Michael Sinnott v Aunex Pty Ltd
[2021] APO 23
•8 June 2021
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Michael Sinnott v Aunex Pty Ltd [2021] APO 23
Patent:2018203404
Title:Apparatus for detaching surgical blades
Patentee:Aunex Pty Ltd
Requestor:Michael Sinnott
Delegate:Felix White
Decision Date: 8 June 2021
Hearing Date: Written submissions filed on 11 March 2021
Catchwords: PATENTS – Request for rectification of Register under s191A – inventive concept – conception – request dismissed – costs awarded.
Representation: Patent attorney for the Patentee: Kings Patent & Trade Marks Attorneys
Patent attorney for the Requestor: Spruson & Ferguson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2018203404
Title:Apparatus for detaching surgical blades
Patentee:Aunex Pty Ltd
Date of Decision: 8 June 2021
DECISION
The entitlement to patent 2018203404 is properly recorded on the Register. The request for rectification of the Register is dismissed. I award costs according to Schedule 8 against Michael Sinnott.
REASONS FOR DECISION
This decision is in relation to a request under sec 191A of the Patents Act 1990 (“the Act”) regarding the inventorship and ownership of Australian Patent 2018203404.
Background
Qlicksmart Pty Ltd is a small business producing healthcare products.[1] It is part of the Brisbane-based Qlicksmart Group (“Qlicksmart”), which was founded by Drs Michael Sinnott and Neville Henry AM in 1995.[2]
[1] Sinnott #1 at 1
[2] Requestor’s submissions in support (“RS”) at p.1, exhibit NH-1 at bottom of p.3)
Dr Sinnott is the Managing Director of Qlicksmart. Dr Henry is the R&D Director of Qlicksmart and is the named inventor on a number of patents relating to scalpel blade removers, including AU-B-34659/95[3] (filed 8 September 1995) AU2004231277 B2[4] (filed 23 April 2004) and AU2013239342 B2[5] (filed 25 March 2013), all of which have been assigned to Qlicksmart.
[3] Exhibit KQ-01
[4] Exhibit KQ-02
[5] Corresponding to exhibits MS-9 and CP-01
Kim Sia Quek was employed by Smartstream Pty. Ltd (also part of the Qlicksmark group) as a general manager in 2005; his duties also included General Manager of Qlicksmart Pty Ltd.[6] His responsibilities as General Manager included, inter alia, mentoring staff, web and database maintenance, and R&D.[7] Mr Quek was the named inventor on one patent application filed during his employment at Qlicksmart: AU2014218499 (filed on 19 February 2014) which lapsed without being granted.[8]
[6] See Quek #1 at 2 and exhibit EIR-12
[7] See exhibit MS-2
[8] See exhibit MS-1
Other members of the Qlicksmart design team included Robert Geddes and Andrew Peterson, who were consultant industrial designers.
Mr Quek gave six months’ notice of his resignation to Dr Sinnott on 31 October 2015, effective 1 May 2016.[9]
[9] See exhibit MS-3. Quek #1 at 2 says he remained employed until 1 July 2016 but this does not influence the timeline of events.
Mr Quek founded Aunex Pty Ltd in late 2016.[10]
[10] See Quek #1 at 1: the Australian Business Register indicates that Aunex Pty Ltd ABN 65 613 987 812 was registered on 15 November 2016
Mr Quek filed Australian provisional application 2017900477 on 15 February 2017, and subsequently filed international application PCT/AU2018/050115 on February 2018. This entered the Australian National Phase on 15 May 2018 as Australian patent application 2018203404. Expedited examination was requested on the same date, and the patent was accepted on 18 September 2018 without further amendment, and granted on 24 January 2019.[11] The Patent was granted in the name of Aunex Pty Ltd (“the Patentee”) and lists Kim Quek as its sole inventor.[12]
[11] The granted patent was initially published without incorporation of amendments made to the PCT application under Art 19 of the PCT; the corrected claims were republished on 11 October 2019.
[12] See exhibit MS-4
A request for rectification of the Register under 191A was filed on 29 January 2020 by Dr Sinnott (“The Requestor”) seeking addition of Dr Henry as an inventor, and replacement of the patent owner with Qlicksmart Pty Ltd. The Patentee confirmed on 18 February 2020 that they would defend their entitlement to the patent.
The evidentiary period:
10.Evidence in support provided by the Requestor with their letter of 29 January 2020 consists of a declaration by Michael Sinnott dated 24 January 2020 (“Sinnott #1”) and exhibits MS-1 to MS-16.
11.Evidence in answer provided by the Patentee with a letter dated 31 March 2020 consists of a declaration by Kim Quek dated 31 March 2020 (“Quek #1”) and exhibits KQ-1 to KQ‑8.
12.Evidence in reply provided by the Requestor with a letter dated 1 May 2020 consists of the following declarations:
oMichael Sinnott dated 1 May 2020 (“Sinnott #2”) and exhibits EIR-1 to EIR-14
oDr Neville Henry dated 30 April 2020 (“Henry”) and exhibits NH-1 to NH-2
oAndrew Peterson dated 2 May 2020 (“Peterson”) and exhibit AP-1
oRobert Geddes dated 1 May 2020 (“Geddes”) and exhibit RG-1
13.Simultaneously with the Evidence in Reply, an amended statement of grounds was filed, requesting that Mr Quek be replaced as inventor by Dr Henry and the Patentee be replaced by Qlicksmart Pty. Ltd. This amendment was accepted[13] but precipitated another round of evidence from the parties, under the provisions of Reg 22.24 (analogous to the provisions of Reg 5.23).
[13] See direction from the Commissioner’s delegate dated 24 July 2020.
14.The Patentee filed evidence under Reg 22.24 on 19 June 2020 which has been considered by the Commissioner:
oDeclaration of Kim Quek dated 19 June 2020 (“Quek #2”) and exhibits KQ2-01 to KQ2-10
oDeclaration of Clinton Priddle dated 19 June 2020 (“Priddle”) and exhibit CP-01
15.The Requestor was given the opportunity to file further evidence in response, and on 30 September 2020 submitted a further declaration of Michael Sinnott dated 29 September 2020 (“Sinnott #3”) and exhibits MS3-01 to MS3-04.
16.The parties agreed to be heard by written submissions. Submissions in support were received on 19 February 2021. Submissions in answer were received on 9 March 2021.
Grounds:
17.The Requestor set out their request in the form of grounds and particulars as follows:[14]
[14] Summarised in RS at p 7-8
Ground 1:
191A(1)(a) Omission of an entry from the Register.Particulars of Ground 1
1. Mr Quek is not an inventor of the invention.
2. Dr Henry is the sole inventor of the invention.The Requestor seeks the following:
(i) Rectification of the Register and a declaration under Section 191A stating that Dr Henry is the inventor of the Patent, with Mr Quek being removed.Ground 2:
191A(1)(b) Entry made in the Register without sufficient cause.Particulars of Ground 2
1. Mr Quek assisted with immaterial developments of the invention while he was employed to invent for Qlicksmart.
2. Dr Henry, the rightful inventor of the invention, does not give consent for the invention to be assigned to Aunex Pty Ltd.
3. Without being an inventor or the consent of Dr Neville Henry, Mr Quek is not entitled to assign the invention to Aunex Pty Ltd.The Requestor seeks the following:
(ii) Rectification of the Register and a declaration under Section 191A stating that Aunex Pty Ltd is not the owner of the Patent, and that Qlicksmart Pty Ltd is the correct owner.Ground 3:
191A(1)(c) Entry wrongly existing in the Register.Particulars of Ground 3
1. Mr Quek assisted in immaterial development of the invention while employed to invent for Qlicksmart.
2. Dr Henry, the sole inventor of the invention, acknowledges that ownership of the invention resides with Qlicksmart Pty Ltd.
3. Qlicksmart is the correct owner of the invention and the Patent.The Requestor seeks the following:
(iii) Rectification of the Register and a declaration under Section 191A stating that Qlicksmart Pty Ltd is the owner of AU 2018203404, PCT PCT/AU2018/050115, and Australian Provision Patent Application 2017900477.
18.To summarise, the Requestor seeks the removal of Mr Quek as an inventor of the Patent, the addition of Dr Neville Henry as an inventor of the Patent as well as corresponding provisional and international applications,[15] and correction of ownership from Aunex to Qlicksmart on the grounds that Mr Quek had no rights to transfer.
[15] There is no provision in the Act to make amendments to an international application. However this is moot in view of the remainder of this decision.
19.Dr Henry has provided an assignment[16] of his rights in the Patent to Qlicksmart.
[16] Exhibit NH-2
Statutory basis
20.Subsection 191A(1) of the Act gives the Commissioner the discretionary power to rectify the Register if she is satisfied on the balance of probabilities that an error exists.
21.Subsection 191A(2) of the Act compels the Commissioner to make a declaration as to entitlement to a patent if she is satisfied on the balance of probabilities that the Register does not correctly record such entitlement, and Subsection 191A(3) of the Act compels the Commissioner to rectify the Register if such a declaration is made.
22.The Requestor has requested such a declaration. Therefore, if I as the Commissioner’s delegate am satisfied on the balance of probabilities that entitlement is not correctly recorded, I must rectify the Register.
23.Entitlement to a patent derives ultimately from inventorship. The key question in this case is whether the inventor of the Patent is Dr Henry, as alleged by the Requestor, or Mr. Quek, as currently reflected on the Register.
Onus
24.The Requestor bears the onus to prove their case on entitlement on the balance of probabilities.[17] The Patentee conceded[18] that the evidentiary burden may shift under some circumstances, especially when knowledge of relevant facts lies particularly with one party or the other.[19] It is the task of a delegate to weigh evidence and I will proceed to consider the evidence on file in the usual way.
[17] See Woodside Energy Limited v Richard John Moore [2018] APO 82
[18] Patentee’s submissions in support (“PS”) at 22
[19] See Dunlop Holdings Limited's Application [1979] RPC 523
Test for determination of inventorship
25.The Patentee summarised the tests for determination of inventorship at paragraphs 19-22 of their submissions in chief, and I agree that this accurately reflects the current law in Australia.
26.The Federal Court has stated that the determination of who is an eligible person and entitlement is assessed by considering a three-step approach in University of Western Australia v Gray [2009] FCAFC 116 (paraphrased from [253]):
(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 contractual or fiduciary relationships give rise to proprietary rights in the invention”
27.With respect to the first step, Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 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.
28.With respect to the second step, the question of when the invention was conceived was considered in University of Western Australia v Gray (No 20) [2008] FCA 498 at [1426], where French J listed the following principles used by US appellate courts, and which were not disturbed on appeal:
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.
Identification of the inventive concept.
29.It is clear from the above that the inventive concept should principally be discerned from the specification, in particular admissions of drawbacks of the prior art, the objects of the invention and what are the claimed features that contribute to overcoming one or more of these drawbacks and achieving the objects of the invention.[20] The claims may assist in understanding the inventive concept but need not correspond to it exactly: rather they represent the legal monopoly for which protection has been sought.
[20] Michael John Arieni v Sun-Wizard Holding Pty Ltd [2021] APO 20 at 49
The description of the patent
30.The Patent is directed generally to devices for removing used surgical scalpel blades from scalpel handles.[21] Without going into fine detail, the Patent describes that removal of a disposable scalpel blade requires removing the heel portion 25 of a scalpel blade from the shoulder portion 14 of the tang of a scalpel so as to permit the handle to be drawn away from the blade, shown here with reference to Fig 1 and 1A of the Patent.
[21] Patent specification at [01]. All paragraph references are to the patent specification unless indicated otherwise.
31.The specification describes that this removal is a need to be addressed[22] and that whilst various blade removal devices are known in the art, they have problems associated with them. This section then mentions four example patent publications, the following three of which are owned by Qlicksmart:
[22] [07]
·US20150047170A1 (corresponding to Dr Henry’s 2013 patent) is said to have a high number of moving parts that can make manufacturing difficult;
·WO2004093706A1 (corresponding to Dr Henry’s 2003 patent) is said to be designed to remove only one blade;
·US5875533 (corresponding to Dr Henry’s 1993 patent) is said to only be able to accommodate a limited range of blades and handles.
32.Other shortcomings of prior art devices are said to be failure due to excessive friction and jamming. The specification then says it would be desirable to provide a tool which addresses “at least some of the problems known in the prior art”.
33.The Patent has 16 claims, of which only claim 1 is independent. Claim 1 is as follows:
1. An apparatus for detaching a blade from a scalpel handle, the blade having a cutting portion and a heel portion, said blade being removably mounted on a tang provided on the scalpel handle, said apparatus comprising:
a flexible blade detachment member having a stepped portion for engaging the heel of the blade and a leading angled portion, the detachment member defining an opening in the form of a tang receiving slot extending between a proximal end and a distal end relative to the heel portion of the blade, said opening being provided for receiving the tang therein and positioning the mounted blade adjacent an underside of the detachment member;
a backing member comprising a backing plate;
the detachment member being arranged adjacent the backing member, the backing member arranged for constraining a flexing direction of the detachment member such that during use the detachment member flexes in only one direction, away from the mounting tang in response to force applied by the handle to the leading angled portion thereby causing the heel of the blade and being bought [sic] away from the handle wherein upon exerting a manual force for withdrawing the tang from the opening, the stepped portion engages the heel of the blade resulting in detachment of the blade from the tang.
34.The specification provides a detailed description[23] of how the invention set out in claim 1 works with reference to the figures. The detailed description does not specifically describe how any of the defects in the prior art have been overcome. It is worth noting however that the detailed description does draw attention to certain aspects of the backing plate that are not defined in the claims: the backing plate is repeatedly pointed out as being rigid[24] and contiguously positioned with the blade detachment member.[25]
[23] [44]-[58]
[24] [44] line 4, [55] line 19
[25] [44] line 4, [46] line 18, [47] line 21
35.The specification contains 14 Figures: Figures 2-7 are said to illustrate a first embodiment of the present invention, and Figures 8-14 are said to illustrate a second embodiment of the present invention.
36.Both the first and second embodiments share the features of the flexible blade detachment member 112/212 and a contiguously positioned rigid backing plate 120/220 constraining the direction of deflection of the detachment member. Figures 4 and 11 are reproduced below for illustration.
Submissions relating to inventive concept:
37.The Patentee’s position[26] is that the inventive concept is the realisation that “the problem with the handle going under the blade detachment member when force is applied to the leading portion thereof could be solved by restricting the direction in [sic] the blade detachment member will flex” and that the solution was a rigid backing member that restricted the direction the detachment member may flex when force is applied by the handle to the leading angled portion.
[26] See PS at 45-49 and Patentee’s submissions in answer (“PA”) at 24
38.The Requestor’s position appears to be that the inventive concept is the combination of the flexible detachment member and a backing plate. In the Requestor’s submissions in answer (“RA”) at 11 the Requestor slightly misquotes the last paragraph of claim 1 as follows: “the detachment member being arranged adjacent the backing member, the backing member arranged for constraining a flexing direction of the detachment member such that during use the detachment member flexes in only one direction, away from the mounting tang in response to force applied by the handle to the leading angled portion”
Consideration of inventive concept:
39.Taking all of the above into consideration, I consider that the inventive concept of the patent resides in the arrangement of a rigid backing plate arranged contiguously with the flexible blade detachment member so as to constrain the flexing of the detachment member in one direction only.
40.I note that the claims as accepted could potentially be construed to be broader than this as they do not explicitly define the nature of the backing plate. However as set out in Polwood the claims are to be used together with the description for determining the inventive concept.
Patentee’s evidence relating to conception
41.In Mr Quek’s first declaration, he stated[27] that he started to develop a new, simpler blade remover in August 2016 as an “antithesis” to the Qlicksmart products “New Generation Blade Remover” (corresponding to Dr Henry’s 2013 patent[28]) and “BladeFLASK” (corresponding to Dr Henry’s 1995 patent[29]). He stated his product “Uniflex” was very simple and had no moving parts unlike the “New Generation Blade Remover” and filed a provisional patent application for it in February 2017.
[27] Quek #1 at 20-25
[28] Quek #1 at 11
[29] Quek #1 at 7
42.In an attachment to his second declaration Mr Quek provided a more detailed narrative of events.[30] The narrative commences as follows:
[30] Exhibit KQ2-10
A – Design and Manufacturing Criteria
In or around July-August 2016, I set goals for development of a new blade remover by defining design and manufacturing criteria. My starting point was to go back to basics and included an investigation of publicly available technology, such as that described in European Patent EP0569122, which has expired.
My initial design and manufacturing criteria included:
1) Simplicity. I wanted to create an antithesis to the complicated BladeFLASK (Patent Application Number .4659/95) and the Qlicksmart New Generation Blade Remover (Patent Application Number 2013239342)
…
43.Mr Quek’s narrative goes on to describe a number of other objectives, and describes the design steps he took between August and December 2016, including a number of “dead ends”[31] that he did not pursue. After identifying a problem with the scalpel blade inadvertently going under the detachment member at times, the narrative concludes as follows:
[31] Notably, one of the admitted dead ends shown in Fig 3 of KQ2-10 appears to have been taken from MS-13 but corresponds to the disclosure of Dr Henry’s 2013 patent at paragraphs [0012], [0032], and [0041]. It is clear from the following paragraph in KQ2-10 that Mr Quek does not consider it part of his inventive contribution.
E – Creation of Uniflex – December 2016 onwards
After many prototypes and trials, including adjusting the flexibility of the blade detachment member, I had a breakthrough in late 2016 when I realised that the problem with the handle going under the blade detachment member could be solved by restricting the direction in [sic] the blade detachment member will flex.
I created a prototype with a backing member that was rigid, and firmly moulded to the side frame to ensure it remains firm and does not move.
Photos of this prototype are illustrated below
44.This prototype is consistent with Fig 2 of the Patent.
45.Although the Patent does generally mention problems with jamming, the Patent is silent as to the specific problem of the handle going under the blade detachment member. However as discussed above it is very clear that the feature of the backing plate constraining the flexing of the detachment member in one direction during use is disclosed in the Patent.[32]
[32] see e.g. [44] and last line of [46]
46.Mr Quek’s evidence appears consistent with the proposition that he conceived the invention of a fixed backing plate constraining the flexible detachment member as a simplified improvement to the more complicated devices disclosed in Dr Henry’s 1995 and 2013 patents, and that this conception occurred when he was no longer employed by Qlicksmart.
Requestor’s evidence relating to conception
47.Given that Mr Quek’s evidence as to his conception appears prima facie plausible, the onus falls on the Requestor to provide evidence to substantiate their assertion that Dr Henry was the first to conceive the inventive concept.
48.The majority of the Requestor’s declaratory evidence is from the Requestor himself, Dr Sinnott. Dr Sinnott is the Managing Director of Qlicksmart and does not assert to have been involved personally in the development of this invention. The Qlicksmart design documents annexed to his declarations form the bulk of the factual evidence.
49.In my view, the majority of the remainder of Dr Sinnott’s three declarations consists of assertions and opinions, e.g. providing his opinions on what Dr Henry and Mr Quek did or did not invent, and how the claims of the patent correspond to features in drawings from the Qlicksmart design team.
Qlicksmart design documents
50.The Requestor specifically refers to the following exhibits[33] as showing the inventive concept of the Patent: MS-7, MS-10, MS-11, MS-13, EIR-1 and MS3-02. These are all understood to be Qlicksmart design documents generated during the period Mr Quek was employed at Qlicksmart. I will consider each of these pieces of evidence.
[33] RA at 13
MS-7
51.MS-7 is a set of drawings corresponding to the figures of the Dr Henry’s 2013 patent.[34] The US equivalent of this is cited in the background section of the Patent. Disadvantages of this device are said to be “too many moving parts”. Given that the drafter of the Patent was aware of this embodiment and the disclosure of the Patent is certainly consistent with overcoming the problem of too many moving parts, it seems implausible to say that the inventive concept of the Patent can be found in MS-7. As Mr Quek pointed out,[35] if the case could be made that embodiments of MS-7 fell within the scope of the Patent claims, this would be a question of validity rather than entitlement which is outside the scope of the current proceeding and would be more appropriately pursued in a re-examination proceeding.
[34] Quek #2 at 28
[35] Quek #1 at 51
MS-10/EIR-1
52.MS-10 is a set of sketches showing what I will refer to as a “winged keel” embodiment. EIR-1 contains a datestamp listing a date of 18 January 2012 for a tif file – this appears to be in relation to MS-10.
53.EIR-1 contains the same drawings as MS-10 and has annotations purporting to demonstrate correspondence between the drawings of MS-10 and the Patent. The most relevant part of EIR-1 appears to be the last page in which the flexible blade detachment member is highlighted and a lightly sketched rectangle said to be a “backing plate” has also been shaded.
54.Mr Quek’s evidence as to this[36] points out that it appears to be a reference plane as it has no thickness and extends beyond the body. It appears to be linked to the assembly direction: “insert” arrow[37]– if it were a part, it would prevent engagement of the boxtop. Dr Sinnott’s response to this is that he cannot imagine what other purpose the plane could be for other than to act as a backing plate, and that the plane “is sitting right where the backing plate has to sit for the invention to work as a blade remover”.[38]
[36] Quek #2 at 35-38
[37] Cf. Mr Quek’s annotation in KQ2-06
[38] Sinnott #3 at 48
55.I concur with Mr Quek’s assessment of EIR-1. Indeed it seems to me that the annotation in EIR-1 appears to have been done with the patent claim and patent figure in mind. To my mind Dr Sinnott’s response appears to be entirely from the perspective of seeking to “reverse engineer” the patent claims onto earlier design documents.
56.In the alternative, if the slider is considered to be the backing plate, this runs into the same problem as MS-7 as it appears to be working in a similar way, with “too many moving parts”.
57.I further note, although the parties did not appear to comment on this, that the embodiment of MS-10 appears to require a “winged keel” on the slider to flex the detachment member, and thus the detachment member appears to be flexing due to force coming from the slider directly and/or the winged keel, rather than force applied from the handle as in the Patent claims. This provides further weight to the position that MS-10 does not show evidence of conception of the inventive concept of a fixed backing plate.
MS-11
58.MS-11 is an email exchange between Kim Quek, Andrew Peterson and Robert Geddes apparently relating to the design of the cam rod corresponding to the device in EIS-7. It also contains drawings relating to the design of the end of the stripper (p. 4). There is a statement from Andrew Peterson to Kim Quek on the top of p. 3 that Andrew believes the Stripper flexes “both outwards … as well as flexes the two wedges downwards”. It is not clear what wedges are being referred to here. There is no apparent reference to any backing plate in this document.
MS-13
59.MS-13 is a set of drawings cited at paragraph 19 of Sinnott #1 as evidence of development of a “lead-in guide” prepared on 18 February 2011 with reference to dependent claim 3. I note that the last sketch of MS-13 corresponds to the second sketch of MS-10, which has been considered above.
Evidence of Dr Henry
60.Dr Henry provided a brief declaration, detailing that he agrees with Michael Sinnott’s version of events. The declaration includes some non-specific statements that Mr Quek “personally visited me in my workshop to discuss the development of the Qlicksmart blade removers”[39] and that Mr Quek “took charge of three of my prototypes in a meeting with Andrew Peterson and they have not been returned”.[40] With regard to the subject matter of the Patent, Dr Henry only provided the following statement and did not provide any further narrative relating to his conception of the inventive concept.
[39] Henry at 5
[40] Henry at 6
9. In particular, the feature of a flexible detachment member with a backing plate is a concept that I had invented. I discussed this feature with Kim Sia Quek, Michael Sinnott, Robert Geddes, and Andrew Peterson during development of the Qlicksmart blade removers. According to my instructions, Robert Geddes also illustrated this idea (see EIR-1 and MS-10).
Evidence of Robert Geddes and Andrew Peterson
61.Robert Geddes’s evidence relating to EIR-1 and MS-10 is that
4. Concept sketches within EIR-1 and MS-10 were based on the instruction and guidance of Dr Neville Henry and as a result of discussion during Qlicksmart design meetings with Dr Neville Henry, Michael Sinnott, Kim Sia Quek, and Andrew Peterson. These concepts were also produced with reference to Dr Neville Henry’s handmade working models for scalpel blade removers. Computer Aided Design drawings such as MS-7 were produced by Andrew Peterson while under my supervision and by the guidance of Dr Neville Henry. It is my understanding that all Intellectual Property rights to designs resulting from these design meetings reside with Qlicksmart Pty Ltd.
62.At paragraph 5, Mr Geddes states that it is his opinion the features of the patent claims are part of designs produced by Dr Henry and revealed by MS-10.
63.At paragraph 6, Mr Geddes concurs with Dr Sinnott that Dr Henry was the “main inventor of the fundamental functional intricacies of the Qlicksmart blade removers” and goes on to say, “that his invention also included an adjacent mechanism which prevents unwanted upward flexure providing the same function as an ‘adjacent backing plate’.”
64.Mr Peterson’s evidence can be summarised as being that he agrees with Mr Geddes.
Evidence of Dr Sinnott:
65.As mentioned above, in general the majority of Dr Sinnott’s evidence is in the form of submissions explaining in his opinion why the features of the claims of the patent can be mapped onto Qlicksmart design drawings, in particular MS-7 and MS-10. While I can take these submissions into consideration, they are not particularly helpful in establishing whether Dr Henry conceived of the inventive concept at hand: if anything they tend to lead to the opposite conclusion, that Qlicksmart and Dr Henry did not draw any attention to it in their drawings because they were not aware of it at the time.
66.To the extent that Dr Sinnott does provide factual evidence relating to events that may have occurred during the Qlicksmart development process, this evidence is quite imprecise in nature.[41]
[41] e.g. Sinnott #2 at 11
67.I also note that Dr Sinnott’s declarations contain allegations against Mr Quek’s behaviour and character. Although it could be said that these could have relevance in term of reducing the weight of Mr Quek’s evidence, I do not find that they prima facie make Mr Quek’s factual evidence unreliable.
Consideration – conception of inventive concept
68.For the Requestor’s case to succeed, I must be satisfied on the balance of probabilities that Dr Henry had formed in his mind of a definite and permanent idea of a blade stripper with a flexible detachment member which flexes in response to force applied by the handle, and with a rigid backing member contiguous to the detachment member which constrains the detachment member to flex in one direction only.
69.I do not find that Dr Henry’s evidence that “the feature of a flexible detachment member with a backing plate is a concept that I had invented” is sufficient to establish the above, as it contains no narrative of how, when or why he conceived the idea. I am not satisfied the figures that Dr Henry considers to illustrate this idea (MS-10 and EIR-1 which is an annotated version of MS-10) demonstrate the above formed idea either.
70.Notably, Mr Geddes who produced the illustrations declared that the design conceptualised and invented by Dr Henry included an adjacent mechanism “providing the same function as an ‘adjacent backing plate’”.[42] This is not evidence that Dr Henry conceived the inventive concept; rather it is evidence that Dr Henry conceived something similar, albeit different.
[42] Geddes at 6
71.Mr. Geddes’s evidence is also that Dr Henry’s designs “contained features that appear in” the patent.[43] This is certainly true as necessarily the various blade stripper designs would have had some features in common (as they are all blade strippers) but that is not sufficient to establish that the inventive concept of the patent came from Dr Henry.
[43] Geddes at 5
72.I therefore consider that the evidence does not establish that the inventive concept was conceived by Dr Henry, but rather supports a conclusion that it was conceived by Mr Quek after his employment at Qlicksmart had ceased.
Contractual or fiduciary relationships
73.As I have found on the balance of probabilities that the inventive concept was not present in any of the Qlicksmart design documents, and was conceived after Mr Quek’s employment at Qlicksmart had ceased, there is no need to consider Mr Quek’s contractual or fiduciary relationships to Qlicksmart.
Transfer of inventions
74.Clause 1.4 of attachment A of Mr Quek’s 2005 contract with Qlicksmart (EIR-12) sets out Mr Quek’s requirement to assign inventions or improvements made during the course of his employment “or arising therefrom”. I am satisfied that the evidence shows that Mr Quek did not conceive the inventive concept during his employment. I have found Mr Quek’s narrative of conception, based on previous Qlicksmart products that were publicly disclosed in patent specifications, to be prima facie plausible and uncontradicted. Therefore, I am equally satisfied that the inventive concept did not “arise from” the course of his employment.
Non-compete
75.I note that clause 1.6 of Mr Quek’s 2005 contract contains an agreement for Mr Quek to not work for any company that competes against Qlicksmart for a period of one year after termination. Mr Quek admits to founding Aunex in late 2016 even though he was employed at Qlicksmart until 1 July 2016. It is possible that the founding of Aunex represents a breach of the non-compete provision but this is outside of the provisions of the Act. Further, there is nothing in Mr Quek’s contract relating to requirement to transfer ownership of IP generated during the non-compete period.[44]
[44] It is also not clear whether Mr Quek’s 2005 contract was in fact still in force as it refers to a six week notice period whereas in 2015 Mr Quek was apparently required to give six months notice of resignation. (cf MS-3)
Company information
76.It is possible that Mr Quek’s possession of emails such as KQ2-01 and KQ2-02 represents a breach of the document handover requirements set out in clause 1.3 of the 2005 contract, however this is also outside the scope of the Act.
Costs
77.Costs normally follow the event.
78.The Requestor has argued for variations of costs on the basis of alleged bad faith actions by Mr Quek.[45] However I have found above that the balance of probabilities supports Mr Quek’s position that he derived the invention based on public domain information after the termination of his employment with Qlicksmart. If there is any poor behaviour on Mr Quek’s part, it may relate to retention of emails and his founding of Aunex Pty Ltd within a contractual non-compete period but that is outside the scope of this decision.
[45] RS at p. 8
79.I therefore award costs according to Schedule 8 against the Requestor, Dr Michael Sinnott.
Felix White
Delegate of the Commissioner of Patents
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