iGas Operations Pty Ltd v Pipe Ex Pty Ltd - [2025] APO 27

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
iGas Operations Pty Ltd v Pipe Ex Pty Ltd
Pipe Ex Pty Ltd v Intelligas Technology Developments Pty Ltd
[2025] APO 27

Patent Application: 2023201549 (s59) & 2021377198 (s36)

Title:Devices to prevent loss of liquid on high point vents & High-point vent system

Section 59 Opposition
Patent Applicant:                   Pipe Ex Pty Ltd
Opponent:   iGas Operations Pty Ltd
Section 36 request
Patent Applicant  Intelligas Technology Developments Pty Ltd
Requestor  Pipe Ex Pty Ltd
Delegate:  Andrew Burgess
Decision Date:  11 August 2025
Hearing Date:  9 April 2025

Catchwords: PATENTS – opposition to the grant of the patent under s 59(a)(i) and 59(a)(ii) – entitlement – identification of inventive concept – date of conception – employment agreement and duty to invent – effect of resignation and notice period – opposition successful – opportunity to amend – operation of s 33 – costs awarded
Request under s 36 – seeking declaration that nominated person not an eligible person – identification of inventive concept – date of conception – employment agreement and duty to invent – request unsuccessful – costs awarded

Representation: Counsel for Pipe Ex Pty Ltd: Mr Joseph Elks
Patent attorney for Pipe Ex Pty Ltd: Dr Andy Mukherji and Dr Vanessa Yeung of MBIP
Patent attorney for the iGas & Intelligas: Katrina Crooks and Nadine Martino of Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2023201549 & 2021377198

Title:Devices to prevent loss of liquid on high point vents & High-point vent system

Patent Applicants: Pipe Ex Pty Ltd & Intelligas Technology Developments Pty Ltd
Date of Decision: 11 August 2025
DECISION
I am not satisfied that Pipe Ex Pty Ltd is an eligible person in respect of AU2021377198, and therefore, the S36 request is unsuccessful.
I am satisfied that Pipe Ex Pty Ltd is not an eligible person in respect of AU2023201549. Therefore, the S59 opposition is successful.
I allow two (2) months from the date of this decision for Pipe Ex Pty Ltd to amend the AU2023201549 application to attempt to overcome the grounds of opposition.
In the matter of the request under section 36 of the Act in respect of application 2021377198, I award costs according to schedule 8 against the requestor, Pipe Ex Pty Ltd.

In the matter of the opposition under section 59 of the Act to the grant of a patent on application 2023201549, I award costs according to schedule 8 against the applicant, Pipe Ex Pty Ltd.
REASONS FOR DECISION
Background

Patent application AU2021377198 (AU198 application) was filed by Intelligas Technology Developments Pty on 11 November 2021 under the provisions of the Patent Cooperation Treaty as PCT/AU2021/051337, first published as WO2022/099368 A1. The AU198 application claims priority from provisional application AU2020904128 filed on 11 November 2020.
On 28 June 2024, Pipe Ex Pty Ltd filed an application under Section 36 requesting the Commissioner to declare that Pipe Ex Pty Ltd is an eligible person alone or, in the alternative, in conjunction with Intelligas Technology Developments Pty in…

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.

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Details

Case: [2025] APO 27
Decision Date: 11 August 2025

CaseChat Overview and Summary

In the matter of iGas Operations Pty Ltd v Pipe Ex Pty Ltd, the Australian Patent Office addressed two key issues regarding the eligibility of Pipe Ex Pty Ltd as the inventor for two patent applications: AU2021377198 and AU2023201549. The decision was made by Andrew Burgess, the Delegate of the Commissioner. The primary focus was on determining whether Pipe Ex Pty Ltd was entitled to the patent applications, particularly in light of Mr David Nichols' employment with iGas Operations Pty Ltd. The Commissioner found that Pipe Ex Pty Ltd was not eligible for AU2021377198, leading to the unsuccessful Section 36 request. For AU2023201549, the Commissioner ruled that Pipe Ex Pty Ltd was not the eligible person for the invention, resulting in a successful Section 59 opposition. The Commissioner granted Pipe Ex Pty Ltd two months to amend the application for AU2023201549 to overcome the grounds of opposition. Costs were awarded against Pipe Ex Pty Ltd in both matters. The decision highlights the importance of understanding the inventive concept, the role of employment agreements in determining inventorship, and the impact of resignation and notice periods on the duty to invent.

Orders