Liquid Time Pty Ltd v Smartpark Technologies LLC [ - [2020] APO 48

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…

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: [2020] APO 48
Decision Date: 19 November 2020

CaseChat Overview and Summary

Liquid Time Pty Ltd initiated proceedings against Smartpark Technologies LLC in the Federal Court of Australia, contesting the grant of a patent for a surfing wave pool. The dispute centred on whether Smartpark Technologies LLC was the rightful and sole eligible person to hold the patent, considering the contractual relationship between the parties. The crux of the matter was whether Liquid Time Pty Ltd had been deprived of its entitlement to the patent due to the contractual obligations with Smartpark Technologies LLC.

The court was tasked with determining whether Liquid Time Pty Ltd was the sole eligible person under the relevant legislation, given the contractual relationship between the parties. The key issue was whether the contractual obligations between Liquid Time Pty Ltd and Smartpark Technologies LLC precluded the latter from being the sole eligible person to hold the patent. The court needed to interpret the relevant provisions of the Patents Act 1990 (Cth) and assess whether Liquid Time Pty Ltd had been unjustly deprived of its entitlement to the patent.

In its decision, the court concluded that Liquid Time Pty Ltd was indeed the sole eligible person to hold the patent. The court found that the contractual relationship between the parties did not alter the entitlement to the patent. The court emphasised that the statutory provisions regarding the eligibility of a person to hold a patent were clear and did not permit any alteration based on contractual arrangements. Consequently, the opposition to the grant of the patent was upheld, and the patent was revoked. The court ordered that the patent granted to Smartpark Technologies LLC be cancelled and that Liquid Time Pty Ltd be recognised as the sole eligible person to hold the patent.

Orders