Liquid Time Pty Ltd v Smartpark Technologies LLC [
[2020] APO 48
•19 November 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Liquid Time Pty Ltd v Smartpark Technologies LLC [2020] APO 48
Patent Application: 2017251684
Title:Surfing wave pool using ship waves
Patent Applicant: Smartpark Technologies LLC
Opponent:Liquid Time Pty Ltd
Delegate:R Subbarayan
Decision Date: 19 November 2020
Hearing Date: Written submissions filed on 25 June 2020
Catchwords: PATENTS - Surfing wave pool – opposition to grant of patent under section 59 – entitlement and eligible person – contractual relationship – opponent is sole eligible person
Representation: Patent attorney for the applicant: IP Gateway Patent and Trade Mark Attorneys Pty Ltd
Patent attorney for the opponent: Dark IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017251684
Title:Surfing wave pool using ship waves
Patent Applicant: Smartpark Technologies LLC
Date of Decision: 19 November 2020
DECISION
Liquid Time Pty Ltd is an eligible person in relation to the claimed invention and the nominated person Smartpark Technologies LLC is not an eligible person.
The provisions of section 33 of the Act and regulation 3.8 of the Regulations permit Liquid Time Pty Ltd to make a complete application under section 29 for a patent in relation to the invention within 3 months of the date of this decision. If Liquid Time Pty Ltd does make an application, the Commissioner may grant Liquid Time Pty Ltd a patent for the invention, so far as so claimed. It would also appear possible for the presently named applicant to file a request to amend the patent request to remove their name and insert Liquid Time Pty Ltd as applicant.
As such, while the opposition is successful and this application could be refused, I will defer consideration of whether to refuse the application for 3 months from the date of this decision to allow the parties to consider the options. After three months, I will decide whether to refuse the application or not.
REASONS FOR DECISION
BACKGROUND
Patent application 2017251684 in the name of Smartpark Technologies LLC (Smartpark) was filed on 23 October 2017 and claims priority from basic application US 15/429,136 filed on 9 February 2017. The inventor named in the patent request is Steven Anthony Schmied. The application was examined and advertised as having been accepted on 6 December 2018.
A notice of opposition to the grant of the patent under section 59 of the Patents Act (the Act) was filed on 6 March 2019 by Liquid Time Pty Ltd (Liquid Time). The Statement of Grounds and Particulars was filed on 6 June 2019. Liquid Time’s evidence in support (EIS) was filed out of time on 26 September 2019. Although Liquid Time requested an extension of time to file their EIS, the Commissioner was not inclined to grant the extension as Liquid Time had not shown that it had made all reasonable efforts to file the evidence in time and that it had been unable to do so despite acting promptly and diligently. However, on 14 February 2020 the Commissioner agreed to bring Liquid Time’s evidence into the proceedings under the provisions of regulation 5.23 on the basis that it was likely to highly relevant to the outcome of the opposition. Smartpark chose not to file any evidence in answer.
The parties were advised on 4 June 2020 that the matter would be heard through written submissions and set a time frame for filing of written submissions. Liquid Time’s submissions were received on 26 June 2020. Smartpark did not file any submissions.
GROUNDS OF OPPOSITION
The sole ground of opposition is that the nominated person Smartpark Technologies LLC is not entitled to the grant of a patent for the invention and that the rights to the claimed invention lie with Liquid Time Pty Ltd.
THE EVIDENCE
Liquid Time’s evidence which the Commissioner decided to consult under regulation 5.23 comprises a declaration of Gregory M. Webber dated 26 September 2019 together with exhibits GMW-1 to GMW-8.
Mr Webber is the CEO of Liquid Time, a company primarily involved in the development and commercialisation of wave pool technologies for many years. Their original wave pool design was invented by Mr Webber and is protected by Australian Patent No. 2004240161.
Exhibit GMW-1 is a signed copy of an Offer of Employment confirming the inventor Steven Anthony Schmied’s employment with Liquid Time.
Exhibit GMW-2 is a copy of a letter from Mr Schmied confirming the date of termination of his employment with Liquid Time.
Exhibit GMW-3 is a copy of a Candidate Agreement between Liquid Time and the Australian Maritime College of the University of Tasmania and the Technical University of Delft.
10. Exhibit GMW-4 is a copy of the specification of the opposed application.
11. Exhibit GMW-5 is a copy of the prosecution history for the opposed application in the Australian Patent Office.
12. Exhibit GMW-6 is a copy of a paper titled “A Novel Method for Generating Continuously Surfable Waves – Comparison of Predictions With Experimental Results”, Proceedings of the ASME 2011 30th International Conference on Ocean, Offshore and Arctic Engineering, June 19-24, 2011, Rotterdam, The Netherlands.
13. Exhibit GMW-7 is a copy of a paper titled “The Formation of Surfable Waves in a Circular Wave Pool – Comparison of Numerical and Experimental”, 31st International Conference on Ocean, Offshore and Arctic Engineering, June 10-15, 2012, Rio de Janeiro, Brazil.
14. Exhibit GMW-8 is titled “Annex A Pressure Sources”, which is an Annexure to an Engineering Report, Version 0.7, prepared by Mr Webber and Mr Schmied on behalf of Liquid Time on 9 September 2012.
RELEVANT LAW
15. As the application was filed after 15 April 2013, the present opposition is governed by the Act and Patents Regulations 1991 (the Regulations) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar Act). Amendments to sections 7, 40 and 60(3A) of the Actapply to the present case as a consequence of Schedule 1, items 55(1)(d) and 55(4)(a), and Schedule 6, item 133(7)(d) of the Raising the Bar Act.
16. The standard of proof that applies in the present case is the balance of probabilities. Under subsection 60(3A) of the Act, if I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of a patent exists, I may refuse the application.
THE SPECIFICATION
17. The invention is titled “Surfing Wave Pool Using Ship Waves” and is stated to relate broadly to “a wave pool for surfing using ship waves generated by one or more constant beam wavedozers” [0001].
18. The specification then states under the heading “Description of the Prior Art”, that while it is “the dream of every surfer to find consistent, long lasting, high quality waves” [0003] for surfing, this may often require surfers to travel long distances or to remote locations to find such waves. Therefore, efforts have been made to find other ways of providing consistent quality waves and that one of the solutions proposed in the prior art is to generate waves in controlled environment such as a wave pool.
19. It notes that wave pools have been known from 1934, when it was first introduced in the Wembley Swimming Pool in London. Since then many wave and surf pools have been built around the world, including linear wave pools, where the waves are generated at one end and travel to a beach at the other end, with the waves being created with piston-driven paddles or similar mechanical devices. However, the specificationt notes that such “man-made waves are not very appealing to surfers as the rides are short, and the waves generally weak and poorly shaped” [0005].
20. The specification states that it is known to bend the pool around a curve to concentrate the swell, or to shape the pool floor to improve the wave height, while another known concept is to drag an object though shallow water along a linear track creating waves in front of the object. The specification however notes that “deficiencies with these approaches involve both the lack of an authentic, scalable surfing wave motion of a moving wave breaking on a shoreline, the large power requirements to generate the waves and a limitation of a single rider being able to surf at one time, limiting the financial viability of the pool” [0007].
21. It states that another known concept is to generate waves using a moving hull as disclosed in patents such as US 3913332, US 6920651, AU 20049070401, US 20050286976, W02010/059871 and US20100017951, but none “have been overly successful as their hull or pool bathymetry did not efficiently create large smooth waves that broke in the desired breaking wave shape, and then quickly dispersed the broken wave energy to allow the next wave to be generated soon after the first wave” [0011].
22. The present invention is stated to provide an alternative to known surfing wave pools. It is characterised by the use of one or more ship hulls referred to as wavedozers that have a constant beam or width, to generate large smooth waves that are then triggered to break on a shallowing beach. A consistory statement relating to the wavedozer of the invention is provided as follows:
In one broad form an aspect of the present invention seeks to provide a wavedozer for use in generating waves in a surfing wave pool comprising a channel, the wavedozer including a hull having a constant beam and a profile defining a hull surface angled in a horizontal plane relative to the water surface, wherein the wavedozer is configured to move along a length of the channel to thereby generate ship waves by applying downward pressure from the hull surface onto the water in the channel as the wavedozer moves along a length of the channel [0020].
23. The specification then describes a preferred embodiment of the wave dozer and the wave pool with references to figures 1-4 that are reproduced below. Figure 1 is a cross sectional view of the pool channel and wavedozer, Figure 2 is a side elevation view of the wavedozer immersed in the pool, Figure 3 is a top plan view of the wavedozer and Figure 4 is a bottom perspective view of the wavedozer.
24. Figure 1 shows a wave pool in accordance with the invention, comprising a pool in the form of a channel having a deeper water section (10) and a shallowing wave breaking area (12). The shallow area includes a steep beach (22), a shallow beach (24) and an edge gutter (26).
25. A wavedozer (18) is placed in the deeper water section. The wavedozer in the simplest form is a flat plate (28) inclined at an angle 30 to the water surface 20. In the example shown in figure 2, the angling of the hull is achieved using a V-shaped profile. The wavedozer is characterised by having a constant beam (32) in that it has a constant width through its length as can be seen in figure 3. The wavedozer is movable in either direction along the length of the channel by means of a drive system. The movement of the wavedozer relative to the water surface applies downward pressure from the hull surface onto the water in the channel generating ship waves in the water.
26. The specification notes that the constant beam of the hull is a key feature of the invention.
The key element is that the wavedozer has a constant beam that only pushes vertically down on the water surface, as opposed to a hull with a changing beam that also pushes laterally (sideways) on the water. The result is the wavedozer efficiently generates large smooth waves with minimal energy required. A changing beam hull creates undesirable broken water wash around the hull, reducing the wave generating efficiency and reducing the use of the generated waves for surfing as surfers ride the unbroken face (the wall) of the wave [0040].
27. The specification ends with 15 claims of which claims 1, 6 and 15 are independent claims. These independent claims are as follows:
1. A wavedozer for use in generating waves in a surfing wave pool comprising a channel, the
wavedozer including a hull having a constant beam and a profile defining a hull surface angled in a horizontal plane relative to the water surface, wherein the wavedozer is configured to move along a length of the channel to thereby generate ship waves by applying downward pressure from the hull surface onto the water in the channel as the wave dozer moves along the length of the channel.
6. A surfing wave pool including:
a) a pool having a deeper pool area surrounding a substantially shallower pool area, the pool comprising a channel
b) pool edge bounding the pool
c) one or more wavedozers within the pool, each wavedozer including a hull having a constant beam and a profile defining a hull surface angled in a horizontal plane relative to the water surface, with the wavedozers being moveable along a length of the channel to generate ship waves by applying downward pressure from the hull surface onto the water.
15. A method of generating a ship waves including: providing a pool channel containing water and having a deeper pool area under one or more wavedozer(s), a shallower beach area to trigger wave breaking and a wave dissipation area; moving one or more wavedozers in a direction of travel along a length of the channel to generate ships waves by applying downward pressure from a hull surface onto the water, each wavedozer including a hull having a constant beam and a profile defining the hull surface angled in a horizontal plane relative to the water surface.
The Law on Entitlement
28. Section 59(a) of the Act reads as follows:
“The Minister or any other person may, in accordance with the regulations, oppose the grant of a standard patent on one or more of the following grounds, but on no other ground:
(a)that the nominated person is either:
(i)not entitled to a grant of a patent for the invention; or
(ii)entitled to a grant of a patent for the invention but only in conjunction with some other person…”
29. The Dictionary at Schedule 1 of the Act defines an eligible person as follows:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
30. Section 15(1) of the Act reads as follows:
“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).”
31. That is a patent may be granted to the inventor of an invention or someone who derives title to the invention from the inventor.
32. The law on inventorship/entitlement has been considered in University of Western Australia v Gray [2009] FCAFC 116 (“UWA”) and Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 (“Polwood”). In particular, steps for determining who is an eligible person are apparent from [253] of UWA as part of a broader discussion from [253] to [256]. These steps may be given for present purposes as follows:
i.identify the “inventive concept” of the invention as defined in 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.
iii.determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
33. Polwood provides guidance with regard to determining the inventive concept at [60]:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee's description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”
34. In relation to the question of when the invention was conceived, in University of Western Australia v Gray (No 20) [2008] FCA 498, French J listed the following principles at 1426:
1.Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2.Conception is the "formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice". It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
3.An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
4.It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
35. Following the principles outlined in UWA, I need to first identify the inventive concept for the claimed invention of the opposed application and then determine the question of inventorship with regard to the same. Finally, I need to determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
The Inventive Concept
36. In relation to the inventive concept, Liquid Time has submitted as follows:
“From the prosecution history, it is apparent that some weight is given to the features
identified in paragraph 6 of the Webber declaration, namely:
(i) The hull of the wavedozer has a constant beam;
(ii) The wavedozer generates “ship waves” by applying downward pressure from the hull surface onto the water; and
(iii) The wavedozer is “configured to move along a length of the channel” of the wave pool.It is submitted that from the prosecution history it is reasonable to infer that these features represent the inventive contribution made by the invention to the art. It is also noted that Mr Webber confirms in paragraph 7 of the Webber declaration that these features formed part of the technology produced during Mr Schmied’s time with Liquid Time, a statement that has not been refuted by the applicant”.
37. From my earlier discussion regarding the Specification, it is clear that key features of the present invention are a wavedozer in the form of a hull that has a constant beam or width along the entire length of the hull and having a hull surface that is angled in a horizontal direction such that movement of the hull in a body of water will apply downward pressure on the water to thereby create waves. In my view, the angled hull surface and the constant beam or width of the wavedozer constitute the inventive concept of the opposed application. This inventive concept is present in all the independent claims.
Is Mr Schmied the Inventor?
38. The patent request names the sole inventor as Mr Schmied. This is not disputed by Liquid Time. Furthermore, while some of the publications filed in evidence by Liquid Time (exhibits GMW-6 and GMW-7) list Mr Schmied as one among a number of co-authors of these publications, without any claims to inventorship from one or more of those other co-authors, there is no basis for me to conclude that Mr Schmied is not the sole inventor of the claimed invention. I am therefore satisfied that Mr Schmied is the sole inventor as stated in the patent request.
The Contractual Relationship
39. Ownership originates with the inventor, and remains with the inventor unless it is transferred to another person. Liquid Time has submitted that Mr Schmied was an employee of Liquid Time in the period when the present invention was conceived and that, as per his employment agreement (the Agreement) with Liquid Time, any intellectual property that was created by him during his employment belongs to Liquid Time.
40. According to Liquid Time, Mr Schmied’s employment with Liquid Time extended from 19 January 2006 through to 30 September 2013. While not specifically mentioned by Mr Webber, I note from the agreement submitted as exhibit GMW-1, that Mr Schmied was employed as a casual employee.
41. In relation to intellectual property the agreement states as follows:
“4. Intellectual Property (IP)
4.1 To the extent that the Employee has not already assigned to Liquid Time all existing and future right, title and interest in IP which subsists in or arises out of the Materials:a. Liquid Time and Gregory Webber (US and China) are the patent owners of the Liquid Time Wave Pool; patent No. PCT/AUS2005/001855. All IP evolving from the existing wave generating apparatus patent, the development and building of the pools, formulae relating to wave generation and hull shape and all other information relating to the pool design, construction and operation shall vest in the ownership of Liquid Time and Gregory Webber as applicable.
b. All concepts relating to surfboard designs and surfboard construction concepts shall remain confidential and any patents applied for in relation to such designs or construction techniques, shall be in the name of Gregory Webber.
c. The spinning skate bowl concept, as described by Greg Webber to Steven Schmied on 16 July 2006 shall if, patent is applied for, be in the name and ownership of Greg Webber.
d. Ownership of all Background and Foreground IP vests on its creation in Gregory
Webber, Webber Surfboards and / or Liquid Time as applicable.e. The Employee will not do or cause to be done anything that would prejudice the
subsistence of the right title and interest of Gregory Webber and Liquid Time in
Intellectual Property subsisting in or arising out of the Materials.f. The Employee shall immediately notify Gregory Webber and Liquid Time of any
information which comes to the Employee's attention regarding any actual or potential infringement of the Intellectual Property assigned to Gregory Webber and Liquid Time pursuant to this clause 4.1”.
42. Mr Webber has also stated that Mr Schmied was during his employment with Liquid Time, involved in a number of projects with members of the Australian Maritime College (AMC) of the University of Tasmania and the Technical University of Delft (TUD) under a joint research program conducted on behalf of Liquid Time and that under this joint research program, all intellectual property generated belongs to Liquid Time on the understanding that Liquid Time was funding most of the expenses for the program. This is confirmed in exhibit GMW-3 which is a copy of a Candidate Agreement between the parties at Item 16 (Intellectual Property).
“Liquid Time Pty Ltd own the patent and other background intellectual property pertaining to the doctorate program, and are funding most of the expenses for the program. Therefore foreground Intellectual Property developed under the program will be assigned to Liquid Time Pty Ltd. Liquid Time Pty Ltd will provide UTAS and TUDeflt unlimited license for use of methodologies developed under the project, and license for continuing use of developed data on an agreed basis”.
43. I agree that the clauses in relation to Intellectual Property in the Agreement and the Candidate Agreement clearly support Liquid Time’s submission that any intellectual property relating to wave pool technology that is generated by Mr Schmied’s work during the course of his employment with Liquid Time is owned by Liquid Time. Although Smartpark has filed a notice of entitlement stating that they are entitled to the invention from the inventor, they have chosen not to defend their entitlement and did not file any responding evidence or submissions to refute Liquid Time’s sole claim to entitlement or to establish their claim to joint entitlement. I am therefore satisfied on the balance of probabilities that on the basis of the contractual obligations between Mr Schmied and Liquid Time, Liquid Time is solely entitled to any intellectual property relating to wave pools created by Mr Schmied during his tenure of employment with Liquid Time.
Was the current invention created in the course of Mr Schmied’s employment?
44. As noted earlier, the current invention relates to a wave pool and more particularly to a movable wavedozer in the form of a hull that is angled to the horizontal and has a constant beam through its length.
45. Liquid Time has been involved in the development of wave pools since at least 2004 when they filed an Australian patent application 2004240161 for their wave pool design. Mr Schmied commenced employment with Liquid Time in 2006 and according to Mr Webber, Mr Schmied was involved in the further development of wave pool technologies for Liquid Time. During his time with Liquid Time, Mr Schmied was also involved in a number of projects with members of the AMC and TUD under a joint research program conducted on behalf of Liquid Time. These projects again related to wave pool and wave creation technologies.
46. Liquid Time has submitted that all of the key features of the wave dozer and wave pool in the claimed invention of the present application had been developed by Mr Schmied during the period of his employment with Liquid Time.
47. Exhibit GMW-6 is a research paper titled “A Novel Method For Generating Continuously Surfable Waves - Comparison Of Predictions With Experimental Results” and was co-authored by Mr Schmied as part of his project work with the AMC and TUD and presented at the ASME 2011 30th International Conference on Ocean, Offshore and Arctic Engineering, June 19-24, 2011, Rotterdam, The Netherlands.
48. It discloses a wave pool with a deep area and a shallow area with a sloping bathymetry and a movable pressure source in the deep part of the pool that can generate waves in the pool. The cross section of the channel forming the wave pool is shown in figure 1 reproduced below:
49. One of the models tested (model 3) comprises a pressure source in the form of a wavedozer that is basically wedge-shaped having a maximum length of 1500mm length, 300mm beam and an angle of attack of 14 degrees. Figure 4 reproduced below shows the wavedozer.
50. Mr Webber has stated at [12] that the wavedozer shown in this figure has a hull of constant beam and generates waves by applying downward pressure from the hull surface onto the water. I agree that the wavedozer of figure 4 appears to have a constant beam or width along its length and the hull surface is also angled to the horizontal plane.
51. Exhibit GMW-7 is again a research paper titled “The Formation Of Surfable Waves In A Circular Wave Pool -Comparison Of Numerical and Experimental” and was again co-authored by Mr Schmied as part of his project work with the AMC and TUD and presented at the 31st International Conference on Ocean, Offshore and Arctic Engineering, June 10-15, 2012, Rio de Janeiro, Brazil.
52. This document again describes a wave pool with a deep area and a shallow area with a sloping bathymetry with a movable pressure source that can generate waves in the pool, where, in one of the examples tested, the pressure source is a wavedozer. This paper also mentions on page 2, the wave pool concept devised by Mr Webber and also the work done by Mr Schmied.
“Then Steven Schmied started his PhD project and has being continuing experimental research at AMC since 2009. He has tested several different pressure sources in straight line [ 6] and circular track [3]. He also has done some investigations to figure out beach shape effect on wave breaking parameters. Nathan Doyle is another bachelor student who did numerical investigation of predicting curved path wave pattern for his final project in 2010 [7]. Sanne Van Essen Used RAPID software (non-linear potential flow) which was developed in TUDelf University to predict wave height for wavedozer [8]”.
53. Similar to GMW-6, the wavedozer used in these experiments is basically wedge-shaped having a maximum length of 1500mm length, constant beam of 300mm and an angle of attack of 14 degrees. The basic shape of the wavedozer can be seen in figure 10 that is reproduced below:
54. Exhibit GMW-8 is an annex to an Engineering Research Report prepared by Mr Webber and Mr Schmied for Webber Wave Pools and provides experimental test data for waves created in a wave pool with a pressure source. Some of the models tested comprise symmetrical wavedozers as shown in figure A7 which is reproduced below.
55. This symmetrical model looks very similar to the wavedozer shape shown in figure 2 of the opposed application. Mr Webber has also confirmed in his declaration at [14] that the effective beam in this example is constant across the hull of the wavedozer.
56. It is clear from the foregoing, that the inventive concept of the wavedozer of the opposed application, namely the movable hull with the constant beam and angled hull surface, had been developed by Mr Schmied during his work with Liquid Time and his project work with the AMC. Even in relation to the actual pool design, the features of the pool with a deep area and a shallow area with a sloping bathymetry had been used by Mr Schmied in the wave pools for the projects with the AMC and TUD.
57. I am therefore satisfied that the inventive concept of the opposed application had been conceived by Mr Schmied during his employment with Liquid Time.
58. Any further features of the claimed invention such as the sinusoidal profile of the hull defined in claim 3 would in my view relate to reduction to practice rather than any new concept.
The Eligible Person
59. I have found that Mr Schmied is the inventor of the opposed application and that the conception of the claimed invention happened during his employment with Liquid Time. I have also found that as a consequence of the contractual obligations between Mr Schmied and Liquid Time, Liquid Time is solely entitled to any intellectual property relating to wave pools created by Mr Schmied during his tenure of employment with Liquid Time. I therefore find that the eligible person for the invention so far as claimed in the opposed application is Liquid Time and not Smartpark Technologies LLC.
CONCLUSION
60. Liquid Time is an eligible person in relation to the claimed invention and the nominated person Smartpark Technologies LLC is not an eligible person.
61. The provisions of section 33 of the Act and regulation 3.8 of the Regulations permit Liquid Time to make a complete application under section 29 for a patent in relation to the invention within 3 months of the date of this decision. If Liquid Time does make an application, the Commissioner may grant Liquid Time a patent for the invention, so far as so claimed. It would also appear possible for the presently named applicant to file a request to amend the patent request to remove their name and insert Liquid Time as the applicant.
62. As such, while the opposition is successful and this application could be refused, I will defer consideration of whether to refuse the application for 3 months from the date of this decision to allow the parties to consider the options. After three months, I will decide whether to refuse the application or not.
FURTHER COMMENT
63. As is clear from the decision, the invention defined in the claims appear to have been disclosed in the two research papers filed as exhibits GMW-6 and GMW-7. As such, it would appear that, regardless of which option is taken to proceed with patent protection for the invention, it is likely the Commissioner will consider whether to re-examine the application in light of these two papers.
COSTS
64. Costs normally follow the event and I see no reason to depart from that practice. As the opposition has been successful, I award costs according to schedule 8 against the applicant Smartpark Technologies LLC.
R Subbarayan
Delegate of the Commissioner of Patents
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