not determined by quantitative contribution. The role of joint inventors does not have to be equal; it is qualitative rather than quantitative. It may involve joint contribution or independent contributions. The issue is whether the contribution was to the invention. What constitutes the invention can be determined from the particular patent specification which includes the claims. In some cases, evidence can assist. In some cases, the reduction of a concept to a working apparatus by a person may not be part of the invention, in other cases it may be. For example, the construction of an apparatus may involve no more than carrying out the instructions in the specification. This would not normally entitle that person to joint inventorship. On the other hand joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed.
One criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention. It may be that an invention is made as part of a collaborative effort. In those circumstances, it would ordinarily follow that the collaborators are joint inventors of the product of the collaboration. ….
To ascertain the inventor for the purposes of entitlement to the grant of the patent it is therefore necessary to determine the contributions to the invention described in the patent application. The claims may assist in that determination, bearing in mind that the claims may be to less than the totality of the invention. It may also be appropriate to investigate the contributions to the inventive steps giving rise to the invention.”
15. At [60] and [61] of Polwood it is also noted that:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee's description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.
In this case, the body of the specification and the claims describe two aspects of the invention, the concept and the apparatus to give effect to it. Both are described and claimed by Polwood as the patent applicant as inventive.”
SPECIFICATION
16. The specification is directed towards the control of fluid delivery with particular regard to fluid delivery through pipes and hoses delivering explosive chemicals to a bore hole. In conventional chemical plants, fluids are supplied to reaction vessels at desired flowrates and in desired proportions to ensure reactions occur in the desired manner. Control systems functioning in such environments typically include pressure transducers and flowrate measurement devices that provide information to controllers. Measured parameters are then compared to desired target parameters in order to generate appropriate control output signals for pumps and/or control valves. In steady state operation, such systems work well, however there are drawbacks when fluid delivery systems operate in a repeated start-up process.
17. In explosives blasting in mines that utilise explosive compositions prepared on-site, the specification discusses that a fluid delivery system can be used to mix components and deliver these via a pipe to a drill hole in the mine. In such a system, a main pump supplies main product flow and additional pumps are provided to introduce trace chemicals at desired locations to form the final explosive mixture. The flow of trace pumps is usually determined as a mass percentage of the main pump, and there may also be a water pump used for lubrication or flushing. A shear valve or back pressure valve may also be incorporated to cause mixing within the piping, this being a “set and forget” type element that is not adjusted during fluid delivery.
18. Final mixed product is usually injected through a delivery hose into a slender cavity, such as a drill hole. A hose handling device would normally withdraw the hose at a desired rate such that as explosive mixture fills the hole, the hose withdraws within a required amount of time. An explosive mixture may expand once discharged from the hose and as such the withdrawal of the hose needs to be adjusted to compensate for product expansion. The speed of withdrawal has conventionally been determined by trial and error.
19. The specification further discusses the nature of delivery of explosive material being over short time periods, termed a “shot”. It is noted that when shot times are short, conventional control methodologies are not able to achieve the requisite level of control over the flowrate, composition, and backpressure in the fluid delivery system.
20. With the above issues in mind, the specification discusses the provision of a two-pump fluid delivery system that includes pump maps to control the flow rate of fluid. At paragraph [0011] the following consistory statement is provided:
With the foregoing in view, the present invention in one form, resides broadly in a control system for controlling operation of a fluid delivery system, the fluid delivery system including at least a first pump for delivering a first fluid and a second pump for mixing a second fluid with the first fluid, the control system including a controller, the controller including a first pump map for the first pump, the first pump map having a first pump flow rate mapped against one or more variables including a control output signal, the controller including a second pump map for the second pump, the second pump map having a second pump flow rate mapped against one or more variables including a control output signal, the controller determining the control output signal for the first pump to obtain a desired flow rate form (sic) the first pump, the controller determining the control output signal for the second pump to obtain a target flow rate and a target percentage of the second fluid relative to the first fluid or a target percentage of the second fluid relative to an overall fluid flow, the respective control output signals for the first pump and the second pump being determined using the first pump map and the second pump map.
21. It is noted that the use of pump maps to control operation of the pumps is advantageous in that short period pumping (such as less than 10 second pumping sequences) can occur with increased accuracy.
22. Discussion is also provided of a second embodiment of the invention wherein fluid is delivered through a hose and the hose is retracted via a particular means of control. In this situation the controller has a hose retractor map, the hose retractor map having a hose speed output signal mapped against hose speed, the controller calculating a required hose speed to retract the hose, the controller deriving a hose speed output signal from the hose retractor map, the controller sending the hose speed output signal to a hose retractor. Detail of the function of hose speed withdrawal is provided at paragraph [0086].
The calculation of the required speed to withdraw the hose from the hole involves determining the volume of the hole or cavity into which the hose is inserted. The hoses are typically inserted into drilled holes in a rock face during underground mining. These holes are roughly cylindrical and are drilled to a predetermined depth and diameter, resulting in a volume of product required to fill the hole at a known density. The controller takes the variables stored for the recipe of the final fluid mixture to calculate the predicted volume of fluid inside the hole. The controller then calculates the required retraction speed of the hose which will fill the hole at the correct density, taking into account the expansion of the product to a lower density, the flowrate of the fluid product into the hole and how full the hole is required to be. With all of these variables, the required hose speed is calculated, the system looks at the required output for the control signal 82 that will achieve this required host speed and the hose feeder assembly operates at the desired hose speed. In this regard, the controller also includes a hose retraction map that comprises a lookup table that correlates hose retraction speed with the percentage output control signal.
Claims
23. The specification was amended during the international phase of prosecution by way of Article 34 amendments filed under the provisions of the PCT. The specification currently includes 22 claims, three of which are independent (claims 1, 14 and 20). I present claim 20 first as it is the simplest of the three and claims 1 and 14 add further features to the general concepts of claim 20.
20. A control system for an apparatus supplying a fluid via a hose to a bore comprising a controller, the controller receiving data relating to drill depth of the bore or volume of the
bore, the controller calculating a required pumping volume and hose speed and distance to insert and retract the hose, the controller deriving a hose speed output signal from a hose retractor map, the controller sending the hose speed output signal to the hose retractor.
1. A control system for controlling operation of a fluid delivery system, the fluid delivery system including at least a first pump for delivering a first fluid and a second pump for mixing a second fluid with the first fluid, the control system including a controller, the controller including a first pump map for the first pump, the first pump map having a first pump flow rate mapped against one or more variables including a control output signal, the controller including a second pump map for the second pump, the second pump map having a second pump flow rate mapped against one or more variables including a control output signal, the controller determining the control output signal for the first pump to obtain a desired flow rate from the first pump, the controller determining the control output signal for the second pump to obtain a target flow rate and a target percentage of the second fluid relative to the first fluid or a target percentage of the second fluid relative to an overall fluid flow, the respective control output signals for the first pump and the second pump being determined using the first pump map and the second pump map, respectively, and wherein the fluid delivery system delivers the fluid through a hose and the hose is retracted as fluid is delivered from the hose, the speed at which the hose is retracted is controlled by the controller, and wherein the controller has a hose retractor map, the hose retractor map having a hose speed output signal mapped against hose speed, the controller calculating a required hose speed to retract the hose, the controller deriving a hose speed output signal from the hose retractor map, the controller sending the hose speed output signal to a hose retractor.
14. A method for controlling operation of a fluid deliver (sic) system having a first pump and a second pump, the fluid delivery system delivering the fluid through a hose and the hose being retracted as fluid is delivered from the hose,, the method comprising providing a first pump map in a controller, the first pump map having a first pump flow rate mapped against one or more variables including a control output signal, providing a second pump map in the controller, the second pump map having a second pump flow rate mapped against one or more variables including a control signal output, entering a target delivery flow rate into the controller, entering or determining a percentage of the second fluid flow relative to the first fluid flow or relative to an overall fluid flow in the controller, wherein the controller determines a control signal output from the first pump map to control operation of the first pump to obtain a target first fluid flow rate and the controller determines a control signal output from the second pump map to control operation of the second pump to obtain a target percentage of the second fluid relative to the first fluid or a target percentage of the second fluid relative to an overall fluid flow and wherein the speed at which the hose is retracted is controlled by the controller, the controller having a hose retractor map, the hose retractor map having a hose speed output signal mapped against hose speed, the controller calculating a required hose speed to retract the hose, the controller deriving a hose speed output signal from the hose retractor map, the controller sending the hose speed output signal to a hose retractor.
GENERAL NARRATIVE REGARDING THE PARTIES AND EVIDENCE
24. The present claims and specification relate in a general manner to DynoMiner Profile (DMP) units. In evidence in support, Mr Samat summarises the function of these units as follows ([14] of Samat):
“DNAP’s DynoMiner Profile (DMP) units are large pieces of machinery that are mounted to a carrier (such as a Normet vehicle) and used to carry non-explosive ingredients to the location of drilled blastholes and then mix/process those ingredients to create a liquid emulsion bulk explosive that can then be delivered into the blasthole in readiness for a blast. DMP units include electronic controls and software that enable the ratios and rates at which ingredients are mixed/processed, and at which the explosive emulsion is delivered into the blasthole, to be set, altered and therefore controlled. This control is critical to the safety and the effective blasting performance of the bulk explosive emulsion, the properties of which (such as composition, density and temperature) all affect its properties and behaviours in blasts. Predictable and reliable bulk explosive properties are a critical factor in safely and successfully implementing blasts designed with engineering precision to promote initiation timing and energy dispersion that will achieve the intended optimal outcome for each blasthole and the blast site overall (which typically has dozens or even hundreds of adjacent blastholes).”
25. Each of the declarants in the current matter have been involved in the development of DNAP DMP type units to varying degrees over time. Thus, their evidence is all useful in demonstrating the relationships between the relevant parties and the manner in which the invention came about.
26. Mr Samat provides evidence in support of the request, having been an employee of DNAP since March 2013 when he joined as a Project Engineer (Samat at [1]). He notes at [2] of his declaration that:
“The first major project I worked on for DNAP, which I have continued to work on in various iterations since, related to the design and project management of DynoMiner Profile (DMP) units for use in underground downhole charging of explosives for blasting in mining operations.”
27. Mr Samat has clearly been involved in the development of machinery that is relevant to the invention described in the specification. He appears to have sound knowledge of the development of the machinery since his employment and provides an account of functionality, usage and history of DNAP’s DMP units in his declaration.
28. Mr Oliver provides evidence in answer on behalf of the applicant of the present application. Mr Oliver is a director of Olitek Pty Ltd and is listed as an inventor of the present application (Oliver at [1]). It is not disputed in this matter that he is an inventor. It is clear that he has been involved in the development of DMP type units for some time as he refers to involvement in late 2005 (then as an employee of Mathers Hydraulics Technologies Pty Ltd (Mathers)), when he was introduced to a Swedish team that manufacture the Mini SSE (the predecessor to the DMP) in Europe (Oliver at [18]). From late 2005 into 2006, Mr Oliver worked in the research and design of a version of the Mini SSE based on information provided by the Swedish team (Oliver at [20]), culminating in the provision of DMP units to DNAP by Mathers in the form of DMP 1.0 units based on the Mini SSE in and around 2007 and 2008 (Oliver at [22]-[25]). A DMP 2.0 machine was also developed following this period.
29. Mr Oliver then became involved in further work for DNAP when Olitek was engaged to provide similar services as those provided by Mathers. This began in 2011 where Olitek was engaged to build DMP 2.0 units (Oliver at [42]). After the successful build of these units, Olitek was commissioned to build further DMP units. Build work for these further units occurred in and around 2013 resulting in DMP 2.5 units (Oliver at [48]). For each stage of development where Mr Oliver has been involved in DMP unit development, various arrangements for the ownership of intellectual property have been in place, however I will not detail them at this point.
30. Mr Bowerman has been employed by businesses owned by DNAP or related entities since 1984 holding a range of roles. He states that he was involved in every stage of the development of the DMP from re-engineering of the Mini SSE all the way to the DMP 2.5 (Bowerman at [10]). He provides evidence that concurs with the general stages of development of the relevant machines as presented by Mr Oliver. Where Mr Bowerman and Mr Samat differ from Mr Oliver on their understanding of events relates primarily to the timing of conception of the inventive concept and the effect of the various contractual arrangements in place regarding intellectual property created via the building of the various DMP units.
31. In the most general sense, the case appears to boil down to questions around: whether the inventive concept was developed around 2007-2008 when Mr Oliver was conducting work as an employee of Mathers or later in the delivery of DMP 2.5 machines by Olitek; and how the contractual arrangements in place ensure title to that inventive concept. There is essentially no dispute that the inventive concept in question fundamentally relates to the use of look-up tables for pump operation (“base mapping”). Regardless, I will move through the stepped approach to considerations for such a dispute as articulated in UWA that I mention above at paragraph [11].
INVENTIVE CONCEPT(S)
32. Referring to my discussion of the specification earlier I note that the specification put forward more than one problem.
33. First, the specification discusses that it is difficult to obtain desired control over flowrate, composition, and backpressure in a fluid delivery system in the context of short “shot” time periods. Expanded upon in submissions (and also discussed in evidence) in particular by the requestor, this appears to relate to an issue of “pump slippage” which arises when back pressure in the pipework causes a pump to “slip” compromising the accuracy of fluid delivery. This issue appears to be exacerbated in short shot times. The solution to this issue put forward by the specification is that when using a two-pump fluid delivery system, first and second pump maps are used to control output signal on the basis of desired outcome parameters.
34. With this in mind I turn to the submissions of the parties where much of their arguments make reference to the concept of “base-mapping” which I interpret to simply be another terminology for the concept of using “maps” or “data-tables” to control the output signals of the two pumps to achieve desired output parameters. Example data tables for “base-mapping” or “pump-mapping” are included in the specification as follows, with FIGs 2A, 2B and 2C representing a pump map, backpressure valve control map, and interpolation step used to calculate output signals between discrete elements of a pump map, respectively.
35. Turning to the claimed invention, the specification clearly puts forward the solution to the described problem as being the use of two pump maps, one for each of the fluid delivery pumps. This much is reflected in independent claims 1 and 14, with dependent claims discussing further features supporting this “two-map” closed-loop control via for example, specific sensors, the use of a computer, and the general use of a look-up table.
36. Throughout submissions the applicant refers to the inventive concept in the context of their discussion of “base-mapping”, this being the use of a look-up table to control the pump speeds. Specifically, the applicant discusses the inventive concept in the following manner in their submissions (my emphasis):
“While this is not related to the invention disclosed in AU'253, James Oliver thought how what Mr Mathers was describing was similar to how an automotive fuel injector worked, a coil driven by a PWM to open and close very quickly, controlled by a fuel map and small corrections done with a downstream (air fuel) sensor. James Oliver then shared in confidence with Mr Mathers the idea of using a look up table to control the pump speeds similar to what a combustion engine does. This point was the conception of the Base Mapping invention. James Oliver's assertion that he did not pursue the inventive concept because he did not have a DMP to work on does not mean that the inventive concept does not exist. The inventive concept of Base Mapping is equally applicable in other types of MPU and other fluid mixing and delivery systems more generally.”
37. The requestor also refers to base mapping throughout their submissions noting that the dispute does not appear to concern the relevant inventive concept itself. While much of their written summary of submissions appears to focus upon base mapping in the context of the pumps and the issue of pump slippage, when pressed at the hearing on the specific form of the inventive concept the requestor articulated the inventive concept to be “using the idea of base mapping being a data table that tells you what the desired parameters are, in a control system for a mobile processing unit such as the DNAP 2.5”. This is a somewhat broader articulation than merely using base mapping for pumps and appears to have arisen at the hearing due to the nature of the evidence filed having focussed upon base maps for pumps, and the fact that the claims were amended in the international stage to increase focus upon a look-up table for a hose retractor as opposed to fluid pumping. Regardless, there is no real focus in the requestor’s submissions nor their evidence that suggests hose retractor base mapping is relevant to the present dispute. I will discuss hose retraction in a little more detail below.
38. With regard to the problems of short burst operation and pump slippage, it is clear to me that the specification suggest that in the context of fluid delivery using known two-pump fluid delivery systems, it is an inventive concept put forward by the specification to control fluid pumps using “base-maps” or ”look-up tables” (also referred to in submissions and the specification as “pump maps”) to achieve desired fluid flow characteristics. By determining settings that overcome what I will term mechanical issues arising in short operation times, fluid is controlled and delivered in an improved manner. I do not consider the specification reasonably puts forward the idea that the specific data in any FIGs 2A to 2C forms part of the inventive concept. This data is relevant to particular devices used in a particular context of fluid delivery (i.e. mere reduction to practice), and that the inventive concept put forward is in the context of a generally described two-pump system.
39. Hence, I conclude that an inventive concept of the present specification is using “base-maps”/“look-up tables” to achieve desired fluid flow characteristics in a known two-pump fluid delivery system. While the specification discusses specific application in mining explosives delivery, the nature of the problem described, and the breadth of the concepts described and claimed makes clear that this inventive concept is not limited to this specific application but to fluid delivery more generally.
40. In a similar vein to the case in Polwood where there were two “hearts” to the inventive concept, it appears that there is not simply one inventive concept described in this specification. A second problem is put forward by the specification in that the speed of withdrawal of a hose in a drill hole is usually determined by trial and error. This problem is similarly solved using a look-up table to control hose retraction. However, it is significant to note that the case put forward by the requestor’s submissions and evidence does not place any meaningful focus upon this aspect of the specification in the context of the determination of entitlement. For the purpose of assessing entitlement to the present application, guided by the considerations put forward in UWA I will only have regard to the inventive concept in relation to base maps for pumps and fluid delivery.
41. I also note that inventorship is not in question in any material manner in the present matter. Thus, the second step of UWA considerations reduces to a question of the timing of conception.
CONCEPTION
42. There are generally two propositions put forward for the timing of the inventive concept, these both having been addressed by the requestor and the applicant in their submissions. The first coincides with the period in which Mr Oliver and Mathers provided DNAP with DMP 1.0 units based on the Mini SSE in and around 2007 and 2008. This is the time at which Olitek contend that the inventive concept was developed. The second timing coincides with the commissioning of DMP 2.5 units around 2013. It is this time that the DNAP contend that the inventive concept was developed.
43. The earliest reference to using look-up tables for pump control was in 2007. In his declaration Mr Oliver notes at paragraphs [28] – [30]:
“In 2007 I spoke with Jon Bowerman of DNAP on why the DMP used “POT Settings” (which is essentially a hydraulic valve opening output that in-turn fed the hydraulic motors that drove the process pumps, hose feed wheels and other critical process elements) to control the speed of the pump. Jon’s reply was because it is a carry-over from the older units that used dial potentiometers to control the speed of the pump and hence the flow of the trance (sic) chemicals. I asked Jon why they still use that technology and why the system hadn’t been automated so the operator could select a flow rate. Jon’s comments were as follows:
(a) because the operators are familiar with POT settings, it is relatable, and it keeps
the system simple; and
(b) the process takes between 3-5 seconds to complete, a closed loop control system cannot respond quickly enough. Some have tried however the process is complete before a steady flow cannot be achieved in this time.
Days after this conversation, it inspired me to think that perhaps if a traditional closed loop feedback system was not quick enough to respond and control accurately, perhaps more of an automotive combustion engine style fuel control system with look-up tables could be utilised.
Because I was part of the mechanical design team, I did not peruse (sic) the idea at the time as it was made clear there was very little appetite within DNAP to move to a flow control system away from the “POT Settings”. I did not disclose any of the invention details until an in-confidence conversation later with Norm Mathers (of Mathers).”
44. The applicant primarily argues that the “base mapping” invention was invented by James Oliver in 2008 around the time of that conversation with Norm Mathers. They point to the Oliver declaration at paragraphs [34] – [38] which states:
“In 2008, I was sitting with Mr Norm Mathers (of Mathers), doing some contract drafting on the DMP hydraulic circuit and manifold for the DMP1.0.
Mr Mathers and I began to talk about how the amplifier / drivers on the hydraulic coils are an inefficient way to control the flow control through the hydraulic valve.
Mr Mathers shared an idea that he had many years before, that perhaps in future versions a Pulse Width Modulation (PWM) drive directly from the Programable Logic Control (PLC) (the industrial computer that hosts the software, monitors critical sensors in the machine/process and distributes output signals and drives to control the machine/process) could be used on a conventional coil thereby reducing cost and simplifying the system.
While this is not related to the invention disclosed in AU'253, during that conversation I thought how what Mr Mathers was describing was similar to how an automotive fuel injector worked, a coil driven by a PWM to open and close very quickly, controlled by a fuel map and small corrections done with a downstream (air fuel) sensor. I then shared in confidence with Mr Mathers the idea of using a look up table to control the pump speeds similar to what a combustion engine does. We subsequently opened the Mini SSA P&ID drafted years before and we both thought it was a plausible idea. However no further development work was being conducted on the DMP so no development ever conducted.
This was the 2008 genesis of the invention disclosed in AU'253.”
45. It is clear to me that Olitek argues that the inventive concept, which I have determined to be using look-up tables to achieve desired fluid flow characteristics in a known two-pump fluid delivery system, was conceived as being a plausibly workable invention by Mr Oliver in 2008. The evidence of Mr Oliver points to using a lookup table to control a device such as the Mini SSA which appears to also be a two-pump fluid delivery system. Olitek submit that the collaborative work between Olitek and DNAP in implementing base mapping into the DMP 2.5 was a matter of “James Oliver directing DNAP employees in respect of testing and implementing the [base mapping] software upgrade only” in as much as the contribution by DNAP being a matter of simple and routine experimentation or mere verification – essentially, a reduction to practice.
46. With respect to invention timing DNAP argues (their emphasis):
“…that it was not until 2013 that Messrs Oliver and Paech’s invention arose; until then, any idea was abstract. It is trite law that, to qualify as an invention, an abstract idea must be applied or implemented to produce a particular practical and useful result in a field of economic endeavour: see, e.g., National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 at 264. In this regard, the following finding by Burley J in Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2020] FCA 408 at [270] in relation to the inventive concept is apposite:
[T]he message conveyed to Mr Del Papa was, at its highest, the idea that the POD system could possibly be adapted in the way suggested in the proposal. In my view the invention disclosed in the specification and the subject of the claims is not that obvious, high level idea, but rather a more prosaic, practical implementation. It is the reduction to that concept to a working apparatus that is the invention: Polwood at [33].”
47. I find reference to the matter in National Research Development Corporation v Commissioner of Patents at this point a little peculiar. That case is well-known as laying 20th century foundations for considerations of patentability of inventions under the ground of manner of manufacture, but it does not concern inventorship in any way. The evidence of Mr Oliver is supportive of the position that the broad idea to use look-up tables to achieve desired fluid flow characteristics in a known two-pump fluid delivery system occurred by 2008. I understand DNAP’s position to be that at that point, the inventive concept was simply: a high-level idea; a vague proposal; merely positing desiderata; and thus, not yet an inventive concept. In this regard, I summarise DNAP submissions as follows:
· Mr Oliver admits that “Olitek went on to actually implement the invention disclosed in AU’235 in the DMP 2.5 machines”.
· For the actual invention to arise in the form that is represented in the Application, DNAP submit that it was necessary for more detailed work on the DMP 2.5 unit to occur, which allowed the actual functionality of the invention to be tested and refined within the DMP 2.5 unit. Reference is made by DNAP to Mr Oliver’s statement regarding earlier conception that “no further development work was being conducted on the DMP”. They note that there is no dispute that the first appearance of the invention in a device was the DMP 2.5.
· “…the invention could not and did not arise until, we say, July 2014 when the first DMP 2.5 unit was commissioned and transported to the Lady Loretta mine site”.
· As per the consideration that the inventive concept (according to UWA) marks the boundary between invention and verification, “[n]o verification of the present rendition of the inventive concept would have been possible until 2013 because the inventive concept could not have existed in this form”.
· “To the extent that the Patent Application contains claims broader than those appearing in the DMP 2.5 unit, that is irrelevant to the present analysis. As explained in [UWA] at [1424], ‘and invention is essentially described by the inventive concept’. Here, the one manifestation of the inventive concept appeared in the DMP 2.5. That is sufficient to show that the DMP 2.5 contained the invention that is the subject of the Patent Application. This is consistent with what was said at [UWA] at [1439]”.
· “[T]he invention formed part of the DMP 2.5 unit and the time of the invention most likely occurred at some point between the issue of PO 595 and the completion of the first DMP 2.5 units, which were ‘supplied’ pursuant to the T&Cs of that PO”.
48. Firstly, the fact that the invention was actually only implemented in the DMP 2.5 machines is clearly insufficient as a factual basis to place conception at that point in time. As noted with approval in UWA, French J made clear in his first instance decision that inventorship ends at the time of conception and is distinct from verification and reduction to practice, whether that is a single reduction to practice, or many. He referred to the following principles as established by US appellate courts:
· Conception is the touchstone of inventorship, the completion of the mental part of inventions.
· Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
· An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
· It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
49. It is clear that all that is required to finalise the conception of an inventive concept is the formation of a definite and permanent idea in the inventor’s mind, not necessarily including a reasonable expectation that invention will work as intended. Anything thereafter may simply be a reduction to practice using ordinary skill, without extensive research or experimentation. Mr Oliver has made clear that by 2008, in the context of the two pump systems used in the DMP type machinery, he had the idea that “look up tables could be utilised”. He noted that he subsequently considered “the Mini SSA P&ID drafted years before and we both thought it was a plausible idea”. This idea maps directly on to the inventive concept put forward by the specification. At the time Mr Oliver and Mr Mathers also considered that there was a reasonable expectation of the invention working.
50. The work conducted in and around 2013 in the implementation of the inventive concept in the DMP 2.5 machine appears to have begun with a discussion between Mr Oliver and Mr Bowerman. Mr Oliver states the following at paragraph [52] of his declaration:
“During the process of coding the new control system conversion to the new hardware,
I, James Oliver shared my idea (the invention disclosed in AU'253) with Jon Bowerman (of DNAP) in commercial confidence. In essence, I introduced a new concept, not previously discussed with DNAP, on how we may be able to achieve flow control by using a fast response look up table followed by minor closed loop corrections in order to enable the operator to control flow, rather than POT settings.”
51. Further, it appears clear on the evidence that there was an agreement to incorporate the “base mapping” into the DMP 2.5 as reflected in at [53] and [54] of Mr Oliver’s declaration.
“During my communication with Jon Bowerman, it was clear that he was hesitant to trial any new functionality on the DMP2.5 as this would be moving away from original scope and introducing unacceptable risk. As a mitigation strategy, I suggested that we implement 2 operation modes as a trial of the invention. First mode of operation being manual, as per the logic of a POT setting on the traditional control system. The second mode being the invention disclosed in AU'253 with loop lookup table & last known value for fast response followed by closed loop for control.
Jon agreed that we could put the mode into the DMP2.5 at our own risk and expense without exposure to Dyno Nobel or the DMP2.5. Jon’s instruction to Olitek was it must be able to be operated in mode 1 as a base case without mode 2 effecting any functionality of mode 1. Olitek accepted this risk and proceeded to implement the AU'250 base mapping functionality. It should be noted that there was also some other software functionality agreed to at this point being data logging, SSS automation and other nice to have functions unrelated to the implementation of the invention.”
52. Following this, work was conducted to arrange for implementation of the base mapping functionality into the DMP 2.5 which is alleged to have been paid for according to the submissions of DNAP and evidence of Mr Samat at [46]. In this regard, it is not in contention that Mr Oliver, assisted by Mr Paech, was involved in the development of software and on-site testing in relation to base mapping. It is also clear that specific data generated for the functioning of the base maps and reflected in FIGs 2A, 2B and 2C of the specification also formed part of this implementation work.
53. However, it is significant that the evidence before me does not establish that there was anything other than ordinary skill applied at this stage to reduce the inventive concept of using look-up tables to achieve desired fluid flow characteristics in a known two-pump fluid delivery system to practice without extensive research or experimentation. On the information before me what appears to have occurred is a determination of hardware and software required to implement the inventive concept, along with the determination of relevant data to be used in the context of the particular application of the inventive concept to the bore hole delivery scenario involving explosive fluids.
54. To this extent, the inventive concept I have identified and that had been formulated by 2008 is not a mere vague idea. While one may suggest that this concept is not particularly complex in that it is little more than a direction to apply base mapping to two-pump fluid delivery systems, it is a specific step to address a technical issue in a such machinery. The inventive concept maps directly onto the unrefuted recollective evidence put forward by Mr Oliver. The evidence put forward by the DNAP does not demonstrate any use of non-ordinary skill in putting the inventive concept into practice following a conception by the point in time of 2008. While work may have been paid for by DNAP in the inclusion of the inventive concept into the DMP 2.5, this does not mean that the inventive concept had not already been conceived as formed in the mind of Mr Oliver as definite and permanent idea of a complete and operative invention that could thereafter be applied in practice.
55. Hence, I conclude that the time for conception of the inventive concept was by 2008, by Mr Oliver. I need not be any more specific in time for the purposes of the present matter. I note that Mr Paech does not appear to be an inventor in relation to the relevant inventive concept.
CONTRACTUAL OR FIDUCIARY RELATIONSHIPS
56. To reiterate my conclusions above I found that the relevant inventive concept to the present matter is base-maps/look-up tables to achieve desired fluid flow characteristics in a known two-pump fluid delivery system, and that this inventive concept was conceived by 2008. I must now determine how the many contractual or fiduciary relationships effect the proprietary rights in the invention.
Period 1: 2007/08
57. There were a number of contractual devices in place in this period that are relevant to consider. In this period, work was conducted that involved the development of the DMP 1.0 unit in a collaboration between Mathers and DNAP. Work done by Mathers (as a consultant) in this period was done in the presence of the following consultant services agreement and two purchase orders (Bowerman at [18] and [19] and annexures JB-6 to JB-8). While I see no date assigned to the consultant services agreement, purchase orders are dated in September and December of 2007:
i.A consultant services agreement between Mathers and DNAP which states at clause 8.2:
The Consultant
a) Acknowledges that all right, title and interest in all information is and shall be owned by the Company; and
b) Without derogating from sub-clause (a), in the case of all data, output and materials created by the Consultant in the course of performing its obligations under this Agreement, hereby assigns to the Company all existing and future Intellectual Property in the world in such data, output and materials as and when they are created
Information is defined as:
… the business, sales, marketing, technical and scientific information, plans, designs and data in whatever form held by the Company, which is supplied to the Consultant.
ii.Purchase orders 4500325557 (PO557) and 4500388506 (PO506) where the following clauses 10 and 17 applied to both orders:
10. Intellectual Property
The Seller shall:
(a) grant to the Buyer an irrevocable, royalty-free and perpetual licence to use (and allow others to use) the intellectual property in the Goods or any work to be performed by the Seller (including any copyright, patent, trademark and design) for any purpose in connection with the project for which the Goods are to be used by the Buyer; and
(b) indemnify the Buyer in respect of any loss, damage, expense, claim or liability suffered or incurred by the Buyer as a result of any claim by a third party alleging infringement of any intellectual property rights in relation to the Goods or any work to be performed pursuant to the Purchase Order.
17. Buyer's Rights in Specifications, Plans, Process Information etc
Any specifications, plans, drawings process information, patterns, designs or any other information supplied by the Buyer to the Seller in connection with the Purchase Order shall remain the property of the Buyer, and any information derived therefrom or otherwise communicated to the Seller in connection with the Purchase Order shall be kept confidential and shall not, without the written consent of the Buyer be published or disclosed to any third party, or made use of by the Seller except for the purpose of implementing the Purchase Order or as required by law. Any specifications, plans, drawings, process information, patterns or designs supplied by the Buyer to the Seller must be returned to the Buyer on request by the Buyer. Any invention or improvement made by the Seller attributable in whole or in part to such specifications, plans, drawings, process information, patterns or designs shall be the property of the Buyer.
58. Firstly, regarding the consultant services agreement Olitek submit that:
“… if James Oliver or Mathers developed the Base Mapping invention either under the Consultant Agreement (or the Base Mapping invention arose in respect of the course of the performance of the Consultant Agreement), then DNAP would own intellectual property rights in the Base Mapping invention. However, the Consultant Agreement does not expressly or impliedly oblige Mathers or James Oliver to develop the Base Mapping invention, so that invention cannot be material owned by DNAP under the Consultant Agreement.
In fact, under the Consultant Agreement, Mathers is obliged to provide a project scope and a detailed design and documentation for the truck body and services for DMP 1.0 (refer to analysis at Annexure 1). The use of the words 'all existing and future Intellectual Property .. ' at clause 8.2(b) of the Consultant Agreement is limited to materials created by the Consultant in the course of performing its obligations under this Agreement and therefore does not extend to intellectual property created outside of the Consultant Agreement. It is Olitek's submission that the Base Mapping invention was made outside of any of the various agreements or POs between Mathers/Olitek and DNAP.
In respect of the work performed under the Consultant Agreement, excluding the Base Mapping invention which was not a deliverable and did not arise under the Consultancy Agreement, Olitek accepts that DNAP owns intellectual property rights in the deliverables under that Agreement.”
59. I consider that Olitek makes the valid observation that the consultant services agreement is for intellectual property created under obligation of that agreement. On the evidence before me I see no obligation present in respect of the base-mapping invention. The most that occurred in respect of the base-mapping invention and an interaction between DNAP and Mathers in this period appears to be a conversation between Mr Bowerman and Mr Oliver about why “POT Settings” were used to control pump speed (Oliver at [28]). I can see no obligation for Mathers to assign any IP in any data, output and materials relevant to base-mapping at this point in time. For completeness, I further note that the right and title to information owned by DNAP extends only to material held by DNAP and provided to Mathers. Thus, it is clear that the consultant services agreement does not give rise to property rights for DNAP in the inventive concept.
60. Regarding the purchase orders of late 2007, clause 10 refers to intellectual property vesting in Mathers being licenced to DNAP while clause 17 identifies that any invention or improvement made by the Seller attributable in whole or in part to such specifications, plans, drawings, process information, patterns or designs shall be the property of the Buyer. Regarding clause 17 Olitek submit:
“… no evidence was provided that establishes that the Base Mapping invention or improvements made by Mathers or James Oliver [were] attributable in whole or in part to such specifications, plans, drawings, process information, patterns or designs supplied by DNAP to Mathers or James Oliver... It appears that DNAP seems to be drawing a long bow here, trying to claw at industry experience from many years before implementation, claiming that just because James Oliver and Mathers had been involved with the Mini SSE project with DNAP that DNAP automatically own the unrelated Base Mapping invention.”
61. I understand DNAP’s responsive submission to focus on an assertion that the base mapping invention was in particular, attributable in whole or in part to process information provided by DNAP to Mathers.
62. I do not consider the evidence on file sufficient to support DNAP’s position. I am essentially being invited to infer that there is particular process information that was provided by DNAP to Mathers and it is, on balance, the provision of this process information that has caused the inventive concept to be formulated.
63. I arrive at my position that on balance I am not convinced that information provided by DNAP to Mathers caused the invention, by reference to evidence provided by Mr Oliver of his knowledge of the kind of units used in the context of the present invention prior to Mathers’ engagement to develop the DMP 1.0.
64. In his declaration Mr Oliver notes that at [17] – [25] that:
“I have personally played a part in the design and manufacture of all units manufactured based on and starting with the introduction to a Swedish design team in 2005. I provide the following timeline:
Late 2005
Fred Schatten of Dyno Nobel introduces James Oliver and Daniel Bleakley (then employed by Mathers Hydraulics Technologies Pty Ltd (Mathers)) to the Swedish
team that manufactured the Mini SSE (the predecessor to the DMP) in Europe.
Late 2005 - Early 2006
James Oliver and Daniel Bleakley conduct extensive research including regular interviews with the Swedish team and source an incomplete pack of drawings (in Swedish) of the Mini SSE. Extended research and interviews conducted to piece together the missing information from the Swedish drawing pack and photos of the Mini SSE.
Early to Mid 2006
James Oliver and Daniel Bleakley research and design a version of the Mini SSE
based on information provided by the Swedish team.
Late 2006
Mathers build and commission the first Mini SSE with the engineering assistance of James Oliver and Daniel Bleakley (whilst employed by Mathers. Followed by 4 x Units including 1 x Production (Uphole) cage unit).
Early 2007
James Oliver led mechanical study to reduce cost and improved functionality of Mini
SSE Document attached as Attachment 3 - DynoMiner Design Update Proposal
2007
An additional 4x Mini SSE Units (8 in total) manufactured with design updates performed by a mechanical design team led by James Oliver (Mathers) and electricals and controls team led by Gary Goble (Mathers). Evidence of Process circuit design by James Oliver in 2007 on improvements and iterations of the Mini SSE.
It is to be noted that the piping and instrumentation diagram (Mini SSE P&ID) (copy attached above [not provided in this decision]) was drawn by James Oliver and Daniel Bleakly in 2005 and provided by Mathers to DNAP. The attached Mini SSE P&ID is the basis for all subsequent P&ID's for all subsequent versions of the DMP, albeit minor modifications were subsequently made.
Mid 2007 – 2008
DMP1.0 Design updates by Mathers, design updates inspired by the cost reduction
and improvements. Mechanical Design team lead James Oliver, Engineering Manager
Peter Norwood, Electrical and controls lead Gary Goble (all of Mathers)…”
65. With this historical exposure of Mr Oliver to the relevant technology in mind, I consider it at least equally likely, if not more likely, that prior to the receipt of any information from DNAP in the context of the DMP 1.0 development under the purchase orders, Mr Oliver was already equipped with knowledge of the function of Mini SSE upon which he would be aware that “POT settings” are used. It appears to be this information that is fundamentally a starting point for the invention’s conception. No particular information is identified by DNAP as being provided under the purchase order and being causative of the formulation of the inventive concept.
66. As an aside, it appears reasonable to postulate that the fact that Mr Oliver had a discussion regarding the use of POT settings with Mr Bowerman, begs a question as to what information lead to Mr Oliver’s knowledge of POT settings. However, it remains that no clear connection is drawn by DNAP between a particular piece of process information provided under the purchase orders of late 2007, and the inventive concept. I do not believe DNAP have discharged their onus in this regard.
67. Hence, I conclude that under the arrangements of period 1, DNAP is not an eligible person.
Period 2: 2011/12
68. In this period, DMP 2.0 units were commissioned. The agreement between DNAP and Olitek included the following definitions and clauses under a 2011 contract (Samat at [38] and [39]):
Project IP means all Intellectual Property Rights (present or future) created, discovered or coming into existence as a result of, for the purpose of, or in connection with the supply of Goods and the provision of any Associated Services or this Contract (including all Intellectual Property Rights developed by the Contractor in supplying the Goods and providing any Associated Services and any Intellectual Property Rights created or discovered by the Contractor in Technical Materials provided by the Contractor to The Company).
Clause 3.42
…
(d) AlI Project IP shall be vested in The Company [DNAP] and shall be The Company's property as and when created and the Contractor [Olitek] assigns all rights, title and interest in and to the Project IP to The Company (including but not limited to any Project IP created prior to or after the date of this Contract).
..
(f) The Contractor must not disclose, reproduce or otherwise deal with the Project IP or allow any other person to do the same, for any purpose, other than to provide the Goods and any Associated Services pursuant to this Contract.
…
(i) The Contractor agrees to disclose to The Company all Project IP as and when it is created.
…
(k) The obligations in this Clause continue after this Contract is terminated.
69. Key to this period is the term “Project IP”. Project IP is all Intellectual Property created, discovered, or coming into existence as a result of, for the purpose of, or in connection with the supply of goods and services of the contract. This contract postdates the conception of the inventive concept. There was no contractual obligation in this period in respect of the base mapping invention, and it does not appear on the evidence that base mapping was even discussed or “worked upon” in this period.
70. As such, I conclude that under the arrangements of period 2, DNAP is not an eligible person.
Period 3: 2012/13
71. In this period, the commissioning of DMP 2.5 units was governed by a further two purchase orders (PO4500685577 and PO4500751595, in Samat at annexures SS-4 and SS-5) the first of which repeated clauses 10 and 17 identified above at paragraph 57. For reasons already provide in respect of period 1, I do not consider clauses 10 and 17 operable to provide entitlement to DNAP. Most relevantly, clause 17 requires [a]ny invention or improvement made by the Seller attributable in whole or in part to such specifications, plans, drawings, process information, patterns or designs shall be the property of the Buyer. I have already determined that period 3 postdates the inventive concept and as such, it cannot be the provision of such information above in the context of a later purchase order that caused the inventive concept. As per earlier in my decision, I consider the activities in this period to be nothing more than a mere reduction to practice.
72. DNAP points out that it is clear that the purchase orders covered the design of DMP 2.5 units, and that payment included amounts for software and control upgrades (Bowerman at [33]). They further refer to the terms in the later purchase order identified above as including the following clause at 8.1:
Any intellectual property rights in an invention or improvement made by the Seller arising from performance of the Supply or attributable in whole or in part to such specifications, plans, drawings, process information, patterns or designs [supplied by DNAP] will vest in the Buyer [DNAP] as and when created and the Seller [Olitek] must assign all rights, title and interest in such invention or improvement to the Buyer [DNAP].
73. Similarly to the inability of the evidence in demonstrating the inventive concept as attributable in some way to for example, particular process information, I cannot find that the inventive concept was “arising from the performance of the Supply” in respect of the purchase orders in the third period. I consider that Mr Oliver had, by 2008, a formation in the mind of a definite and permanent idea of the complete and operative invention that was thereafter applied to practice in the DMP 2.5. The contractual arrangements do not appear to vest such pre-existing intellectual property with DNAP. Instead, I reiterate the observation made by Olitek in their submissions in relation to the provision of the DMP 2.5 product to DNAP where they acknowledge that the base mapping invention was licenced to DNAP in becoming part of the DMP 2.5. This is said to be affected in accordance with the presence of clause 10 that I identified above at paragraph 57, in a purchase order for the DMP 2.5.
74. I conclude that under the arrangements of period 3, DNAP is not an eligible person.
CONCLUSION
75. I conclude that on the evidence before me, Olitek Pty Ltd is the sole eligible person in regard to the inventive concept of using base-maps/look-up tables to achieve desired fluid flow characteristics in a known two-pump fluid delivery system, developed around 2008. No contractual arrangements provide eligibility to Dyno Nobel Asia Pacific Pty Ltd. It follows that I must refuse the application for a declaration under s36(1).
76. The application for a declaration under s36(1) was filed of the order of 6 months after the receipt of the first examination report. The final date for acceptance was set by the first examination report to be 1 February 2022 which has passed. In accordance with paragraph 13.4(1)(f) of the Patent Regulations, I herein provide a further 6 months from the date of this decision for the applicant to gain acceptance.
COSTS
77. Both parties sought their costs. I see no reason to depart from the normal approach to award costs against the unsuccessful party. As a such, I award costs in accordance with Schedule 8 of the Patent Regulations against Dyno Nobel Asia Pacific Pty Ltd.
Dr N. R. Madsen
Deputy Commissioner of Patents
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