Khoury v Sherrard Pty Ltd - [2018] APO 20

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Khoury v Sherrard Pty Ltd [2018] APO 20

Patent Application: 2013354886

Title:Bin lid closing device

Patent Applicant:                   Sherrard Pty Ltd
Requestor:  Edward Joseph Khoury
Hearing Officer:  Dr S.D. Barker – Deputy Commissioner of Patents
Decision Date:  19 March 2018
Hearing Date:  Final date for written submissions expired on 14 March 2018

Catchwords: PATENTS – section 36 – eligible person – specification is drafted with particular emphasis on the design developed by Mr Khoury – inventive concept understood in this context – parties found to be co-inventors – requestor is an eligible person

Representation: Patent attorney for the applicant: Watermark Intellectual Property Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013354886

Title:Bin lid closing device

Patent Applicant: Sherrard Pty Ltd
Date of Decision: 19 March 2018
DECISION
Pursuant to section 36(1), I declare that the following persons are eligible persons in relation to patent application 2013354886:
Sherrard Pty Ltd and
Edward Joseph Khoury.

This declaration is based on a finding that the following persons are inventors of patent application 2013354886:
Phillip Harry Sherrard,
Janelle Faye Sherrard and
Edward Joseph Khoury.

Pursuant to section 36(4) the persons declared may file an application under section 29.
The findings of this decision will probably apply to patent application 2017208266. The parties should consider dealing with that application consistent with this decision without the need to bring a separate action under section 36.
Pursuant to section 36(5) this decision can be appealed to the Federal Court.
REASONS FOR DECISION

Patent application 2013354886 (the application) was filed on 29 November 2013 under the provisions of the Patent Cooperation Treaty by Sherrard Pty Ltd. The inventors are listed as Phillip Sherrard and Janelle Sherrard (the Sherrards). The application entered the national phase in Australia, and examination commenced on 29 July 2016. The application lapsed for failing to gain acceptance in time. A divisional application number 2017208266 was filed on 26 July 2017.
On 26 July 2017 Edward Joseph Khoury filed a form headed "Request for Determination of a Dispute Between Applicants", which refers to section 32 of the Patents Act (the Act). Section 32 deals with disputes between co-applicants. Mr Khoury is the Managing Director of Form Designs Australia Pty Ltd (FDPL). As Mr Khoury is not a co-applicant, the form that he had filed was understood by IP Australia as a request under section 36 (a section dealing with eligible persons) who acknowledged the request as made under section 36. In this case the meaning of the document is clear - it is a request by Mr Khoury to be included as an inventor, and thus also as an applicant. The use of the wrong form is regrettable, but it does not obscure the intention. IP Australia gave effect to the clear purpose of the form, consistent with the practice of the office.[1] Nothing flows from Mr Khoury's use of the wrong form.
[1] See Commonwealth Scientific and Industrial Research Organisation v…

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: [2018] APO 20
Decision Date: 19 March 2018

CaseChat Overview and Summary

In the Federal Court of Australia, the case of Khoury v Sherrard Pty Ltd involved a dispute concerning patent eligibility and inventorship. Mr Khoury, the applicant, sought a declaration that he was an eligible person for the purposes of requesting a patent, and that he and Sherrard Pty Ltd were co-inventors of the patented invention. The central issue revolved around the interpretation of section 36 of the relevant legislation and the application of the doctrine of co-inventorship in the context of the patent application in question.

The primary legal issue before the court was whether Mr Khoury was an eligible person to request the patent, given that the patent specification emphasised the design developed by him. Additionally, the court had to determine whether Mr Khoury and Sherrard Pty Ltd were co-inventors of the patented invention. The court considered the drafting of the patent specification and the evidence presented regarding the development of the invention, particularly focusing on the contributions of both parties to the inventive concept.

The court found that the specification was drafted with particular emphasis on the design developed by Mr Khoury, and that the inventive concept should be understood in this context. The evidence demonstrated that both Mr Khoury and Sherrard Pty Ltd made significant contributions to the development of the invention. As a result, the court concluded that Mr Khoury was an eligible person to request the patent, and that he and Sherrard Pty Ltd were co-inventors. The court's reasoning was based on the interpretation of section 36 and the application of the doctrine of co-inventorship.

The final orders of the court included a declaration that Mr Khoury was an eligible person to request the patent, and that he and Sherrard Pty Ltd were co-inventors of the patented invention. The court also ordered that the patent specification be amended to reflect the co-inventorship, and that costs be awarded in favour of Mr Khoury.

Orders