John Antony v NewSouth Innovations Pty Limited
[2019] APO 41
•28 August 2019
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
John Antony v NewSouth Innovations Pty Limited [2019] APO 41
Patent Application: 2017901468
Title:Prevention of fluid cavitation
Patent Applicant: NewSouth Innovations Pty Limited
Requestor: John Antony
Delegate: Dr S. J. Smith
Decision Date: 28 August 2019
Hearing Date: Written submissions completed on 8 November 2018, further evidence filed 22 February 2019
Catchwords: PATENTS – application under section 36 – eligibility – requestor named as an inventor – whether the requestor contributed to the inventive concept – whether requestor should be named as an applicant – declaration under section 36 made
Representation: Patent applicant: Griffith Hack
Requestor: Not represented
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017901468
Title:Prevention of fluid cavitation
Patent Applicant: NewSouth Innovations Pty Limited
Date of Decision: 28 August 2019
DECISION
Pursuant to section 36(1), I declare that John Antony, along with the present nominated person, NewSouth Innovations Pty Limited, is an eligible person in relation to application 2017901468.
Costs according to Schedule 8 are awarded against NewSouth Innovations Pty Limited.
REASONS FOR DECISION
Background
Provisional patent application 2017901468 (the application) was filed on 21 April 2017 in the name of NewSouth Innovations Pty Limited (NSI) (the commercialisation entity of the University of New South Wales (UNSW)). The patent request lists Richard Mark Pashley, John Joseph Antony and Mojtaba Taseidifar as inventors.
On 28 February 2018 the Commissioner received an application under section 36 of the Patents Act 1990 (the Act) from John Antony seeking a declaration that he, together with NSI, is an eligible person with respect to the application.
On 4 April 2018 NSI wrote to the Commissioner confirming that it would defend its entitlement to the application.
Following completion of the evidentiary periods the matter was heard by written submissions. I note that Mr Antony filed his submissions both in chief and in reply after the relevant deadlines. While NSI suggested that submissions out of time should be not be taken into consideration, in my view the primary consideration in this matter is to make a correct determination of entitlement in light of the evidence provided, and I have had regard to Mr Antony’s submissions in chief and in reply.
Evidence
The evidence filed during the initial evidentiary periods directed consists of:
· nine declarations by John Antony with accompanying exhibits dated 12 June 2018
· a declaration by Dax Kukulj dated 26 July 2018 (Kukulj)
· six declarations by John Antony dated 24 August 2018, with the fifth and sixth declarations in two and four parts, respectively, and exhibits accompanying the first, second, fourth and sixth declarations.
I note that Mr Antony filed further evidence, the UNSW Intellectual Property Policy, together with his reply submissions on 8 November 2018. While regulation 5.23 (which provides for the Commissioner to consult documents not properly filed as evidence in an opposition proceeding) does not apply to the present matter, I consider that principles similar to those applied in considering regulation 5.23[1] should inform my view as to whether this additional material should be considered. For reasons that will become clear, I have come to the view that any contribution by Mr Antony to the inventive concept predated his enrolment at UNSW, and it follows that I do not consider the UNSW Intellectual Property Policy to be of such relevance that it should be considered as evidence in this matter.
[1] See, e.g. Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8.
In the course of drafting this decision I formed the view that further evidence directed specifically to the respective roles of Mr Antony and Mr Pashley in the conception of the idea described in funding applications (described below) was likely to contribute to a more correct and complete decision, and I wrote to the parties on 29 January 2019 requesting “any further evidence from Mr Pashley and Mr Antony specifically describing their role in the conception of the idea on which the funding/grant applications are based.” Mr Antony provided further evidence in the form of a further declaration dated 22 February 2019 with accompanying exhibits. NSI did not provide any further evidence.
The invention
The invention relates to a method for reducing fluid cavitation at a surface that moves with respect to a first fluid.
A useful definition of cavitation is found in the specification:
“Cavitation is the formation of vapour cavities in hydraulic systems due to a consequence of forces acting upon the hydraulic system. Cavitation generally occurs when the local pressure falls sufficiently far below a saturated vapour pressure of a fluid… In order for cavitation inception to occur, the vapour cavities generally need a surface on which they can nucleate. This surface can be provided by the sides of a container, pipe or valve, by impurities in the fluid, or by small undissolved microbubbles within the fluid. When subjected to higher pressure, the cavities implode and can generate an intense shock wave.
Cavitation has an effect on the efficiency of fluid transmission and generally leads to materials degradation in hydraulic systems. … Cavitation is also the main cause for the limitation of speed in fast, ocean going vessels due to cavitation effects on hydrofoils and propellers.”[2]
[2] Page 1, lines 9-22.
The specification summarises the invention as follows:
“Disclosed is a method for reducing cavitation at a surface that moves relatively with respect to a first fluid. The method comprises directing a second fluid that is at least partially degassed towards the surface such that the second fluid is able to form a boundary layer at the surface. The boundary layer at least partially increases the negative pressure required to initiate cavitation at the surface so as to reduce the occurrence of cavitation during such relative movement.
It has been surprisingly observed that the direction of a degassed fluid towards a surface can reduce cavitation at that surface. The presence of dissolved non-polar gas molecules in the first fluid may produce nucleation sites throughout the first fluid. Both aqueous and non-aqueous fluids show similar effects, and, in addition, non-polar fluids have an increased capacity to dissolve gases relative to water. Therefore, degassing the second fluid can also help to reduce the number of gas-derived nucleation sites by providing a boundary layer of degassed fluid at the surface. Thus, providing the degassed boundary layer may help alleviate or even completely prevent cavitation during relative movement of the surface with the first fluid.”[3]
[3] Page 2, lines 9-24.
The specification indicates that the invention may be useful in various contexts:
“When the surface forms part of a propeller that is used to propel an ocean-going
vessel, the method may help to significantly improve performance and efficiency of the vessel. The same may also apply to reducing cavitation at the surface of impellers or pistons used in a pump, through restriction orifices and valves, water jet intakes and hydrofoils. The valves and orifices may be associated with an industrial plant, such as a refinery or power plant, or injection system, such as those used in vehicle fuel and lubrication systems and printers. The method may help to at least reduce degradation and wear of the surface during such relative movement.”
Reducing cavitation may also reduce noise associated with the surface being used, for example, reducing the cavitation noise associated with submarine propellers.[4] The amount of degassing required will depend on the application as will the required thickness of the boundary layer and the volumetric flow rate.[5]
[4] Page 2, line 35 – page 3, line 4.
[5] Page 4.
The invention may be understood with reference to Figure 1, shown below. In Figure 1, the relevant surface is in the form of a propeller blade 22 which is rotated to cause movement of the surface relative to the first fluid. The second fluid is degassed in a degasser 12, housed in a reservoir 14, which may be adapted to maintain a predetermined amount of degassing in the fluid. The form of the degasser will vary depending on the application, but may use hollow-fibre membranes connected to a vacuum system, centrifugal degassers, or cavitation degassers. There may be more than one degasser. Conduit 18 is configured to direct degassed fluid towards the lower pressure side 22a of blade 22 via openings 20 that open into the first fluid. Once the degassed fluid contacts blade 22 it spreads out along a planar surface to form a boundary layer, or region, of degassed fluid.[6] Flow controller 21 may take many forms, but in one embodiment is a pump which pumps degassed fluid from reservoir 14 through conduit 18 and out of the openings 20 and maintains an appropriate volumetric flow rate.[7]
[6] Pages 8-10.
[7] Page 11, lines 8-29.
The Examples of the specification describe the effective prevention of cavitation in a model system by the introduction of degassed water close to the low pressure side of rotating propeller blades. As the level of degassing was increased, the speed of the propeller could be increased before cavitation was observed.
The specification ends with 24 claims, directed to a method for reducing cavitation, a system for reducing cavitation and a vessel having a system or used in a method for reducing cavitation. The complete claim set is included at Annex A. Claim 1 reads:
A method for reducing cavitation at a surface that moves relatively with respect to a first fluid, the method comprising directing a second fluid that is at least partially degassed towards the surface such that the second fluid is able to form a boundary layer at the surface, whereby the boundary layer at least partially increases the negative pressure required to initiate cavitation at the surface so as to reduce the occurrence of cavitation during such relative movement.
I note that Mr Antony explained the nature of the “boundary layer” in the present invention:
“The word ‘layer’ within the term ‘boundary layer’ is not used according to the meaning ascribed to it in ordinary English language. The term ‘boundary layer’ is shorthand, or jargon, employed to describe the velocity profile displayed by a fluid whilst flowing along a surface, which is expressed mathematically and is only used in terms of mathematical quantities. Put simply, the velocity of a fluid in the direction it flows while it is flowing along a surface will vary according to its distance from the surface. It's velocity at the surface, … is zero by definition as a result of friction forces that prevent the fluid from flowing as a result of direct contact between it and the surface. Its velocity at some distance above the surface will be equal to 100% of the free stream velocity of the fluid, equivalent to the point at which the friction forces experienced by fluid in contact with the surface are no longer felt. This therefore is the velocity profile of the fluid, being zero at the surface and a number greater than zero at some point above the surface. The distance between the surface and the point above the surface where the fluid velocity is equal to 100% of the free stream velocity of the fluid is given as the boundary layer thickness. … the boundary layer … is the distance over which the fluid's velocity increases from zero to a number equal to the fluid's free stream velocity, beyond the boundary layer.”[8]
[8] Mr Antony’s submissions filed 8 November 2018 at page 20.
The law
The present matter arises under subsection 36(1), as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.[9] The subsection reads:
[9] The amendments apply because the section 36 request was filed after the commencement date of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
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 so disclosed.
Schedule 1 of the Act defines an eligible person in the following terms:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
and subsection 15(1) provides that:
Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).That is, the eligible person is the inventor or any person who has acquired ownership from the inventor. The Federal Court has stated that the determination of who is an eligible person is approached as follows:
(i) identify the “inventive concept” of the invention as defined by the claims;
(ii) 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
(iii) determine how any contractual or fiduciary relationships give rise to proprietary rights in the invention.[10]Onus
[10] University of Western Australia v Gray [2009] FCAFC 116; 82 IPR 206.
While Mr Antony is named as a co-inventor, he is not identified in the patent request as a co-applicant. A similar matter was considered by the delegate in Shaun Gregory Power v Dale Arthur John Long,[11] and I agree with his conclusion that:
“The scheme of the Act makes it plain that the fact that a person is specified in a patent request as a nominated person is insufficient proof of entitlement, unless that person falls within the categories of persons listed by subsection 15(1). That is to say, the mere identification of a person as a nominated person cannot of itself be the source of entitlement. It is therefore apparent that before making the determination sought by [the requestor], I must be satisfied that he can legitimately claim inventorship and in this [the requestor] carries the legal burden of proof on the balance of probabilities” (references omitted)
[11] [2018] APO 57 at [20].
Indeed, I note NSI’s comments regarding Mr Antony’s identification as an inventor:
“The Applicant had questions over inventorship of AU2017901468 but they nonetheless included Mr Antony as an inventor out of good faith, with a view to resolve any issue of inventorship and to resolve whether or not the Applicant was a sole-owner, co-owner, or not an owner of AU2017901468 in due course. Without the Inventorship Assessment, such resolution was not able to be performed.”[12]
[12] NSI’s submissions filed 7 November 2018 at [17].
Accordingly, the onus lies with Mr Antony to establish that he is an eligible person within the meaning of section 15.
The circumstances
Before considering the question at hand, it is useful to set out relevant events discernible from the evidence regarding the development of the present application. It is unfortunate that much of the evidence is focussed on events relating to the preparation and filing of the provisional application and the subsequent breakdown of the relationship between Mr Antony and NSI. Evidence regarding the specific roles of the named inventors in the conception of the invention at what appears to have been the relevant time is scant.
Provisional patent application 2010901376
A provisional patent application, 2010901376 (the 2010 application), titled ‘The prevention of fluid cavitation’ was filed on 26 March 2010, naming Richard Pashley and John Antony as inventors and applicants. No complete application associated with this provisional application has been filed, and so the 2010 application has not been made open to public inspection.
At the time the 2010 application was filed neither Mr Antony nor Mr Pashley had any affiliation with UNSW, [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][13][14]
[13] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][15]
[15] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][16][17]
[16] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][18]
[18] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][19]
[19] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][20][21]
[20] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][22][23][24]
[22] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][25]
Funding applications
[25] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY] Mr Antony provided evidence of funding applications relevant to the subject matter of the application. In response to my request for further evidence Mr Antony provided additional information on the development of these applications.
The first of the funding applications, a Capability and Technology Demonstrator proposal, is titled ‘The prevention of cavitation on propellers for signature reduction of submarines’ and relates to the prevention of cavitation on the suction side of a propeller. The document indicates that it has been demonstrated that degassing water prevents cavitation in a model process. The document then sets out a series of experiments to realise the goal of the project, and states in relation to one of these:
“This time the bulk water supply flowing over the airfoil would be undegassed … a hollow airfoil section would be used, into which a series of small holes are drilled into the suction side. The hollow airfoil section would be provided with its’ own degassed water supply, and the flow rate required to ensure that this degassed water forms a stable boundary layer on the suction side of the airfoil would be measured. The stable degassed boundary layer would prevent the suction side of the airfoil from ‘seeing’ the surrounding bulk water, and thus prevent the phenomenon of cavitation from occurring.”[26]
[26] Exhibit to Mr Antony’s fifth declaration of 12 June 2018.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][27][28][29][30][31][32]
[27] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][33]
[33] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
Part of a second funding application which Mr Antony declared was drafted in September 2011 with a view to him commencing a PhD at UNSW relating to cavitation in 2012 was also provided.[34] The PhD enrolment did not eventuate,[35] but the disclosure of the document is similar to that discussed above:
“These experiments would then be repeated using a hollow foil with a series of small holes drilled near its suction side. The foil would have its own degassed water supply, and the flow rate required for a stable boundary layer to remain on its’ suction side would be measured and correlated with that predicted by theory … The degassed boundary layer should prevent the foil surface from ‘seeing’ the surrounding bulk water, and thus suppress cavitation, and possibly also flow separation and ventilation.”[36]
[34] Mr Antony’s fourth declaration of 24 August 2018; Mr Antony’s declaration of 22 February 2019.
[35] Mr Antony’s fourth declaration of 24 August 2018.
[36] Exhibit to Mr Antony’s fifth declaration of 12 June 2018.
It is apparent that Mr Pashley produced a first draft of the second funding application referred to above, and Mr Antony provided comments and amendments described in emails dated 26 September 2011 and 29 September 2011:
“I had a quick look at the application, I’ll do some work on it this afternoon. But I thought I should mention that I don’t think we should limit ourselves to water, but also include cavitation in petrol, diesel, transmission oil(s), hydraulic and cooling fluids. Specifically hydraulic and cooling fluids used in earthmoving equipment and aircraft. …
We would still use the same apparatus and perform the same measurements.”[37]
“I have attached two copies of the grant. I had to add information, and change the sequence of a lot of things, but I think it’s pretty good, and it fits into three pages. The information from your original document is still there.”[38]
[37] Exhibit (j) to Mr Antony’s declaration of 22 February 2019.
[38] Exhibit to Mr Antony’s first declaration of 24 August 2018.
Mr Antony noted that “[a]s the inventive concept was already established while drafting the CTD Application in 2010, there is little or no mention of the concept in these emails from 2011.”[39]
Enrolment at UNSW
[39] Mr Antony’s declaration of 22 February 2019.
Mr Antony was a student at UNSW enrolled in a Master of Philosophy commencing in 2013. The evidence establishes that he was enrolled at various points during 2013-2015.[40] Nothing turns on the specific dates of his enrolment.
[40] Exhibits to Mr Antony’s first and second declarations of 24 August 2018.
The topic of Mr Antony’s Masters study at UNSW was ‘The energy required to build an effective custom motorbike is measured and correlated with the improved efficiency of the motorbike relative to its original fuel consumption, and a payback time for the energy use is calculated.’[41] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]. It is apparent from the evidence[42] that this was a deliberate distinction, with an email from the Manager, Research Student Unit to Mr Antony dated 7 February 2013 stating:
“I need to find out from you whether you expect your admission at UNSW Canberra to be a continuation of research from Murdoch. If this is the case, there will be issues with your RTS and possible issues around intellectual property.”
[41] Exhibit to Mr Antony’s second declaration of 24 August 2018.
[42] Exhibit to Mr Antony’s second declaration of 24 August 2018.
Mr Antony’s reply of 15 February 2013 stated:
“The intention is to write up work on the CO2/energy balance project which was to comprise roughly a third of my PhD. The work on cavitation and desalination (roughly the latter two thirds) can’t be continued at UNSW, and won’t be included in an MPhil.”[43]
The application
[43] Exhibit to Mr Antony’s second declaration of 24 August 2018.
Although it is apparent that Mr Antony was not a student of UNSW at the time the present application was drafted (in early 2017[44] following filing of an Invention Disclosure on 21 December 2016[45]), there is some evidence indicating his role in the preparation of the application and the basis of his listing as an inventor.
[44] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
[45] Exhibit to Mr Antony’s fourth declaration of 12 June 2018.
Mr Antony was identified as an inventor on the Invention Disclosure, referred to in the declaration of Mr Kukulj:
“The UNSW Invention Disclosure, prepared by Mr Pashley, states that (emphasis added):
Personal details (Confirm for all inventors listed on the Inventor Portal disclosure): Are you an inventor or contributor?
As in submitted portal version: 3 inventors with 1/3 each. Note that John Antony was a student of mine when he contributed to this patent. He has recently moved off course and is currently working at Deakin University.”[46]
[46] Kukulj at [37].
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][47]
[47] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
While Mr Antony was included as an inventor by NSI at the time of filing the application, the evidence indicates that this did not reflect a concluded position on NSI’s part. For example, in an email dated 19 May 2017 Desmond Lee wrote:
“we are in the process of finalising our due diligence for this IP and have requested our patent attorneys assist in conducting an inventorship analysis.
Stefan Paterson and/or Stephen Sharp will be in contact with you and the other two inventors soon to outline and commence the assessment process, which will involve providing them with information and details of your contribution to the IP.”[48]
[48] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
Subsequently, in an email of 31 July 2017, Lisa Linssen stated: “We are always quick to file a provisional patent to secure the priority date and then sort out the due diligence issues in the next 12 month period”[49] and in the same vein Jim Henderson wrote in an email of 23 August 2017:
“Although we may move quickly to protect valuable IP rights, and that may mean filing a patent application first and sorting out the inventorship/ownership details later, it’s a standard everyday process to complete that due diligence and put in place the proper documents and agreements necessary to establish clear ownership of the IP. And clear ownership may mean that we are sole owners, or that we are joint owners, or that we are not owners at all. We follow what our due diligence tells us.”[50]
[49] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
[50] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
With regard to assistance in preparing the application, emails have been provided that indicate Mr Antony was relied upon to summarise a reference and draw a propeller “with suitable release holes along the leading edge”, although from the emails provided it is not clear whether these tasks were carried out.[51] In any event, I do not consider this type of drafting assistance to be material to the question of whether Mr Antony was an inventor. It is also apparent that Mr Antony made suggestions regarding the application of the technology to minimise flow separation and/or ventilation which were included in the specification as filed and made other comments which were incorporated into the specification as filed.[52]
[51] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
[52] Exhibits to Mr Antony’s fifth and ninth declarations of 12 June 2018.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY][53]
Subsequent events
[53] [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
A significant amount of evidence regarding the relationship between the parties leading up to and subsequent to filing the application has been provided. In the main this is irrelevant to the consideration of whether Mr Antony is an inventor. However, some evidence relating to events subsequent to the application being filed is potentially useful to the extent that it may be considered indicative of the nature of Mr Antony’s contribution to the invention.
It is apparent that following the filing of the present application NSI and Satis Arnold were engaged in discussions regarding licencing the technology. In an email of 8 July 2017 to Mr Antony, Mr Arnold said: “Our conversation today was very useful. It is clear to me that you could contribute significantly to the further R&D needed to make it marketable and commercially attractive.”[54]
[54] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
Mr Arnold also made offers to Mr Antony, such as percentages of profits gained from commercialisation of the technology, in exchange for providing a “legally binding indemnity against all further or additional claims in relation to this technology” and “a guarantee that you will take no legal action in relation to this technology.”[55] Mr Arnold indicated to Mr Antony in an email dated 27 March 2018 that if agreement was reached: “you will be invited, subject to negotiation and agreement, to participate in the commercialisation of applications other than ship/boat propellers and get paid for it.”[56]
[55] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
[56] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
It is clear that Mr Pashley, both before and after the application was filed, considered Mr Antony to have rights in the invention. He stated in an email dated 23 August 2017 to Jim Henderson:
“Just spoke to John and it’s clear that we need to restore his rights by the simple action of adding him as an applicant to the provisional patent. I would support this. John would then be happy to have the technology licensed to Satis Arnold, which I also support. Let’s see if we can get moving on developing this exciting technology.”[57]
[57] Exhibit to Mr Antony’s seventh declaration of 12 June 2018.
This is consistent with the statement by Mr Arnold in an email to Mr Antony dated 1 December 2017: “Ric has tried consistently to ensure that you are looked after in any arrangement that is done on the cavitation prevention technology.”[58]
[58] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
Consideration
Following the principles outlined in UWA, to decide the outstanding issues in dispute it is necessary to first identify the inventive concept and then determine the question of inventorship. If necessary, I will then need to determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
I note as a preliminary matter that not all the submissions made in the course of this proceeding are reproduced or specifically addressed in this decision. While I have considered the evidence and submissions of both parties in their entirety, I have focussed in this decision on those matters material to determining the question of inventorship in accordance with established principles. To that end, I note that authorship and inventorship are not the same, and contribution to the words of an application or the provision of resources such as books, do not, in themselves, support a conclusion that a person is an inventor. Further, the breakdown of the relationship between the parties subsequent to the filing of the application is irrelevant to the questions at hand.
The inventive concept
NSI identifies the “heart of the invention”[59] as follows:
“The invention … is a method and system for use in minimizing or preventing cavitation on a surface that moves with respect to a first fluid. Broadly stated, a quantity of a second fluid that is at least partially degassed is directed towards the surface so that a boundary layer of at least partially degassed fluid forms on the surface. This boundary layer of at least partially degassed fluid helps to increase the negative pressures required to initiate cavitation at the surface.
An advantage of directing the second fluid which is at least partially degassed to form the boundary layer is that it prevents the need to degas the first fluid i.e. it removes the need to degas a bulk (first) fluid in which the surface is designed to be used. In practice, this significantly reduces the volume of degassed fluid required to minimise or prevent cavitation at the surface. The volume of the second fluid required to form the boundary layer can be given by the Reynolds number.”[60]
[59] NSI’s submissions filed 24 October 2018 at [27].
[60] NSI’s submissions filed 24 October 2018 at [3]-[4].
I agree that this is a reasonable statement of the inventive concept described by the application, which may also be summarised as the prevention of cavitation at a surface by directing an (at least partially) degassed fluid towards the surface such that a boundary layer is formed, while the bulk fluid in which the surface is used is not degassed.
Who was responsible for the inventive concept?
It seems to me that the funding applications referred to previously and prepared by Mr Antony and Mr Pashley generally describe the inventive concept identified above, that is, the idea of using only a boundary layer of degassed fluid to prevent cavitation. I note that these applications also refer to perforations in the foil with respect to which the present application is silent, but neither party has attached any significance to this. I also note that while the funding applications do not demonstrate that the invention works, verification and reduction to practice are not necessary for the conception of the invention to be complete – this will depend on whether reduction to practice requires invention.[61] In this case, Mr Antony’s involvement with the invention appears to have ceased shortly after the funding applications were prepared, and prior to experiments being carried out, so there is no question of any inventive contribution on his part lying in the physical implementation of the invention.
[61] Kafataris v Davis [2016] FCAFC 134; 120 IPR 206 at [65], University of Western Australia v Gray [2009] FCAFC 116; 82 IPR 206 at [248].
The question is simply whether Mr Antony’s role in the conception of the invention was such that he should be considered an inventor. It is well settled that for a person to be considered an inventor they must have made a material contribution to the invention. While the evidence of Mr Pashley’s involvement is limited, there appears to be agreement between Mr Pashley and Mr Antony that each contributed to the invention. However, not all contributions to an invention give rise to entitlement. The Full Court in Polwood Pty Ltd v Foxworth Pty Ltd[62] (Polwood) considered the concept of joint inventorship and formulated a number of propositions based on existing authority. These were conveniently summarised in Neobev Pty Ltd vBacchus Distillery Pty Ltd (Administrators Appointed) (No 3)[63] (with references omitted):
“First, whether someone is properly described as a joint inventor is not determined by quantitative contribution, but rather, qualitative contribution. The contribution does not have to be equal to the other person’s and the key question is whether there has been a contribution to the invention. Secondly, in some cases it may be helpful to look to the claims and in some cases evidence may assist. It is important to look at what the invention is said to be. For example, a contribution to the construction of an apparatus may be sufficient where the invention is the apparatus and insufficient where the construction of the apparatus can be done by simply following the instructions in the specification. Thirdly, the key question is whether the person’s contribution had a material effect on the final invention. Fourthly, it is sometimes useful to approach the issue by asking who conceived the solution to a problem, but that will not always be so because not all inventions are susceptible to a problem and solution analysis. Fifthly, rights to an invention are determined by objectively assessing contributions to the invention rather than assessing the inventiveness of respective contributions and if the final concept of the invention would not have come about without a particular person’s involvement, then that person has an entitlement to the invention. Finally, … a person may be considered a joint inventor where they had a general idea of what was required, but someone else was required to put the ideas into effect and did so.”
[62] [2008] FCAFC 9; 75 IPR 1.
[63] [2014] FCA 4 at [108].
I also note the following statement of the Full Court in Polwood to which NSI drew my attention:
“Contribution after the invention was fully conceived where that contribution was under the direction of the inventor does not give rise to entitlement to the invention. A person must be able to say that without his or her contribution to the final conception it would have been less.”[64]
[64] Polwood at [46].
I have set out what I consider to be the key aspects of the evidence previously, and while I invited additional evidence from the parties regarding the conception of the idea underpinning the grant/funding application, the evidence regarding the respective roles of Mr Antony and Mr Pashley in the conception of the idea (that is, the inventive concept) around which the various documents are drafted is somewhat lacking – much of the evidence of events at the relevant time is directed substantially to the drafting of documents. Mr Antony indicated that “the inventive concept was already established whilst drafting the CTD Application”,[65] and that Application was prepared by Mr Antony. I agree that it is clear that the conception of the invention was crystallised by the time the CTD Application was drafted. There is no evidence of the role of anyone other than Mr Antony in the preparation of the CTD Application. Further, the evidence supports a view that Mr Antony acquired and considered texts with a view to considering “how preventing cavitation on water craft propellers and other lifting surfaces could be achieved without having to degas the entire body of water on or in which a water craft sits.”[66] The evidence suggests that in this context he appreciated the relevance of the boundary layer.[67]
[65] Mr Antony’s declaration of 22 February 2019.
[66] Mr Antony’s declaration of 22 February 2019.
[67] Mr Antony’s declaration of 22 February 2019 and exhibit (a).
It is also clear from the evidence that Mr Antony has a detailed knowledge of the fluid mechanics associated with the invention and the evidence is generally consistent with his submission that none of the other parties involved in drafting the application “understood the concept of a boundary layer, how it’s thickness might be calculated and how that is related to volumetric flow rate or the invention itself”[68] and that:
“The Applicant as represented by its agent GH displays a fundamental lack of understanding with regards to the application of the technology as evidenced by questions posed to the Requestor in that regard in draft copies of the 2017 patent, and in particular the misguided importance it places on ‘forming a boundary layer’, as though it were equivalent to ‘forming’ a layer of icing on a cake, and which in any event the Requestor has shown came entirely from him and whose significance was understood by the Requestor first (as evidenced by RP’s answers to questions about the boundary layer …), and at least as early as 23/9/11 when information related to it, including the derivation of its thickness, was sent by JA to RP … in scans he made of a book owned by him and purchased specifically for the purpose of his work on developing the invention unaided, in Western Australia.”[69]
[68] Mr Antony’s submissions filed 24 October 2018 at page 7. Also Mr Antony’s submissions filed 8 November 2018 at pages 19-20.
[69] Mr Antony’s submissions filed 8 November 2018 at page 20.
While I do not agree that the evidence wholly unambiguously shows what “came entirely from him”, it does allow for reasonable inferences to be drawn. It is apparent that Mr Antony and Mr Pashley are agreed that each made a contribution, although not all contributions to inventions lead to entitlement, and references to the use of books Mr Antony sourced in “crafting methods for implementing the technology” could be seen as more consistent with Mr Antony describing how the invention might be reduced to practice and experimentally assessed, than with the conception of the inventive concept. However, there is evidence of Mr Antony having produced the CTD Application, which describes the inventive concept, and having used texts, in which he underlined references to the boundary layer, in the context of considering how to prevent cavitation without degassing the bulk liquid in which a propeller operates, and no evidence of the role of any other person. This is consistent with Mr Antony’s submission that the significance of the boundary layer was understood first by him.
While I consider this matter finely balanced, on balance Mr Antony has, in my view, put forward a credible prima facie case of (at least joint) inventorship, such that the evidentiary burden shifts to NSI to refute that case. That is, while there is no onus on NSI to establish its entitlement in this proceeding, it is clearly within the power of NSI to provide evidence from Mr Pashley as to his (and Mr Antony’s) role in the conception of the invention, so as to refute the evidence and assertions of Mr Antony. I requested evidence in this regard and none was provided. In the circumstances I am prepared, on the basis of the evidence before me, and the absence of any evidence to suggest that Mr Antony is not an inventor, to accept that he did make an inventive contribution to the invention. That is, what is put by Mr Antony is not merely a bare assertion of entitlement as submitted by NSI,[70] but an assertion that the inventive concept came from him coupled with evidence of his clear involvement in work associated with that concept.
[70] NSI’s submissions filed 24 October 2018 at [43].
For completeness, that Mr Antony’s assistance was sought for the preparation of the present application seems consistent with his having made a material contribution to the invention, as does Mr Arnold’s view that Mr Antony could contribute to further research and development.
Does NSI, or any other person, derive entitlement from Mr Antony?
It is clear that Mr Antony had no association with UNSW at the time of his involvement with the invention (i.e. at and around the time the CTD Application was prepared). Accordingly, this is not intellectual property generated during his enrolment at UNSW and his rights do not flow to NSI. There is no evidence that his rights flow to any other entity (in particular, I note that Murdoch University indicated that it has no interest in this intellectual property[71]).
[71] Exhibit to Mr Antony’s sixth declaration of 12 June 2018.
Conclusion
I will make the declaration requested by Mr Antony, that he, together with NSI, is an eligible person with respect to patent application 2017901468.
Costs
It is usual in matters before the Commissioner that costs follow the event and I see no reason to depart from that approach (although I note that the Schedule 8 costs which may be awarded in relation to section 36 matters are limited[72]). I will award costs according to Schedule 8 against NSI.
[72] See John Edward Vines v John McDonald [2005] APO 25.
Dr S. J. Smith
Delegate of the Commissioner of PatentsAnnex A: Claims
1. A method for reducing cavitation at a surface that moves relatively with respect to a first fluid, the method comprising directing a second fluid that is at least partially degassed towards the surface such that the second fluid is able to form a boundary layer at the surface, whereby the boundary layer at least partially increases the negative pressure required to initiate cavitation at the surface so as to reduce the occurrence of cavitation during such relative movement.
2. A method as claimed in claim 1, wherein the second fluid is degassed by more than 50%, such as by more than 80%, relative to a gassed-equilibrated form of the second fluid.
3. A method as claimed in claim 1 or 2, wherein the second fluid is directed towards the surface at a first volumetric flow rate.
4. A method as claimed in claim 3, wherein the first fluid is directed towards the surface at a second volumetric flow rate, with the first volumetric flow rate being up to 50% of the second volumetric flow rate.
5. A method as claimed in any one of claims1 to 4, wherein the second fluid is delivered through a conduit having an outlet that opens into the first fluid.
6. A method as claimed in claim 5, wherein the conduit is positioned at a low pressure side associated with the surface.
7. A method as claimed in any one of claims 1 to 6, wherein the surface is arranged on or forms a part of at least one of a propeller, hydrofoil, impeller, piston, valve body, restriction valve, orifice or piping.
8. A method as claimed in any one of claims 1 to 7, wherein the second fluid is a degassed form of the first fluid.
9. A method as claimed in any one of claims 1 to 8, wherein the first fluid and/or the second fluid is an aqueous solution.
10. A method as claimed in claim 9, wherein the aqueous solution is seawater.
11. A method as claimed in any one of claims 1 to 10, further comprising operating a flow controller to control the flow of second fluid directed towards the surface to form the boundary layer.
12. A vessel having a surface at which cavitation is reduced thereat by a method as claimed in any one of claims 1 to 11.
13. A system for reducing cavitation at a surface that moves relatively with respect to a first fluid, the system comprising:
a degasser configured to at least partially degas a second fluid;
a reservoir in communication with the degasser and configured to house the at least partially degassed second fluid, the reservoir having an outlet that is arranged for directing the second fluid towards the surface;
wherein the system is configured such that the directing of the at least partially degassed second fluid towards the surface forms a boundary layer at the surface, whereby the boundary layer is adapted to at least partially increase the negative pressure required to initiate cavitation at the surface so as to reduce the occurrence of cavitation during such relative movement.14. A system as claimed in claim 13, wherein the degasser is configured to degas the second fluid by more than 50%, such as by more than 80%, relative to a gassed-equilibrated form of the second fluid.
15. A system as claimed in claim 13 or 14, wherein the system is configured to direct the second fluid towards the surface at a first volumetric flow rate.
16. A system as claimed in claim 15, wherein the first fluid moves relatively at a second volumetric flow rate, with the first volumetric flow rate being up to 50% of the second volumetric flow rate.
17. A system as claimed in any one of claims 13 to 16, wherein the outlet is positioned at a low pressure side associated with the surface.
18. A system as claimed in any one of claims 13 to 17, wherein the surface is arranged on or forms a part of at least one of a propeller, hydrofoil, impeller, piston, valve body, restriction valve, orifice or piping.
19. A system as claimed in claim 18, wherein the outlet is provided on or at the propeller, hydrofoil, impeller or piston.
20. A system as claimed in any one of claims13 to 19, wherein the outlet is provided towards or at an end of a conduit.
21. A system as claimed in any one of claims 13 to 20, further comprising a flow controller in communication with the reservoir for controlling the rate of flow of second fluid to be directed towards the surface.
22. A system for reducing cavitation at surface that moves relatively with respect to a first fluid, the system comprising:
a degasser for degassing a second fluid;
a reservoir for holding the second fluid and that is in communication with the degasser,
an outlet in communication with the reservoir for directing the second fluid towards the surface.
23. A vessel that comprises the system of any one of claims 13 to 22.
24. A vessel comprising the system of any one of claims 13 to 22 when operated using the method of any one of claims 1 to 11.
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