Mine Site Technologies Pty Ltd v R F Industries Pty Limited - [2021] APO 21

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mine Site Technologies Pty Ltd v R F Industries Pty Limited [2021] APO 21

Patent Application/Patent: 2017331808 and 2018101203

Title:Telecommunication System and Method, and Components Therefor

Patent Applicant/Patentee:     R F Industries Pty Limited
Requestor:  Mine Site Technologies Pty Ltd
Delegate:  M. G. Kraefft
Decision Date:  2 June 2021
Hearing Date:  24 February 2021.

Catchwords: PATENTS – sections 36 and 191A – entitlement – requestor found to be sole person entitled – declaration made under section 36 – directions made under section 191A to rectify Register of Patents.

Representation: Patent attorneys for the applicant: Mr Paul Dewar and Mr Nik Ramchand, Davies Collison Cave.
Counsel for the requestor: Mr Craig Smith.
Patent attorneys for the requestor: Ms Sarah Matheson, Allens Patent & Trade Mark Attorneys.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application/Patent: 2017331808 and 2018101203

Title:Telecommunication System and Method, and Components Therefor

Patent Applicant/Patentee: R F Industries Pty Limited
Date of Decision: 2 June 2021
DECISION
The requestor, Mine Site Technologies Pty Ltd, is the sole person entitled in respect to the present standard application and in respect to the innovation patent.
Under sub-section 36(1), I declare that the requestor, Mine Site Technologies Pty Ltd, is the sole eligible person in relation to the invention disclosed in the specification filed in relation to standard application 2017331808. Pursuant to sub-section 36(3A), and subject to appeal, I determine the application should proceed in the name of the requestor.
In respect to the innovation patent 2018101203, I am satisfied that the Register of Patents does not properly record the inventor details and a person’s entitlement to the patent. Pursuant to subsection 191A(3), and subject to appeal, I direct that the Register of Patents be rectified to remove Mr Alastair Brian Jeremy as a listed inventor, and remove the present patentee, R F Industries Pty Limited, from the Register and replace with the name of the requestor, Mine Site Technologies Pty Ltd.
Costs in accordance with Schedule 8 awarded against R F Industries Pty Limited.
REASONS FOR DECISION
BACKGROUND

Embedded Intellect Pty Ltd filed patent application 2017331808 (“the application”) on 22 September 2017 as an international application under the Patent Cooperation Treaty (“PCT”). The application claims priority from an Australian provisional application filed on 25 September 2016 (“the priority date”). By way of assignment, the application is presently proceeding in the name of R F Industries Pty Limited (“the applicant”).
On 16 October 2019, the applicant filed a voluntary request to amend the specification under section 104. The request amounted to an amendment of the claims on file. That request was allowed on 4 November 2019.
Mine Site Technologies Pty Ltd (“the requestor”) applied on 14 January 2020 for a declaration under section 36 stating that it was an eligible person and that the applicant was not such an eligible person in respect of the patent application. The requestor also laid out the grounds for that request.
The applicant filed innovation patent 2018101203 on 20 August 2018 as a divisional application. The innovation patent was subsequently granted, examined and certified.
On 16 October 2019, the applicant filed a voluntary request to amend the specification of the innovation patent under section 104. The requestor opposed the amendment request on 14 January 2020. The applicant subsequently withdrew the amendment request thus rendering the opposition moot.
Concurrently with the notice of opposition, the requestor made an application under section 191A seeking rectification of the Register of Patents to name the requestor as the sole patentee of the innovation patent. The grounds for the section 191A request were substantially the same as for the section 36 request.
In aligning the section 36 and section 191A matters, a delegate of the Commissioner of Patents made the following directions, after considering comments from both sides, on 3 April 2020.
1.That the evidentiary periods for the s36 request for 2017331808 and the s191A request for 2018101203 be aligned.
2.That evidence in the s36 request for 2017331808 is also evidence in the s191A request for 2018101203 and vice versa.
3.That the s36 request for 2017331808 and the s191A request for 2018101203 are both heard and decided together.
The parties made representations for maintaining and agreeing to the confidentiality of certain filed material. The Deputy Commissioner of Patents made directions under sub-regulation 4.3(2)(b) that a number of specified documents filed by the requestor’s attorneys on 23 April 2020 are not open to public inspection. These documents related to a handful of annexures in the requestor’s evidence in support. Similar directions were made in respect to an annexure in the applicant’s evidence in support.
The parties completed the filing of evidence on 6 October 2020.
On 22 February 2021, and just prior to the hearing, the requestor made a request for, and filed, a further document to be considered under regulation 5.23. As will be apparent later, regulation 22.24 is the appropriate regulation in the present circumstances. The requestor stated that the need for filing this material arose from issues raised in the applicant’s written submissions for the hearing. The document related to correspondence from the applicant’s former attorneys to the requestor’s attorneys in April 2019.
On the same date, the applicant requested a re-examination of the innovation patent on the basis that the claims of the innovation patent were not novel or did not involve an innovative step (section 18(1A)(b)). The re-examination is pending the resolution of the present matter.
SUB-REGULATION 4.3(2)(b)
Near the beginning of the hearing, the parties indicated that they did not expect to need to refer directly to the annexures the subject of the sub-regulation 4.3(2)(b) directions, and no such references were made. The parties focused any submissions related to that content at the relevant declarants’ statements at a broader level. Consequently, there were no closed sessions during the hearing. As will be apparent later, in respect to this material, the present decision is similarly directed at the declarants’ direct evidence over any annexures the subject of the sub-regulation 4.3(2)(b) directions.
SPECIFICATIONS
The descriptive parts and the drawings of the specifications of both the application and the innovation patent are substantially the same.
The specifications describe the invention as relating to a telecommunication system and method, and in particular, to components therefor, which facilitate transmission of both data and power along a transmission line. The invention is particularly applicable to industrial environments with a linear topology.
These environments often require network devices to be deployed along their length for the purposes of video surveillance, monitoring of personnel and assets, data communication, data transfer, data acquisition and control. Examples of industrial environments involving a linear topology include underground mines, road and rail tunnels, pedestrian tunnels, conveyor belts and processing lines in factories. The specifications also contemplate use of the invention beyond a strictly linear topology, such as in environments involving branch lines. Examples of network devices that may be deployed include video cameras, electronic signs, wireless network base stations, environmental sensors, and actuators. Alternatively, the network devices may be gateways, modems, network switches or routers, or other devices to connect to an external network.
The specifications describe the provision of power and network data connections to the network devices as challenging in industrial linear environments. The challenges include AC power outlets not being readily available, distances being large, and the environment being dynamic meaning that the network must be able to be repeatedly modified or extended.
One attempt to solve these challenges has been the use of fibre optic links. This solution consists of installing fibre optic data cables and power distribution between each location that requires a network device. Drawbacks of this solution are the expense, the requirement for specialised skills, and the unsuitability to a dynamic environment due to the difficulty in changing the network topology in-situ.
Another attempt has been the use of a cable modem system. This consists of installing a cable modem termination system (“CMTS”) at the beginning of the linear topology and then distributing high-capacity coaxial cable between each location. At each of those locations, a splitter is installed to tap the data signal off the cable via a cable modem, which provides bi-directional data communications between the coaxial cable and the network devices. A cabinet is still required to power the network devices and optionally to house network switches when multiple network devices are present at that location. Drawbacks of the cable modem system are that power needs to be separately distributed to each location to power the endpoint network devices, the complexity of managing a CMTS and that data backhaul, or retrieval, performance degrades as more network devices are added and the cable length increases.
A further attempt has been a leaky feeder radio system. This system consists of a coaxial cable that ‘leaks’ radio signals along the length of the cable through regularly placed small holes in the cable shielding, primarily for the purpose of voice communications. At each location that requires a network device, a radio modem is installed for communicating data, with a cabinet still being required to provide power to the endpoint network device. Data rates are low with such a system.
In summary, the specifications state that distributing power to and backhauling high-speed data from Ethernet network devices along the length of a linear industrial environment is not commercially practical using a single two-conductor cable. Moreover, in industrial environments involving long linear communication segments, there is potential for interference and/or ground loops. Such problems make it difficult to reliably achieve high speed communication, and the ground loops can cause high fault current to flow, damaging or destroying sensitive equipment.
The application, as amended, concludes with 66 claims. Eight of these claims are independent claims. Claims 1, 21, 43 and 50 are representative and are recited below.
1.An electrical module adapted to operatively connect to a two-conductor cable, the electrical module including:
a connection point adapted to connect to a network device, wherein the connection point is an Ethernet port;
wherein the electrical module is configured to:
receive a composite signal from the two-conductor cable, the composite signal including a data component and a DC power component, the data component having a frequency in the megahertz range;
separate the composite signal by filtering the composite signal to extract the data component and the power component;
transmit data derived from the data component to the network device through the connection point using an Ethernet specification; and
supply power derived from the power component to the network device through the connection point using a Power over Ethernet specification,
and wherein where the electrical module includes more than one two-conductor communications module, the electrical module is further configured to not pass the part of the power component between any of the two-conductor communications modules.
21.A repeater module adapted to operatively connect to a first two-conductor cable and to a second two-conductor cable, wherein the repeater module is configured to:
receive a first signal from the first two-conductor cable, the first signal including a data component having a frequency in the megahertz range;
receive a second signal from the first two-conductor cable or from the second two-conductor cable, the second signal including a DC power component;
isolate the data component of the first signal;
isolate the power component of the second signal;
decode data from the data component and recreate the data to form a recreated data component; and
transmit the recreated data component along the second two-conductor cable and wherein
the repeater module includes more than one two-conductor communications module, and
the repeater module is further configured to not pass the power component of the second signal between any of the two-conductor communications modules.
43.A portal module adapted to operatively connect to a two-conductor cable, the portal module including:
a power input port configured to receive an input power; and
a data port configured to receive input data;
wherein the portal node is configured to:
combine the input power and the input data to generate a composite signal; and
transmit the composite signal along the two-conductor cable.
50. A telecommunication system including:
a two-conductor cable;
an electrical module operatively connected to the two-conductor cable, the electrical module including a connection point, wherein the connection point is an Ethernet port; and
a network device connected to the connection point;
wherein the electrical module is configured to:
receive a composite signal from the two-conductor cable, the composite signal including a data component and a DC power component, the data component having a frequency in the megahertz range;
separate only a part of the received composite signal by filtering the composite signal to extract only a part of the data component and only a part of the power component, with the remainder of the composite signal passing through the electrical module;
transmit data derived from the data component to the network device through the connection point using an Ethernet specification; and
supply power derived from the power component to the network device through the connection point using a Power over Ethernet specification,
and wherein where the electrical module includes more than one two-conductor communications module, the electrical module is further configured to not pass the power component of the composite signal between any of the two-conductor communications modules.
The innovation patent, as certified, concludes with 3 claims. Claim 1 is the only independent claim and is recited below.
1.A telecommunication system including:
a two-conductor cable, which is adapted to transmit a composite signal, including a data component and a power component;
a plurality of electrical modules, each module operatively connected to the two-conductor cable, each electrical module including a connection point, wherein the connection point is an Ethernet port; and
at least one network device connected to each connection point;
wherein, the electrical module is configured to:
receive the composite signal from the two-conductor cable;
separate the composite signal by filtering the composite signal to extract the data component and the power component;
supply power derived from the power component through the connection point using a Power over Ethernet specification to power the network device(s) connected thereto;
transmit data derived from the data component through the connection point to the network device(s) connected thereto;
receive output data through the connection point to the network device(s) connected thereto; and
transmit output data along the two-conductor cable.
APPLICABLE LAW
Section 36 applies to the application in this case and opens in the following terms.
(1)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 as so disclosed.
Schedule 1 of the Patents 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.
Section 191A applies to the innovation patent and opens in the following terms.
(1)The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:
(a)   the omission of an entry from the Register;
(b)   an entry made in the Register without sufficient cause;
(c)   an entry wrongly existing in the Register;
(d)   an error or defect in an entry in the Register.
(2)The Commissioner must, on application, make a declaration as to a person’s entitlement to a patent, or a share in a patent, if the Commissioner is satisfied, on the balance of probabilities, that the Register does not properly record a person’s entitlement to a patent, or a share in a patent:
(a)   because the patent, or a share in the patent, was granted to a person who was not entitled to it; or
(b)   because the patent, or a share in the patent, was not granted to a person who was entitled to it; or
(c)   for any other reason.
(3)If the Commissioner makes a declaration under subsection (2), the Commissioner must rectify the Register accordingly.
ENTITLEMENT
Subsection 15(1) provides that a patent 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).
Accordingly, the primary person to whom a patent may be granted is the inventor. All other persons may derive title to the patent, and the invention claimed therein, via the inventor; Stack v Davies Shephard Pty Ltd, [2001] FCA 501 at [21].
In University of Western Australia v Gray (No 20), [2008] FCA 498 (“UWA”), French J commented, at [1426], that the inventive concept marks a boundary between invention and verification. French J then referred to the US Court of Appeals Federal Circuit decision, Burroughs Wellcome Co v Barr Laboratories Inc, [1994] USCAFED 1125, (1994) 40 F.3d 1223. He stated that this decision set out the following principles, amongst others, as established by US appellate courts:
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.
On appeal, the Full Court of the Federal Court, in University of Western Australia v Gray, [2009] FCAFC 116, did not appear to disturb French J’s position on the above points. The Full Court, at [253], also appeared to accept the following steps from the primary judge’s decision as appropriate:-
1.identify the “inventive concept” of each relevant invention as defined by the claims;
2.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
3.determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.

In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd, [2005] FCA 1474, (2005) 67 IPR 68 (“JMVB”), Crennan J stated as follows at [132]:
“Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a particular person’s involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants. The fact that the parties were in collaboration can be a major consideration.”
This aspect of Crennan J’s decision was not considered on appeal: JMVB Enterprises Pty Ltd (formerly A’Van Campers Pty Ltd) v Camoflag Pty Ltd, [2006] FCAFC 141. The passage was cited with apparent approval by the Full Court of the Federal Court in Polwood Pty Ltd v Foxworth Pty Ltd, [2008] FCAFC 9 at [54]. Furthermore, in Polwood at [34] - [36] (emphasis in original):-
“The entitlement to the grant of a patent as the inventor is not determined by quantitative contribution. The role of joint inventors does not have to be equal; it is qualitative rather than quantitative. It may involve joint contribution or independent contributions. The issue is whether the contribution was to the invention. What constitutes the invention can be determined from the particular patent specification which includes the claims. In some cases, evidence can assist. In some cases, the reduction of a concept to a working apparatus by a person may not be part of the invention, in other cases it may be. For example, the construction of an apparatus may involve no more than carrying out the instructions in the specification. This would not normally entitle that person to joint inventorship. On the other hand joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed.
One criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention. It may be that an invention is made as part of a collaborative effort. In those circumstances, it would ordinarily follow that the collaborators are joint inventors of the product of the collaboration. ….
To ascertain the inventor for the purposes of entitlement to the grant of the patent it is therefore necessary to determine the contributions to the invention described in the patent application. The claims may assist in that determination, bearing in mind that the claims may be to less than the totality of the invention. It may also be appropriate to investigate the contributions to the inventive steps giving rise to the invention.”
EVIDENCE
Both parties filed evidence in support and then subsequently evidence in response to each other’s evidence in support. It is clear from this evidence that the association of a listed inventor, Mr Christopher John Snell, with both the requestor and the applicant is central to the present dispute. Mr Snell is a listed inventor for the application and for the innovation patent.
REQUESTOR’S EVIDENCE IN SUPPORT
The requestor filed evidence in support from Mr Muhammed Shaheed, Mr Vadim Parfenov and Mr Robert Munro.
At the time of his declaration, Mr Shaheed was the chief financial officer for the requestor. He had held this position since October 2015. From his own knowledge and from the requestor’s records, Mr Shaheed presented evidence of Mr Snell’s employment with the requestor between November 2006 and May 2015. Mr Shaheed also described the confidentiality and intellectual property obligations that Mr Snell was under whilst employed by the requestor.
At the time of his declaration, Mr Parfenov was the chief technology officer for the requestor. He had held this position since the latter half of 2016. In his declaration, and from his own knowledge and from the requestor’s records, Mr Parfenov outlined a project (“the Tracking Node Project”) that Mr Snell led from 2012 to 2014 in his position as engineering manager for the requestor. Mr Parfenov also reviewed both patent specifications and outlined how the inventions therein derived from the Tracking Node Project and embodied a particular concept from that project (“the Cable Node Concept”).
Mr Munro is a senior associate and is one of the patent attorneys responsible for the conduct of the present matter on behalf of the requestor. He presented evidence of the patent filing history behind the present application and the innovation patent. Notably, Embedded Intellect Pty Ltd was the original applicant for the present application. Mr Snell and a listed co-inventor were the directors of that company. Mr Munro also presented evidence of the deeds of assignment from the original applicant through an intermediary to the present applicant. Furthermore, Mr Munro referred to a media release from February 2018 announcing that Mr Snell had joined the applicant.
APPLICANT’S EVIDENCE IN SUPPORT
The applicant filed evidence in support from Mr Snell. At the time of his declaration, Mr Snell was the mining solutions engineer for the applicant. He acknowledged a period of employment with the requestor between January 2007 and March 2015.
In his evidence, Mr Snell indicated that he was not initially involved in the drafting or review processes related to the filing of the application and the innovation patent. Mr Snell stated that he reviewed the applications for the first time in August 2019 after the requestor contacted the applicant in respect of allegations concerning ownership. From that review, Mr Snell stated that he formed the view that the claims of the application and of the innovation patent did not reflect an invention that he and the listed co-inventor had invented in 2016. Despite the subsequent allowed amendment to the claims of the present application, Mr Snell indicated that that inventive concept was still not properly captured.
Noting that Mr Snell ceased his employment with the requestor by May 2015, there is thus a clear inference from his evidence that Mr Snell’s version of the inventive concept did not arise whilst he was employed with the requestor. One may also infer that the requestor’s notification of its ownership assertions in or before August 2019 had driven the applicant to seek to emphasise different inventive concepts, from anything done with the requestor, and amend the claims.
In respect to the innovation patent, Mr Snell went further. He stated that he did not, and could not have, invented the alleged inventive concept of the innovation patent at the time of the Tracking Node Project because, amongst other things, the concept was already public knowledge well before 2012. Mr Snell provided a number of exhibits to support that position.
Returning to Mr Snell’s version of the inventive concept, he indicated that concept arose from recognising a “loop problem” with Ethernet over Coaxial (“EoC”) technology when extending network and power along a coaxial cable where power is allowed to be transferred between the coaxial cable on either side of a repeater device. This causes the wireline networking modules inside the repeater device to form an unintended network link, forming a network data loop.
REQUESTOR’S EVIDENCE IN RESPONSE
The requestor filed evidence in response from Mr Linker Li and from Mr Munro. At the time of his declaration, Mr Li was the engineering manager for a related entity of the requestor. He joined that entity in 2009.
In his evidence, Mr Li stated that he had first-hand knowledge from working on the Tracking Node Project. He confirmed the Tracking Node Project took place from 2012 to 2014 and that Mr Snell led the project. Mr Li further indicated that, during the Tracking Node Project, he was in regular communication with Mr Snell via email and Skype calls to discuss matters relating to the project.
Mr Li stated that, around April 2014, while working on the Tracking Node Project, he encountered the loop problem, and that he subsequently discussed the loop problem with Mr Snell and other employees of the requestor working on the Tracking Node Project. Mr Li further stated that the present application and the innovation patent describe communication modules and functionality that were featured in the Tracking Node Project.
In his evidence, Mr Munro provided an additional chronology of related events. He stated that he became aware of the facts from publicly available information. More specifically, Mr Munro exhibited a copy of an inventor declaration by Mr Snell before the USPTO for a related US patent application. Mr Munro noted that Mr Snell declared himself to be the inventor for that application and that the inventor declaration mentions the penalties for making a false statement.
APPLICANT’S EVIDENCE IN RESPONSE
The applicant filed evidence in response from Mr Snell.
Mr Snell indicated the existence of the looping problem while working for the requestor. On the other hand, Mr Snell acknowledged that he did not understand the problem at the time. He indicated that, as a result, while working for the requestor, there was no engineering effort applied, either by himself or anyone else, to solving that problem. Furthermore, Mr Snell disputed Mr Parfenov’s position that the inventions, the subject of the present specifications, derived from the Tracking Node Project. Mr Snell provided comparisons of the claims against features of the Tracking Node Project and of relevant prior art to support his position.
REGULATION 5.23 REQUEST AND REGULATION 22.24
Regulation 5.23 enables the Commissioner of Patents to consult a document that is relevant to an opposition, has not been filed in evidence and is available in the Patent Office. Since the present matter is not strictly an opposition, regulation 22.24 is appropriate in these circumstances. The latter regulation enables the Commissioner to determine the practice and procedure to be followed for the purposes of enabling an application or matter to be decided that is not an opposition. This includes the filing of evidence.
In Andrew Bodlovich and Kevin Gleeson v Green Camel Pty Limited, [2021] APO 6, the delegate noted, at [7], that the regulatory basis for extensions of time in filing evidence in section 36 proceedings was previously considered in ERG R&D Pty Ltd v Octopus Cards Limited (“ERG”), [2006] APO 21. At [14] of the ERG decision, the delegate indicated that the Commissioner’s power to determine the practice and procedure under sections 32 and 36 derived from regulation 22.24. Moreover, the delegate considered, at [16], that this discretion was similar to that provided under the extension of time provisions for filing evidence in oppositions under then regulation 5.10.
The legal principles pertaining to allowing extensions of time for filing evidence in opposition proceedings, now regulation 5.9, are well-documented.[1] Similarly, the principles pertaining to the invoking of regulation 5.23 for considering documents filed outside the normal evidentiary periods in oppositions are well-documented.[2] It follows that those principles provide appropriate guidance for the exercise of discretion under regulation 22.24.
[1] For example, TRED Design Pty Ltd v Julie-Anne McCarthy and Bradley McCarthy, [2013] APO 57, and Merial Limited v Novartis AG, [2013] APO 65.
[2] For example, Merial Limited v Bayer Intellectual Property GmbH, [2015] APO 16, and Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited, [2017] APO 8.
As mentioned earlier, just prior to the hearing, the requestor filed a document of correspondence from the applicant’s former attorneys to the requestor’s attorneys in April 2019. The correspondence is an itemised response on behalf of the applicant and of Mr Snell to an earlier letter from the requestor’s attorneys alleging that the requestor was entitled to the present application and the innovation patent.
At the hearing, the applicant had no objection to the document being included as evidence and made brief submissions on that material. It may be said that much of the material repeats evidence previously filed in this case. On the other hand, the document is a noteworthy indicator that entitlement assertions between both parties may be dated back to at least April 2019. Bearing these points in mind and in considering the legal principles on balance, I consider it appropriate to include the document, under regulation 22.24, as evidence in the present matter.
INVENTIVE CONCEPT
Requestor’s Submissions
For the application and with reference to section 36, the requestor submitted that, as the application has not been granted, the inventive concept is in relation to an invention disclosed in the specification as filed. Applying the principles from UWA and Polwood, the requestor then stated that the inventive concept is a telecommunication system or method whereby the transmission of power and data occurs through a single transmission line for network devices. The requestor further stated that this required, as part of that concept, the ability to condition power and to format data to meet the requirements of those network devices. The requestor noted the specifications’ identification of the system architecture that made that feasible. Modules were located at intervals along the transmission line to convert data and to condition and convert power for supply to attached network devices. With reference to Mr Parfenov’s evidence, the requestor explained that this concept involved the use of a composite power/data signal being separated into a data component and a power component where sufficient power is transmitted along the transmission line to operate the communication system and network devices, whilst data is transmitted and retrieved from the network devices.[3]
[3] Parfenov [31] and [32].
The requestor also suggested that the repeater module was part of the inventive concept. This was on the basis of the need to refresh data and re-inject power at intervals to cover longer distances in the linear topology.
For the innovation patent, the requestor submitted that, as the innovation patent is a granted patent, consideration may also be given to the form of the invention that has been claimed. The requestor relied on claim 1 of the innovation patent. Essentially, the suggestion was that the inventive concept for the innovation patent is as for the standard application absent the repeater module feature but including the receiving of output data from the network device(s) and transmitting the output data along the transmission line.
Applicant’s Evidence and Submissions
Mr Snell’s evidence provided several indications of his position of what the inventive concept was in this case.
In respect to the standard application, Mr Snell stated that the invention was in managing the way that the power was isolated between the backbone cable’s incoming and outgoing connections when the electrical module included more than one two-conductor coaxial communications module (“CCM”). The power must be managed to stop data looping between the two CCMs.[4] He particularly described the inventive concept with reference to amended claim 1 whereby, where there is more than one CCM, the electrical module is configured to not pass power between the CCMs. Power may be provided to both the upstream CCM and the downstream CCM but is not passed across the two CCMs.[5] On the other hand, Mr Snell also stated that the inventive concept was not inventive because the standard application did not properly capture the invention.[6] He offered a revised inventive concept involving the repeater device but ensuring that power is not transferred between the coaxial cables on either side of the repeater device.[7]
[4] Snell #1, [29].
[5] Snell #1, [32] and [33].
[6] Snell #1, [35].
[7] Snell #1, [50] and [51].
In respect to the innovation patent, Mr Snell described the inventive concept directly with reference to claim 1 of the innovation patent.[8] That claim relates to the system architecture comprising electrical modules connected to a two-conductor cable and involving the use of a composite power/data signal separated into a data component and a power component with data being transmitted to and power being supplied to network devices. Moreover, output data is received from the network devices and transmitted along the two-conductor cable. On the other hand, Mr Snell stated that he did not invent this alleged inventive concept because it was already publicly disclosed and well known in the field. He suggested the alleged inventive concept was exactly the same as a system called SIAMnet that was publicly available from at least 2006.[9] It may be recalled that a re-examination of the innovation patent, at the request of the applicant, is pending.
[8] Snell #1, [27].
[9] Snell #1, [28].
In submissions for the hearing, the applicant took a different approach. The applicant suggested the inventive concept, for the application and for the innovation patent, was a telecommunication system or method whereby the transmission of power and data occurs through a single transmission line for network devices. That is, the applicant adopted a considerably broader position of the inventive concept. Moreover, the applicant suggested this was in agreement with the requestor’s position. Furthermore, the applicant stated this concept was the same as disclosed by the SIAMnet system.
The applicant described Mr Snell’s evidence as accepting the latter as the inventive concept of the application and the innovation patent. The applicant then went further though to characterise Mr Snell’s evidence as stating that the only aspect of the application and the innovation patent that was an invention is the solution to the looping problem. Thus, the applicant accepted that the claims of the application and of the innovation patent were drafted too broadly, and in fact so broadly as to encompass publicly available systems, specifically the SIAMnet system.
Consideration
From [34] of the Polwood case, the invention can be determined from the particular patent specification which includes the claims. In the present case, the claims may have greater significance for determining inventive concepts because there are two related patent applications by the same applicant, and the descriptive parts of specifications are substantially the same.
In view of the applicant’s position, the inventiveness of the subject matter may also be a relevant consideration in the present case. The application of caution may be required though with that approach. The approach was discussed in Commonwealth Scientific and Industrial Research Organisation and Gilbert and Others, [1995] APO 16; 31 IPR 67. At page 72, the delegate indicated that, in the circumstances of that case, findings of lack of inventiveness should only be made where it was clearly necessary to do so, and then only where there was no doubt. Otherwise, references to inventions should be understood in the context of the definition in the Patents Act that an invention includes an alleged invention.
In Martin Russell Harris v CSIRO, [1993] APO 43; 26 IPR 469, the incorporation of a single fibre as source and detector in a confocal microscope was fundamentally dependent on the contribution of a particular individual. The delegate stated that he did not believe it mattered that the individual was not explicitly aware of the confocal microscope at the time, nor that the use of a single fibre as source/detector was in the public domain in certain contexts. The question was whether the invention would have occurred without the individual’s involvement, albeit unknowingly at the time.
The present case is somewhat different. Mr Snell was adamant the claims of the standard application and of the innovation patent did not reflect an invention he had made.[10] The inventive concept, as claimed, was not properly captured. For the innovation patent, Mr Snell went further to state the inventive concept therein was already publicly disclosed well before 2012.[11]
[10] Snell #1, [23].
[11] Snell #1, [27] and [28].

In the present case, I think it is proper to proceed primarily on the basis of the definition in the Patents Act that an invention includes an alleged invention. Thus, the specifications themselves should inform the inventive concept. If, as Mr Snell asserts, the inventive concept is not properly captured then that is a significant flaw in the specifications. The reader can principally work only with what is written in the specifications. On the other hand, given Mr Snell’s position that the claims of the innovation patent define an inventive concept that was already public knowledge, I think I cannot ignore the SIAMnet system. Thus, I will consider this system whilst being mindful that the specifications themselves should largely inform the inventive concept.
The Specifications
In the background discussion, at [005], the specifications describe the provision of power and network data connection as challenging in industrial linear environments for a number of reasons. Subsequent discussions of a number of prior art systems, at [006] – [011], all mention the installation of separate power cabinets for providing power to the network devices. This might suggest an inventive concept in the present case of a telecommunication system or method whereby the transmission of power and data occurs through a single transmission line for network devices.
There are some difficulties with that approach. Firstly, that description of an inventive concept seems insufficient in the context of the principles from the UWA decision outlined above, for example where 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. Secondly, in the same background section of the specifications, paragraph [013] states in summary that distributing power to and backhauling data from Ethernet network devices along the length of a linear industrial environment is not commercially practical using a single two conductor cable. That infers that the transmission of power and data through a single transmission line for network devices was already known at the relevant time, albeit there may have been technical and/or commercial limitations with such an arrangement. The SIAMnet system may be a prior example of the arrangement. Thirdly, the filing of two related patent applications by the same applicant would suggest, on the face of it, that at least two, and more specific, inventive concepts apply in this case.
Clearly the inventive concepts in the present case must be something more than the initial outline above. The summary section of the specifications is instructive. While paragraph [016] of the specifications opens by stating that the invention provides a telecommunication system or method whereby the transmission of power and data occurs through a single transmission line, the paragraph continues by stating that the invention also seeks to provide telecommunication components, for use in the system or method, to facilitate the transmission of power and data via a single transmission line.
Subsequent paragraphs of the specifications then discuss several aspects related to individual telecommunication components and the overall telecommunication system.
Firstly, at [018], there is an electrical module. The module is adapted to operatively connect to a transmission line. The module also includes a connection point adapted to connect to a network device. The module is configured to receive a composite signal from the transmission line. The composite signal includes a data component and a power component. The module separates the composite signal to extract the data component and the power component. The module transmits data and supplies power to the network device through the connection point.
Secondly, at [019], there is a repeater module. The repeater module is adapted to operatively connect to first and second transmission lines. The repeater module is configured to receive a composite signal from the first transmission line. The composite signal includes a data component. The repeater module receives a further signal from the first or second transmission line. That signal includes a power component. The repeater module extracts the data and power components from the respective signals. The repeater module decodes and recreates the data to form a recreated data component which is then transmitted along the second transmission line.
It may be noted there is no association of a network device with the repeater module in the above description. Nonetheless, it would be understood from the specifications that the data and power components may be destined for network devices in the telecommunication system. In one sense, the repeater may be seen to function merely to re-inject power and digitally recreate data for the next cable segment, with multiple other electrical modules, in the linear topology ([049] and [050]). In another sense, the repeater also functions similarly to the other electrical modules to enable network devices to connect to the repeater for data connection and power supply ([051]).
Thirdly, at [022], there is a portal module. The portal module is adapted to operatively connect to a transmission line. The portal module includes a power input port configured to receive input power and a data port configured to receive input data. The portal module is further configured to combine the input power and input data to generate a composite signal and transmit the composite signal along the transmission line. In essence, the portal module is the source of the composite signal that the above-mentioned electrical module and repeater module are configured to receive.
Fourthly, at [023], there is a telecommunication system. The telecommunication system includes a transmission line, an electrical module operatively connected to the transmission line and including a connection point, and a network device connected to the connection point. The electrical module is configured to function in the same way as discussed at [018] of the specification.
The above-mentioned summary section of the specifications suggests that the focus is not directly on the transmission line. Instead, the focus is on the modules. This may firstly be seen by the modules being adapted to connect to the transmission line. Secondly, it would be clear that the modules, with their various functionalities, facilitate the objective of providing power and data to the network devices via a single transmission line. Specifically, the modules are configured to do one or more of the following, depending on the module type. They may generate or transmit or receive a composite signal with a data component and a power component, and/or separate or extract the data and power components, or boost power and data, and/or transmit data and supply power to the network devices.
Greater emphasis in the specifications appears to be on the electrical module and its functions within the telecommunication system that uses a single transmission line. It may also be noted that the repeater module has significant functional consistency with the electrical module. The repeater module may be said to be a more specific form of electrical module, notably with the additional capacity to re-inject power and recreate data into the system.
The SIAMnet System
The SIAMnet system spans several annexures to Mr Snell’s evidence in support. The system is discussed in at least two mining magazines before the priority date. The following is an illustration found in both magazines.
SIAMnet is a distributed antenna network, meaning that a standard cable television coaxial cable is installed underground and amplifiers and antennas are deployed to provide up to 32 voice channels and high-speed data on a single coaxial cable. The SIAMnet system is divided into four major components: the head end, which is where all voice repeaters are located along with the main data master modem and the SIAMnet diagnostic controller; the main infrastructure, which is composed of a standard coaxial cable, amplifiers, splitters, antennas and high-speed data connection points; standard off-the-shelf voice radios; and mobile data modules that are used on vehicles for constant communication with the surface, allowing for monitoring of the vehicles and deployment of a dispatch system.[12] An original press release from April 2006 discusses power supply to the system. SIAMnet cable modems (“CMs”) are installed anywhere a connection to the network is required. The modem, as well as the 802.11 Access Point, draws power through the coaxial cable. There is no need to install additional power for each modem. The cable modems in a SIAMnet system can also provide IP camera and VOIP transmission.[13] Mr Snell referred to the above diagram to state that the Ethernet module is connected to the coaxial cable backbone and provides power and data to the IP Camera. Further, the WiFi module is connected to the coaxial cable backbone and provides power and data to the WiFi Access Point (“AP”). Mr Snell further suggested that he and colleagues in the field interpreted the supply of power to the WiFi AP and IP Camera to use the Power over Ethernet (“PoE”) standard as it is the typical mechanism for powering those devices.[14]
[12] Snell #1, Annexure CJS-6, page 79.
[13] Snell #1, Annexure CJS-4.
[14] Snell #1, [45].
I accept the SIAMnet system is a telecommunication system or method whereby the transmission of power and data occurs through a single transmission line for network devices. Moreover, SIAMnet is a system of modules and a telecommunication system as generally described in the specifications.
As indicated above, the specifications describe and claim further operational aspects of the modules of the telecommunication system in terms of working with a composite signal from which a data component and a power component are separated and extracted for transmission of data and supply of power to network devices.
With further reference to Mr Snell’s evidence, the applicant submitted that the relevant person skilled in the art would have understood the coaxial cable of the SIAMnet system to carry a composite signal which included a power component and a data component to be separated and extracted from the coaxial cable, with each being independently modified or formatted through a PoE port. The evidence indicates that DOCSIS is a standard for high-bandwidth data transfer over coaxial cable that uses a line power standard of 60 or 90V AC. This aligns with the input electrical power specification for the SIAMnet device(s) of 40-90V AC. The power format on the interface port or PoE port is stated to use 48V DC. To transform the data and the power formats, they must be separated, then independently transformed before being combined again.[15]
[15] Snell #1, Annexure CJS-7.
The magazine articles do not disclose such detail about the SIAMnet system. Thus, it could be said that too much is being read into the disclosures. In particular, the nature of the signalling along the coaxial cable is not discussed in detail. Other ways than separation of composite signals into power and data components for dealing with power and data transmission over single coaxial cable come to mind. A clear alternative might have been a composite cable comprising a coaxial cable combined with two copper conductors for data and power transmission. To an extent, the above evidence of Mr Snell relied on a SIAMnet product brochure dated in the same month as the priority date.[16] In this respect, there is firstly a question of whether the disclosures in the brochure would have been known by relevant persons skilled in the art before the priority date. Secondly, the brochure principally describes two types of SIAMnet modules, that being the WiFi module and the PoE module, and the specifications around those. As with the magazine articles, there is still a presumption required that the coaxial cable of the SIAMnet system carried a composite signal which included a power component and a data component to be separated and extracted from the coaxial cable. The evidence is insufficient to establish that was done or would have been obvious with a SIAMnet system at the relevant time.
[16] Snell #1, Annexure CJS-3.
The Looping Problem
As mentioned earlier, Mr Snell originally stated that the invention was in managing the way that the power was isolated between the backbone cable’s incoming and outgoing connections when the electrical module included more than one CCM. The power must be managed to stop data looping between the two CCMs. Amended claim 1 of the standard application defines a module whereby, where there is more than one CCM, the electrical module is configured to not pass power between the CCMs. Mr Snell subsequently offered a revised inventive concept involving the repeater device but ensuring that power is not transferred between the coaxial cables on either side of the repeater device. Either way, the summary section of the specifications is silent on these aspects. Moreover, several of the claims of the standard application may be notionally divided between defining a module with one CCM or more than one CCM. For example, the definition in claims 1 and 50, wherein where there is more than one CCM, the electrical module is configured to not pass power between the CCMs, leaves the nature of the electrical module open where there is just one CCM. In the latter case, the claims’ definition effectively stops at the power supply feature. This may be contrasted with claim 21, for example, which is clearly limited wherein the repeater module includes more than one CCM and is further configured to not pass the power component between any of the CCMs. Independent claim 43 is totally silent in respect to not passing the power component. The set of claims are clearly not all necessarily restricted to managing the looping problem.
The specifications, as a whole, are also light on discussion around repeater modules managing the looping problem. Mr Snell stated that it is apparent from the specifications that the power conditioning and conversion (“PCC”) module 202 provides power to both the upstream CCM 504 and the downstream CCM 505. He emphasised that power is not passed across the two CCMs.[17] On the other hand, reference to the associated Figure 5 does not seem to directly bear this out. In that figure, the PCC module clearly provides power to one of the CCMs. There is no equivalent direct power connection to the other CCM from the PCC module. The first CCM is then bi-directionally connected to the other CCM. There is no clear indication, though, of what is transmitted across those connections, and certainly not whether power is or is not passed between the two CCMs. Mr Snell sought support for his position from [097] of the specifications.[18] On the other hand, that passage is merely informative of current limited power passing to the PCC module 202 and the DC injector 204, with the PCC module then conditioning and converting the incoming power to the formats required by the internal circuitry, which is stated to consist of both CCMs, amongst other things.
[17] Snell #1, [33].
[18] Snell #1, [34].
In summary, the light and imprecise discussion in the specifications about power transfer control in respect of multiple CCMs in electrical modules, and/or across incoming and outgoing cable connections, indicates that a solution for managing the looping problem is not part of any inventive concept in this case.
Inventive Concept - Conclusion
In the present case, I conclude the inventive concept, at least in respect to the standard application, is a module architecture for a two-conductor cable telecommunication system whereby individual electrical modules may work with a composite signal, having a data component and a power component and obtained from the two-conductor cable, to separate and extract the data and power components, and transmit data and supply power to one or more network devices.
In respect to the innovation patent, the claims may be said to be more established through prior certification and thus carry more significance for determining the inventive concept for the innovation patent. For the innovation patent, I regard the inventive concept to be the module architecture as for the standard application together with the receipt by the electrical module of output data from the network device and the transmission of that output data along the two-conductor cable. While Mr Snell stated that the SIAMnet product operated in exactly the same way,[19] again the detail as discussed above is not there in the SIAMnet disclosures.
[19] Snell #1, [46].
INVENTORSHIP
The requestor offered no other name than Mr Snell as an inventor in the present case. The applicant listed Mr Snell and a Mr Alastair Brian Jeremy as inventors for the application and for the innovation patent. I regard there to be insufficient evidence in the present case to make a determination of any specific contribution by Mr Jeremy to any invention, although it is clear he had no association with the requestor. In any case, the present dispute hinges on Mr Snell’s contribution to the inventive concept(s) and whether that occurred while he was working for the requestor or subsequent thereto.
THE TRACKING NODE PROJECT
The requestor submitted that the inventive concept for the application and for the innovation patent was developed as part of the requestor’s Tracking Node Project. Moreover, the requestor submitted that it was an eligible person as an employer of Mr Snell and other developers of the Tracking Node Project.
Several annexures relating to the Tracking Node Project are part of Mr Parfenov’s evidence in support and are subject to the above-mentioned sub-regulation 4.3(2)(b) directions. Consequently, I will focus on the discussion by the declarants themselves.
The Tracking Node Project led to the requestor developing a system which allowed continuous communications using a DC cable, together with a switch node supporting an Ethernet network architecture. Together with a single two-conductor cable, this enabled power to be shared amongst the nodes. This also provided a higher bandwidth for transferring data to and from devices compared to, for example, traditional leaky feeder systems.[20]
[20] Parfenov #1, [18].
The Cable Node Concept derived from that project. The concept uses switch nodes, tracking nodes and DC injectors in combination with a DC cable. The switch nodes support WiFi and PoE access to a network. That is, the switch nodes allow a signal having power and data to be received/transmitted via the DC cable. As part of receiving/transmitting the signal, the power may be split from, or combined with, the data in the network. This facilitates a switched Ethernet network architecture over a power line infrastructure. The Cable Node Concept allows transfer of power and data over long distances whilst also keeping a common infrastructure via the PoE ports. Furthermore, the tracking nodes increase tracking resolution where required, and the DC injectors can provide power to the DC cable network where needed.[21]
[21] Parfenov #1, [21].
Mr Snell described the project somewhat differently. He indicated the project arose from an earlier system of the requestor. That system was designated the ImPact system. The ImPact system comprised of a series of nodes, serially inter-connected by a composite cable, which contained a fibre optic pair, for bi-directional data communications, and two DC power conductors. Each node contained WiFi access points and an Ethernet switch.[22] In 2012, Mr Snell suggested to the requestor that problems with the ImPact system might be addressed by using coaxial cable to transfer data instead of fibre optic cable. The proposed conceptual architecture involved replacing the fibre optic transceiver in each ImPact device with a wireline networking module.[23] In 2013, the requestor initiated a proof-of-concept project to validate if the coaxial cable was suitable for achieving the data speeds required. Mr Snell was responsible for the overall architecture and block diagrams while the engineering was assigned to Mr Li.[24] Mr Snell stated the modified ImPact system prototype was only tested for data transfer, not for power transfer. The project did not focus on how the power was to be run on the DC cable. All that had been developed was a number of drawings based on an, incorrect, understanding at that time that power could be simply passed across the nodes at the same time that data was regenerated.[25] Mr Snell concluded that the project consisted of taking a concept that was very well-known in the field, the use of two-conductor cable to transfer power and data, and applying it to the existing ImPact architecture. It was no more sophisticated than that. All the system architecture was already contained in the ImPact system, except insofar as it was necessary to modify that architecture to use two-conductor cable to transfer power and data rather than fibre optic cable and a separate DC power line. Mr Snell accepted that the Cable Node Concept was therefore the use of two-conductor cable to transfer power and data as applied to the existing ImPact system.[26]
[22] Snell #2, [16].
[23] Snell #2, [20] and [23].
[24] Snell #2, [28].
[25] Snell #2, [47] and [48].
[26] Snell #2, [51] – [53].

It may be that there could have been data looping issues with power transfer across the nodes where multiple internal networking modules were in use in repeaters. Nonetheless, this does not detract from the core concept being the use of a two-conductor cable to transmit a signal having power and data components and sharing power and data amongst the nodes to supply power and transmit data to one or more network devices. It may be noted that the looping problem does not necessarily prevent the system from working. It is potentially a limitation on data transmission capability in the repeaters.
The resemblance of the Cable Node Concept with the inventive concepts as concluded above for the standard application and for the innovation patent is apparent. The concepts are broadly the same. A similar position would also be evident from the claims of the standard application, in the case where the modules do not include more than one CCM, and from the claims of the innovation patent. Moreover, Figure 1 of the specifications is telling. For convenience, that figure is reproduced below.
A portal module 103 is configured to receive input power and input data from a power cable and an Ethernet cable respectively. The portal module is configured to combine the input power and input data to generate a composite signal and transmit the signal along the two-conductor, coaxial backbone cable 107.
Quad-ports 108 are powered from the backbone cable and enable the connection of multiple network devices ND at each location into the network backbone using Ethernet cables 109. The quad-ports thus provide high speed data connection for each connected device and may also condition and supply power to the network devices using the PoE standard. The repeater device 112 functions in a similar way. As mentioned earlier, the repeater device may also re-inject power, from Power Supply Unit PSU, and digitally recreate data for the next cable segment. The quad-ports are effectively the switch nodes of the Cable Node Concept. The Power Supply Unit is akin to the DC injector of the Cable Node Concept. The architecture of a two-conductor cable telecommunication system whereby electrical modules receive a composite signal, having a data component and a power component, from the two-conductor cable, and separate and extract the data and power components, and transmit data and supply power to one or more network devices, is broadly the same.
I find the inventive concepts in this case derive from the Tracking Node Project undertaken by the requestor before the priority date.
Mr Parfenov described Mr Snell as the leader of the Tracking Node Project and that he had the dual roles of project sponsor and solution architect.[27] Mr Snell acknowledged working on the Tracking Node Project and indicated he was later assisted by Mr Li. Mr Snell also agreed he had the role of project sponsor and was the system architect.[28]
[27] Parfenov #1, [14].
[28] Snell #2, [43] and [44].

100. Mr Snell indicated that he did not understand the looping problem at the time while working for the requestor. As a result, there was no engineering effort applied to solving that problem.[29] Mr Li stated that the Tracking Node Project commenced in 2012 and concluded in 2014.[30] Mr Li further stated that he encountered the looping problem while working on the Tracking Node Project around April 2014. He indicated the looping problem was caused by powerline communication transceivers in the nodes communicating together to form a loop network.[31] Mr Li also presented evidence of communicating the problem, and possible causes and solutions, by email in April and May 2014 to colleagues, including Mr Snell.[32] The contemplated solutions included modulating the frequencies of the data signals and filtering the signals. Mr Snell accepted that the addition of a low-pass filter on the DC power path could stop the internal modules forming a network link internally within the device, although that adversely affected communications speed.[33]
[29] Snell #2, [26].
[30] Li #1, [11].
[31] Li #1, [17], annexure LL-01.
[32] Li #1, [18], annexures LL-01 and LL02.
[33] Snell #1, [58] – [64].
101. There appears to be some dispute about what was understood or communicated about the looping problem, and efforts to solve the problem, amongst the parties at the time. Since I have found a solution for the looping problem is not part of an inventive concept in the present case, nothing substantial turns on this in the present case. In any case, whilst the problem may have been encountered during the Tracking Node Project and some solutions contemplated, the evidence is insufficient to support a position that a substantive, suitable solution was arrived at during the course of the project, notably in respect to maintaining suitable data transmission capability.
CONTRACTUAL OR FIDUCIARY RELATIONSHIPS
102. Mr Parfenov stated that the Tracking Node Project commenced in 2012 and concluded in 2014.[34] As indicated above, Mr Li clearly supports this position. Mr Snell stated that the project concluded in 2013. This discrepancy is perhaps explainable on account of Mr Snell being out of Australia after July 2013 for about 9 weeks and being fully engaged after that on customer facing solution architecture before moving out of the engineering department entirely around April 2014.[35] This would suggest that Mr Snell may no longer have been directly involved in the project after July 2013, rather than the project concluding in 2013. Given that Mr Snell remained in the engineering department until around April 2014 and remained employed by the requestor until at least March 2015, it is also difficult to envisage that Mr Snell was unaware of ongoing project efforts, such as on the looping problem. Mr Snell was clearly a recipient of at least one email from Mr Li regarding the looping problem.[36] It seems more plausible that Mr Snell developed a lack of interest, rather than a lack of awareness, of any such progress being made by the requestor towards the end of his term with the requestor. Again, nothing substantial turns on this in the present case. Both of the indicated project concluding dates are before the priority date and before Mr Snell left his employment with the requestor in 2015. The discrepancy also does not affect the position that Mr Snell was the instrumental party regarding the Cable Node Concept.
[34] Parfenov #1, [12].
[35] Snell #2, [40].
[36] Li #1, annexure LL-02.
103. The employment agreements between Mr Snell and the requestor are subject to the above-mentioned sub-regulation 4.3(2)(b) directions. I am satisfied those agreements vest to the requestor any intellectual property created, developed or contributed to by Mr Snell during the course of his employment with the requestor.
CONCLUSION
104. I conclude the requestor is the sole person entitled in respect to the present standard application and in respect to the innovation patent.
105. It is appropriate to make a declaration under section 36 and make directions under section 191A to reflect this outcome.
COSTS
106. Both parties sought their costs. I see insufficient reason to depart from the normal approach that costs should follow the event.
107. The requestor has been successful with the section 36 and section 191A matters. Accordingly, in the present circumstances, I award costs in accordance with Schedule 8 against R F Industries Pty Limited.
M. G. Kraefft
Delegate of the Commissioner of Patents