Jennifer Anne Davidson v Gregory Industries Limited

[2005] APO 55

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 2003903213 in the name of Jennifer Anne Davidson

Title:          A Chair

Action:          Request under 36(1)(b) of the Patent Act 1990 that Gregory Industries Limited is an eligible person

Decision:          Issued 8 December 2005.

Abstract

Mr Andrew Davidson is husband to the inventor and was a director of the requestor at the relevant time.  The requestor alleged that Mr Davidson used his position within the company to assist his wife to further develop the invention and that this assistance was sufficient to also make him an inventor. 

Gregory Industries Pty Ltd argued that it is, via the operation section 15(1) (b) of the Patents Act entitled to have the invention assigned to it as co-inventor along with Jennifer Anne Davidson. Hence, Gregory Industries Pty Ltd argued that it was an eligible person.

Prima facie, it appeared that Andrew Davidson, as a Director of Gregory, contributed his corporate knowledge to the invention.  However, as Jennifer Anne Davidson was found to be the inventor of the “speed bump” chair, the onus of proof shifted from the patent applicant to the requestor. 

Gregory was unable to discharge its burden of proof.  There is insufficient evidence to establish, on the balance of probabilities, that before the priority date Mr Andrew Davidson contributed to the invention in a material way.  While there is some evidence that he may have upholstered some chairs, organised Express Chair Repairs to upholster some chairs and / or provided data to Mrs Jennifer Davidson, this evidence was insufficient to establish that he contributed, prior to the priority date, in a material way to the invention described in the provisional application. 

Consequently, the declaration sought under section 36 (1)(c)(ii) that Gregory Industries Pty Ltd is an eligible person was not made.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 2003903213 by Jennifer Anne Davidson and a request under 36(1)(b) for a declaration that Gregory Industries limited is an eligible person      

BACKGROUND

1. A provisional patent application, 2003903213 was filed on 25 June 2003.  On the 22 June 2004, a PCT application PCT/AU2004/000818 that claimed priority from the provisional application was filed and was published on 29 December 2004 as WO2004112544.  As the provisional application is now open to public inspection, no confidentiality issues arise regarding disclosure of its contents.

2. On 21 May 2004, the requestor, Gregory Industries (herein after called Gregory) filed a notice under section 36.  A statement of claim was subsequently filed on 17 June 2004.

3. The matter was set down for a hearing on 1 September 2005 in Canberra.  Greg Turner, patent attorney of Spruson & Ferguson, attended on behalf of the patent applicant Jennifer Anne Davidson.  Rebekah Gay, patent attorney of Shelston IP, attended on behalf of the requestor Gregory Industries Limited.

   STATEMENT OF CLAIM

4. In its statement of claim Gregory alleged that Mr Andrew Davidson, a former director of Gregory and husband of the inventor, Jennifer Anne Davidson obtained the invention as a result of a breach of confidential information and as a breach of his duties as a director of Gregory.

5. However, in its submissions at the hearing, Gregory stated that it did not dispute that Mrs Jennifer Anne Davidson is an inventor.  Rather, it alleged that Mr Davidson is also an inventor and that Gregory is entitled to the assignment by virtue of his employment with Gregory. 

6. It would appear that the main thrust of Gregory’s submissions is that Mr Davidson used his position within the company to assist his wife to further develop the invention and that this assistance is sufficient to also make him an inventor. Thus Gregory submitted that it is, via the operation section of 15(1) (b) of the Patents Act, entitled to have the invention assigned to it. In effect, Gregory submitted that it is entitled to be a co-applicant along with Jennifer Anne Davidson. The effect of these submissions is that Gregory is seeking a declaration under section 36 (1)(c)(ii) that it is also an eligible person as it would be entitled by section 15(1)(b) to have the invention assigned to it.

   THE INVENTION

7. The invention relates to a chair.  The PCT abstract and accompanying drawing is as follows:

   
   “A chair (1), including a seat (5), wherein the seat (5) includes a barrier zone (10) dividing said seat (5) into a front seat portion (15) and a rear seat portion (20), said rear seat portion (20) being of a material more easily deformed than said barrier zone (10), such that in use, movement of the user’s buttocks from said rear seat portion (20) towards said front seat portion (15) urges the rear seat portion (20) towards said barrier zone (10), deforming said rear seat portion (20) and inhibiting said buttocks from moving towards said front seat portion (15).”

8. The specification describes a number of preferments: Most notably, the foam densities are described as a preferred feature.

   ·“Preferably, said barrier zone is of a material having a higher density than said rear seat portion material.

   ·Preferably, said front and rear seat portions are of the same density.

   ·Preferably, said barrier zone is located between 25% to 60% along a length of said seat when measured from a back edge of said seat to a front edge of said seat.

   ·Preferably, said barrier zone is a ridge extending longitudinally completely across a width of said seat.

   ·Preferably, said barrier zone is a ridge extending longitudinally partially across a width of said seat.

   ·Preferably, said barrier zone is a moulded part of said seat.

   ·Preferably, said barrier zone is 40 to 100 mm wide.

   ·Preferably, said barrier zone is located below a top surface of said seat.”

   The specification describes a preferred embodiment incorporating the above features.

   “The barrier zone 10 or “speed bump” should be of a material having a higher density than the material of the front and rear seat portions 15,20.  The barrier zone 10 is a ridge which extends longitudinally, either completely or partially across the width of the seat 5.  In the preferred form, the ridge 10 would be approximately 40 to 100 mm wide and located between 25 to 60 percent along the length of the seat 5 when measured from the back edge 22 of the seat 5 to the front edge 23 of the seat 5.  It is also possible that the ridge 10 be integrally formed or a moulded part of the base 25 of the seat 5.

9. The specification indicates the importance of the “speed bump” in promoting good posture. 

   This configuration advantageously promotes good posture and user comfort without the disadvantages of load or pressure on inappropriate areas of the body such as knees or thighs and without the need for complex upholstery configurations which increase manufacturing costs, complexity of construction and can pose a potential hygiene problem by trapping dirt and other unwanted materials.  The chair 1 takes into consideration the complex relationship between correct function, user comfort, bump shape, bump density relative to cushion density, and bump height relative to the height of the cushion.”

10. While the abstract and drawing were extracted from the PCT filing, the contents extracted are identical to the disclosures contained in the provisional specification.

11. In the evidence, this chair is known as the “speed bump chair” because of its distinctive “barrier zone” that prevents the users buttocks from sliding from the rear portion of the seat towards the front portion of the seat.  The barrier zone may be made of a material that has a higher density than the rear seat portion and the front and rear portions of the seat may have the same density. 

    EVIDENCE

    The Requestor

12. Gregory’s evidence comprises the following statutory declarations filed by Richard Sealy, Peter Gregory and Peter Seckold.

    Richard Sealy

13. Richard Sealy made a statutory declaration on 22 March 2005.  Mr Sealy is the chairman of the Board of Gregory.  Annexures “A” to “K” were filed with his declaration.

    • Annexure “A” is a copy of Mr Davidson’s employment terms and conditions dated 4 December 2001. 
    • Annexure “B” is a copy of an extract of the minutes of 1 May 2003 that indicated a need to “formulate a plan to attack Stem customers”.
    • Annexure “C” contains an extract of the Managing Directors Report of May 2003 that referred to the need for development of a new prototype for the “Stem kill” chair. 
    • Annexure “D” is a copy of an extract from the Board minutes of 26 June 2003 that discussed the development of the new “Skill” chair. 
    • Annexure “E” contains extracts of Managing Director’s Reports from 31 July 2003 to November 2003 that made reference to the “Skill” chair.
    • Annexure “F” is a copy of Mr Davidson’s report on the Orgatec trade fair that was held in October 2002.
    • Annexure “G” is a copy of the minutes of Board meeting of 29 May 2003 in which the flip and drop table design produced by Worksmart Design was discussed.  The declaration indicated that negotiations were conducted in the period from May 2003 to December 2003.
    • Annexure “H” is a copy of an ASIC search conducted on Worksmart that shows that “Worksmart Design” was a registered business name and its proprietors were Mr Andrew Davidson and his son Warwick Davidson. 
    • Annexure “I” is a copy of a company extract obtained from ASIC on Worksmart Design Pty Ltd that showed that its directors are Mrs Anne Davidson and her son Warwick Davidson.  The extract stated that the company was registered on 17 December 2003.
    • Annexure “J” is a copy of a letter and attachments from Worksmart Design Pty Ltd (herein after called the “Worksmart letter”) dated 26 February 2004.  Attached to this letter was a copy of the provisional application.
    • Annexure “K” is a copy of a discussion paper (herein after called the “discussion paper”) on the Skill chair dated 7 October 2003 that discussed the costing of the “speed bump” chair.  The discussion paper provided costing analysis including that of the “speed bump” chair.

    Peter Gregory

14. Peter Gregory made statutory declarations on 23 March 2005 and 30 May 2005.  Mr Gregory is a non–executive director of Gregory.  His first declaration contained annexures “A” to “J”.

    • Annexure “A” is an extract from the Managing Director’s Report of May 2003 that referred to the development of a prototype for the “Stem Kill” chair. 
    • Annexure “B” are extracts from 15 February 2002 and 14 March 2002 meetings of the Product Review Committee which referred to a chair called the “concept Chair” which was alleged to be designed by Mr Andrew Davidson. 
    • Annexure “C” contains photographs from the COMFIA 2002 exhibit at which the “concept Chair” was displayed.
    • Annexure “D” is a copy of the Product Review Committee meeting of 12 May 2003.
    • Annexure “E” is a brochure of the “Inca” range of chairs.
    • Annexure “F” is a copy of Product Review Committee meeting of 14 July 2003 that indicated a number of different chairs were been discussed. 
    • Annexure “G” is a copy of minutes of the Product Review Committee of 29 September 2003 that mentions the “speed bump” chair.
    • Annexure “H” is a copy of the “Worksmart letter” with attachments.
    • Annexure “I” is a copy of the Gregory Board minutes of 26 June 2003, which referred to prototypes been made ready by the end of August 2003 but no details were provided.
    • Annexure “J” is a copy of Gregory patent US 4889387 which was alleged to be very similar to the “concept and function” of the “speed bump” chair.

15. In his second statutory declaration, annexure “A” to “D” were filed.  Annexure “A” is a copy of Gregory’s 2003 annual report, annexure “B” is a copy of the “discussion paper” dated 7 October 2003, annexure “C” is an extract from the Gregory Board meeting of 1 May 2003 and annexure “D” is a copy of Mr Davidson’s notes on the Orgatec trade fair.

    Peter Seckold

16. Peter Seckold made a statutory declaration on 22 March 2005.  Mr Seckold is an ex-employee of the requestor and is now runs his own business, Express Chair Repairs.  His declaration contained annexures “A” to “C”.

    • Annexure “A” and “B” respectively to his declaration were copies of minutes of Gregory’s Product Review Committee dated 12 May 2003 and 29 September 2003. 
    • Annexure “A” contained a reference to the “SK Range (Stem Killer) Non Gregory between Concord and Inca” but merely sets some parameters. 
    • Annexure “B” contained a reference to the “skill range Non Gregory chair between Concord and Inca” and specifically mentioned that the ‘speed bump’ chair had been developed and that market feedback was very positive”. 
    • Annexure C was a copy of a letter dated 12 March 2004 and signed by Mr Seckold confirming that he upholstered a number of Mrs Davidson’s “speed bump” chairs. 

    The Patent Applicant

17. The patent applicant’s evidence comprises statutory declarations filed by Jennifer Anne Davidson, Andrew Davidson, Warwick Davidson, and Greg Turner.

    Jennifer Anne Davidson

18. Jennifer Anne Davidson made her first statutory declaration on 19 November 2004.  This declaration contained 11 exhibits.

    • JD-1 is a copy of Jennifer Anne Davidson’s CV;
    • JD-2 is a testimonial from Andrew Rodionoff, the deputy physiotherapy manager of the Sydney Adventist Hospital.
    • JD-3 contained some literature review and meetings attended during 2002.
    • JD-4 lists results of patent literature reviews conducted for Mrs Davidson by her son Warwick Davidson in April 2002 and November 2002.
    • JD-5 is an extract from Mrs Davidson’s design journal for the chair from November 2002 to June 2003:
    • JD-6 is a copy of a letter from Express Chair Repairs dated 12 March 2004.
    • JD-7 contained photographs of sample chairs.  The first set showed seats that were from a trial conducted from March to June 2003 and were labelled as being built by Jennifer and Warwick Davidson and upholstered by Express Chair Repairs.  A second set dated August 2003 contained photographs of two chairs which were labelled as being built by Jennifer and Warwick Davidson after feedback from Gregory and upholstered by Express Chair Repairs.  Also exhibited was a photograph (third set) of the first prototype dated January 2003 which was labelled as being “built on a commercial standard plywood seat base using moulded foam.”  The fourth and fifth sets comprises two photographs of a number of foam samples, the photographs were labelled “to determine the optimum ‘Bump’ material and design” and were from trials conducted from November 2002 to May 2003.
    • JD-8 is a copy of a letter dated 11 March 2004 from Klasse regarding purchases by Mrs Davidson.
    • JD-9 is a copy of a provisional application questionnaire dated May 2003 that was forwarded to the patent applicant’s attorneys, Spruson & Ferguson.
    • JD-10 is a copy of a fax dated 17 September 2003 sent to Richard Hyland of Gregory’s confirming that he may produce a chair on a one-off basis for an interested customer.
    • JD-11 is a copy of a declaration from Grant Richter who received the chair referred to in JD-10 and who completed the Gregory questionnaire.

19. In her second declaration, Mrs Davidson confirmed her meeting with her attorney in January 2003 and exhibit JAD-1 to the declaration is a certified copy of the information sheet handed to Mr Turner during that meeting.

    Andrew Davidson

20. Andrew Davidson made statutory declarations on 19 November 2004 and 27 May 2005.  The first declaration contained two exhibits:  AD-1 is a copy of Gregory’s confirmation of his employment and a description of his duties and AD-2 is a declaration from Kinsley Mundey, who is a retired director of Gregory, confirming a then business practice of Gregory of sourcing specialist outside designers.

21. The second declaration contains Mr Davidson’s comments on the Peter Gregory and Peter Seckold declarations.

    Warwick Davidson

22. Warwick Davidson made a statutory declaration on 19 November 2004 that included his CV (exhibit WD-1) and the results of patent literature research (exhibit WD-2) conducted during April 2002 and November 2002.

    Gregory Turner

23. Gregory Turner made a statutory declaration on 30 May 2005.  In this declaration Mr Turner confirmed that his firm was responsible for the preparation of the provisional application and that he met with Mrs Davidson in January 2003. 

    DECISION

24. In coming to my decision, it is useful to set out a time line to the dispute. 

    • Andrew Davidson became a manager director of Gregory on 14 January 2002 and his position with Gregory was terminated in March 2004. 
    • Around March / April 2002, a family discussion took place (between Andrew, his wife Jennifer and son Warwick) on a competitor to Gregory called “Stem”.  As a result of this discussion Warwick Davidson, the son, conducted a patent search relating to ergonomic chairs. 
    • Andrew Davidson was alleged to be involved, in some way, in designing the “concept chair” – as per Gregory Board minutes 15 February 2002 and 14 March 2002.  Later evidence indicates that this was not proceeded with and was fundamentally different to the design of the “speed bump chair”.
    • In October / November 2002, Mrs Davidson attended the Orgatec trade fair with her husband.  The trip was for Gregory’s business purposes.  In her declaration, Mrs Davidson stated what while her husband attended to business, she conducted research on ergonomic seating. 
    • In late November 2002, Mrs Davidson started work on her design and her son Warwick also undertook a second patent search during that time. 
    • In January 2003, Mrs Davidson held initial discussions with Spruson & Ferguson on patenting her chair.  At this meeting an information sheet containing a short description and a drawing of the “speed bump chair” was shown by Mrs Davidson to her patent attorneys.
    • In February 2003, Mrs Davidson and her son continued to test designs.
    • From November 2002 to May 2003, a number of prototypes were produced and according to the evidence of Mrs Davidson, the services of Express Chair Repairs were used from May 2003 to March 2004 to upholster several chairs. 
    • Copies of Mrs Davidson’s diary from November 2002 to June 2003 indicate the genesis of the concept.
    • Provisional application 2003903213 by Jennifer Anne Davidson was filed 25 June 2003.

25. Central to the issue is the evidence of Mr Peter Seckold, either as an employee of Gregory or as an independent operator of the business, Express Chair Repairs.  Peter John Seckold is a qualified upholsterer who worked for Gregory from 1996 to January 2005.  In his declaration Mr Seckold stated that Mr Davidson was seen working on chairs during November 2003 to December 2003.  In a reported conversation Mr Davidson was alleged to state that the chair he was working on was a “stem killer” and that he was trying to get the foam densities right.  While Mr Davidson stated that he did not recall any of these conversations with Mr Seckold, the evidence of both parties suggest that Mr Seckold upholstered a number of chairs some of which were of the “speed bump” design.  In March 2004, Mr Davidson requested that Mr Seckold sign on behalf of Express Chair Repairs a document that attested that over the previous 15 months, a number of “speed bump” chairs were upholstered some of which were paid for by and to the design of Jennifer Davidson and other chairs that used Gregory materials and labour.  While this is not in evidence in Mr Andrew Davidson’s declaration it is referred to in both Peter Seckold’s declaration and Mrs Davidson’s declaration.  While there is the evidence in Seckold’s declaration which suggested that Express Chairs Repairs produced a number of chairs prior to the priority date, there is no detail on the chair construction.  However, given that both parties have this letter in evidence I am prepared to accept it on face value that prior to the priority date Mr Seckold upholstered a number of chairs to Mrs Davidson’s design.

1. In Mr Davidson’s declaration, it was alleged that Mr Seckold ran his business Express Chair Repairs while employed at Gregory.  Jennifer Davidson, in her declaration, confirmed that Express Chair Repairs upholstered a number of the “speed bump” chairs during May 2003, which is about a month before the priority date of the application and which is some time before Mr Seckold left Gregory.

2. Discussions on the “Stem kill” chair occurred in the Gregory’s board meeting of 12 May 2003.  However, there is no evidence of what design parameters were used for this chair.  Later evidence (after the priority date) suggested that a number of chairs were in contention, one of which was the “speed bump chair”.  Mr Davidson, in his declaration, stated that in July 2003 the “speed bump” chair became one of those options being considered.  This is supported by the minutes of the Product Review Committee of 29 September 2003, a copy of which was annexure “B” to Peter Seckold’s declaration and annexure “G” to Peter Gregory’s declaration.  This is also the period in which Express Chair Designs were upholstering some of the “speed bump” chairs and coincides with the delivery of a chair by Gregory to a client for testing. 

3. Gregory apparently only became aware that the “speed bump chair” was subject to a provisional patent in February 2004 when it received the “Worksmart letter” dated 26 February 2004 from Warwick Davidson, Principle of Worksmart Design Pty Ltd and Jennifer Davidson, director of Worksmart Design Pty Ltd, to which was attached a copy of the provisional patent application. 

4. From the evidence it seems reasonable to conclude that Gregory appear to have undertaken at least one client survey on the “speed bump” chair.  The evidence on the arrangement with Gregory and Mrs Davidson is scant and while it is difficult to come to any firm conclusion about their relationship, on the balance of probabilities, there was no contractual relationship between Gregory and Mrs Davidson.  While it is stated that the survey would not have happened without contractual arrangements being in place, Mr Andrew Davidson suggested that it was normal practice to conduct surveys on chairs that Gregory were considering marketing.  The evidence of Mr Grant Rickter (as exhibit JD-11) who purchased a “speed bump chair” was that he was told in September 2003 that Gregory’s did not own the design and that it would seek permission from the owner Mrs Davidson.  The evidence points to Gregory supplying a chair for testing purposes; a procedure that Mr Davidson stated was business practice.  While there is insufficient information from both parties to formally decide on the issue of Gregory’s business practices, on balance it seems to me that the testing took place.  However, as these events have occurred after the priority date, they do not shed any light on Mr Davidson’s contribution prior to the priority date.

5. Gregory’s concession of Mrs Davidson’s contribution to the invention is well founded.  Jennifer Anne Davidson is a registered physiotherapist at the Sydney Adventist Hospital and since 1974 has been a permanent part-time employee.  The Deputy Physiotherapy Manager of the Hospital, Andrew Rodionoff referred to her experience when he stated the following in a letter that was exhibited in Jennifer Anne Davidson’s declaration.

   “Throughout her time at this hospital, she has been involved on a weekly basis, educating, advising and treating patients on posture, concepts of neutral spine, core stability and backcare.  She has provided when necessary, the appropriate foam back cushions and prepared foam seating of various densities.”  [underlining my emphasis]

   Mrs Davidson’s knowledge and experience is relevant to the field of the invention.  The evidence of Mrs Davidson and her son Warwick is consistent and I am led inevitably to the conclusion that, on the balance of probabilities, Mrs Davidson is the inventor. 

6. While Gregory contended that Mr Davidson also contributed to the invention, it is unable to identify what input can be attributed to him.  As Gregory submitted “the directors were not specifically aware of the “speed bump” chair prior to June 2003” and consequently they are unable to further assist in identifying the nature and content of Mr Andrew Davidson’s contribution. 

7. Thus, prior to the priority date, there is no substantial evidence of Mr Andrew Davidson’s contribution to the invention described in the provisional application.  At best it indicates that he organised Express Chair Repairs to produce some prototypes and he may have upholstered some chairs himself. 

8. Gregory’s submission is that there must, ipso facto, be some contribution and that the contribution which is unidentified by Gregory is sufficient to make Andrew Davidson also an inventor.  In support of this argument, Gregory made two submissions.

   Submission a)

   “A person has entitlement to an invention if that person’s contribution, either solely or jointly with others, had a material effect on the invention: Row Weeder Pty Ltd v Nielsen (1997) 39 IPR 400; Sunstrum v Boland (2003) 59 IPR 146. The relevant question can also be posed as: “...whether the invention would have occurred without a particular person’s involvement”: Row Weeder at 405.”

   Submission b)

   “Two people may therefore be joint inventors where, for example, one person had a particular idea, but did not know how to give effect to that idea, and “[the creation of the invention required the input of the other person.”: Row Weeder at 405 citing Costa v GR & IE Daking Pty Ltd (1994) 29 IPR 241.”

9. The evidence establishes that Andrew Davidson brought up the subject of the “Stem” line of chairs in a family conversation in March/April 2002.  But this conversation occurred over a year earlier than the discussions within Gregory.  While this seemed to spur Jennifer Davidson in her research it could hardly be said that Andrew Davidson had made any material contribution to an invention that had not yet been developed.  This is not a case in which the invention resides in the identification of the problem.  In her declaration, Jennifer Anne Davidson refers to this meeting.

   “As a physiotherapist and out of interest, I asked my son in April 2002 to locate copies of patents relating to ergonomic chairs. … I reviewed the patents … the subject of the patents I reviewed would provide no support to prevent pelvic rotation and forward sliding leading to bad posture.” [underlining my emphasis]

10. In Row Weeder (supra), the delegate consider the line of cases dealing with S36(1) and concluded at as follows:

    “The common theme …is that a person has entitlement to an invention if that person’s contribution, either solely or jointly with others, has a material effect on the final concept of the invention.  A secondary issue is whether that person’s contribution involved a key inventive step.”  [Underlining my emphasis]

11. Similarly in Primmcoy v Teer [2003] APO 37 the delegate at paragraph 26 stated:

    “I take this to mean that where one party takes an initial step leading from the problem toward the ultimate solution and their work is taken up and finalised by another, both may be considered to have jointly contributed to the invention.  This of course does not generally apply to someone who merely points out the state of the art or explains well known principles.  The step must be one that materially contributes to the invention ultimately described or claimed and hence the question sometimes put is whether the invention would have occurred without the involvement of the party seeking to claim entitlement - see Harris v CSIRO (1993) 26 IPR 469 and Costa v GR & IE Daking Pty Ltd (1994) 29 IPR 241.” [Underlining my emphasis]

12. The key aspect is whether the involvement of Andrew Davidson had a material effect on the final concept of the invention described in the provisional application.  The final concept of the provisional specification is the “speed bump” and on this there is no evidence that Mr Andrew Davidson had any involvement.  The issue of densities and fabric choice are secondary matters and on this Mr Andrew Davidson had, like his son Warwick, an involvement that could only be described as assembling:  The mere act of assembling a chair does not make the assembler an inventor.  The evidence of Warwick indicates that his assembling was undertaken at the direction of the inventor, Jennifer Anne Davidson.  As there is little evidence of the chair(s) assembled by Mr Andrew Davidson, it would be unsound to conclude that he made a material contribution to the final form of the “speed bump” chair as described in the provisional specification.

13. It is interesting to consider what Warwick Davidson states in his declaration about his involvement with the development of the “speed bump” chair.  In his declaration, Warwick spoke of his involvement during the testing phases.

    “4. During 2002 to 2004, I built a number of prototype chairs designed by JD [Jennifer Davidson].  This involved shaping and joining of various wooden components, shaping, and glueing of polyurethane foam, and some rough upholstery

    5. During 2002 to 2004 I assisted JD [Jennifer Davidson] in the purchase of components to build complete chair prototypes, and assembled those into several completed chairs.

    6. At all times the modifications and designs that I built during 2002 to 2004 were provided to me by JD [Jennifer Davidson].”

14. Clearly, the issue of upholstering is not a determinative factor and that the mere activity of assembling (including upholstering) is not material to the invention ultimately described.  Therefore, I believe that there is insufficient evidence to suggest that Andrew Davidson did anything more significant then assembling and therefore, it cannot be said that without Andrew Davidson’s involvement the invention would not have occurred.  At best, his contribution would be described as peripheral. 

15. From my reading of the specification the issue of foam densities and the effect of upholstering with different fabrics is given some acknowledgment.  The issue of foam densities is clearly described as a preferred feature.

16. Further to its submissions, Gregory argued that the evidentiary burden shifted from the requestor to the patent applicant.  Gregory submitted that the only people who knew the full story are Andrew Davidson and his wife Jennifer Davidson and as their declarations do not fully explain what transpired, then there must be an inference that there is damming evidence.  Gregory submitted that neither the evidence of Mr Andrew Davidson nor Jennifer Davidson made any reference to Mr Andrew Davidson’s contribution. 

17. Gregory submitted that on the facts in this case, the burden of proof shifts from the requestor to the patent applicant and that the patent applicant would need to demonstrate that Andrew Davidson is not an inventor. 

    “Knowledge of the relevant fact may lie mainly, or exclusively with either the opponents or the applicants, or be to a greater or lesser degree available to either of them.  Notwithstanding that the legal burden may lie upon the opponents, the evidential burden may shift according to the state of the evidence from time to time.  The ease with which it may do so may depend upon the circumstances of the case and the likelihood of the facts being within the knowledge or, or more readily available, one side or the other.”  Dunlop Holdings Ltd’s Application [1979] RPC 523 at 542; Sunstrum v Boland (2003) 59 IPR 146 at 148.

    “Mr Davidson gives no evidence as to whether he was aware of the work being undertaken by his wife and son.  It is highly improbable that he was completely unaware of that work.  His failure to give evidence on this issue casts doubt on the extent of his involvement, and the rule in Jones v Dunkel (1959) 101 CLR 298 is applicable. That is, where a party fails to give evidence upon an issue in respect of which it is in the best position to offer evidence, a court may more comfortably draw the inference, otherwise available, that such evidence would not have assisted the party’s case.

    In all the circumstances, the evidence filed on behalf of Gregory ought to be preferred.  On that evidence, the balance of probabilities favours the view that Mr Davidson did make a material contribution to the invention or, put another way, the invention would not have occurred without Mr Davidson’s input.  None of the evidence filed on behalf of Mrs Davidson detracts from that conclusion.  While Gregory is not in a position to precisely identify the nature of the contribution made by Mr Davidson, in the circumstances, this should not weigh against Gregory.”

18. I have some sympathy with this submission.  Prima facie, it would have appeared that Andrew Davidson, as a Director of Gregory, contributed his corporate knowledge to the invention and thus the burden would fall on Mrs Davidson to discharge this allegation.  However, the knowledge and experience of Mrs Davidson is undeniable and clearly relevant to the field of the invention.  She possessed the knowledge to undertake a literature research (as indicated in exhibit JD-3) and understand its contents.  Gregory does not dispute that Jennifer Anne Davidson is an inventor:  The diary evidence clearly re-enforces the point that she is the inventor of the “speed bump” concept.  From my reading of the evidence, it is consistent and credible that Jennifer Anne Davidson is the inventor.  The submission that the husband must have made some material contribution to the invention made by the wife is not supported by the facts.  Under these circumstances it is reasonable to conclude that the burden of proof shifts back to the requestor. 

19. It was submitted that Mr Andrew Davidson’s involvement with the “concept chair” made him an inventor and thus it was suggested that it was probable that he contributed to the design of the “speed bump” chair.  However, this seems to me to be hardly sufficient to demonstrate any involvement with the development of the “speed bump” chair in any material way.  The connection between the “concept” chair and the “speed bump” chair is spurious.

20. While it is further alleged by Gregory that Mr Andrew Davidson supplied confidential information on suppliers and costings, Mr Andrew Davidson countered that this information was public knowledge, which has not been traversed by Gregory.  However, even if it were to be established that the giving of this information was a breach of confidential information and of Mr Andrew Davidson’s fiduciary duties, the information in itself is not sufficient for me to consider that a material contribution has been made to the invention of the provisional specification.  Even if the information was crucial to the development of the invention, the evidence indicates that this information was supplied on 7 October 2003, which is some months after the priority date.  So even if Mr Andrew Davison contributed to the invention at this stage, it cannot be the invention of the provisional specification, which was filed some months before.

21. The invention of the provisional specification is not about foam densities or fabrics but about the “speed bump”.  Even the assembling of chairs using different foam densities and fabrics, that Mr Warwick Davidson undertook, is not sufficient.  While there is some evidence to suggest that Mr Andrew Davison upholstered a chair, the extent of this appears to be minor to that work undertaken by Warwick Davison and Jennifer Anne Davidson.  Consequently, I do not believe that the materiality of invention has been established.  Or to put it another way, I do not find any evidence suggesting, on the balance of probabilities, that Mr Andrew Davidson contributed to the invention of the provisional specification in a “material” way.

22. Gregory’s submission amounts to an inference that Mr Andrew Davison made an unidentifiable material contribution to the invention based upon the existence of a marital relationship; marriage does not equate with complete awareness.  Furthermore, awareness of what the Mr Davidson’s wife and son were doing does not make him an inventor.  Mr Turner suggested that the lack of any reference in the declarations was simply due to the fact that there was no contribution.  Given the evidence before me, I am inclined to agree with him on this point.  Apart from organising this upholstery work and providing Jennifer Davidson with information on chair costings (i.e. the “discussion” paper), there does not appear to be any tangible evidence that points to Andrew’s involvement in a material way.

23. Any work done after the priority date is, of course, irrelevant to the issue of materiality of invention.  It is in this period after the filing of the patent specification that there is more evidence of chair assembly, the subsequent trailing of a chair by Gregory, and the provision of information.  However, none of these actions are relevant as they occurred after the priority date.  While these activities may be relevant to the marketability of the final product they are clearly not relevant to the current invention.

24. I have found that Mr Andrew Davidson is not an inventor.  Given that the grounds argued of Gregory’s eligibility was on the basis that Mr Davidson was at least a co-inventor and that he used his position at Gregory’s to develop the invention, I can only conclude that Gregory is not entitled.

    CONCLUSION

25. Prima facie, it appeared that Andrew Davidson, as a Director of Gregory, contributed his corporate knowledge to the invention.  However, as Jennifer Anne Davidson was found to be the inventor of the “speed bump” chair, the onus of proof shifted from the patent applicant to the requestor. 

1. Gregory was unable to discharge its burden of proof.  In my view, there is insufficient evidence to establish, on the balance of probabilities, that before the priority date Mr Andrew Davidson contributed to the invention of the provisional specification in a material way.  While there is some evidence that he may have upholstered some chairs, organised Express Chair Repairs to upholster some chairs and / or provided data to Mrs Jennifer Davidson, there is no evidence that he contributed in a material way to the invention described in the provisional specification.  In my view, the issue of upholstering a chair is not a material matter for the patent application as matters of foam density and fabrics are merely subordinate to the inventive concept.  The provision of costing data, etc was not considered to be relevant and furthermore it occurred after the priority date. 

2. Consequently, Gregory is not entitled to be an eligible person and hence, I decline to make the declaration sought by Gregory.

   COSTS

   In actions before the Commissioner, costs usually follow the event.  As I can see no reason for departing from the usual practice, I award costs to Jennifer Anne Davidson.

   G.M.Cox

   Delegate of the Commissioner of Patents

   Patent attorneys for the applicant  :  Shelston IP, Sydney

   Patent attorneys for the requestor  :  Spruson & Ferguson, Sydney