Mint Development Pty Ltd and Waste Diamond Solutions Pty Ltd v Jamil Rima
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mint Development Pty Ltd and Waste Diamond Solutions Pty Ltd v Jamil Rima [2020] APO 50
Patent Application: 2018200824
Title:VALUABLE MATERIALS FROM SOLID ORGANIC WASTE (VMW)
Patent Applicant: Jamil Rima
Requestor: Mint Development Pty Ltd and Waste Diamond Solutions Pty Ltd
Delegate: C. A. Douglas
Decision Date: 20 November 2020
Hearing Date: Written submissions filed on 27 July 2020, 3 August 2020, 11 August 2020
Catchwords: PATENTS – s36 – inventive concept – who conceived the invention – contractual relationships – entitlement to the invention assigned – requestors eligible persons – request successful
Representation: Patent attorney for the Requestors: Baxter Patent Attorneys Pty Ltd
Patent attorney for the Applicant: Self represented
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018200824
Title:VALUABLE MATERIALS FROM SOLID ORGANIC WASTE (VMW)
Patent Applicant: Jamil Rima
Date of Decision: 20 November 2020
DECISION
The Requestors are successful. I declare that the Requestors, Mint Development Pty Ltd and Waste Diamond Solutions Pty Ltd, are the sole eligible persons under section 36 of the Act and the Applicant of record is not an eligible person. I determine under section 36(3A) that that application proceed jointly in the names of Mint Development Pty Ltd and Waste Diamond Solutions Pty Ltd.
I allow the Requestors one month to provide submissions indicating why the Commissioner should further extend the time for acceptance beyond the 3 months provided in Regulation 13.4(1)(f).
I award costs against the Applicant, Jamil Rima, according to Schedule 8 of the Regulations.
REASONS FOR DECISION
Background
Patent application 2018200824 (the application) was filed on 4 February 2018 in the name of Jamil Rima (the Applicant). The application was based on provisional application 2017900412 filed on 9 February 2017 in the name of JR Innovations Pty Ltd. The patent requests on both the application and the provisional list Jamil Rima as the sole inventor.
The application was examined under s45 of the Patents Act 1990 (the Act) and first and second examination reports issued on 2 April 2019 and 13 March 2020, respectively.
On 20 March 2020 the Commissioner received an application from Mint Development Pty Ltd (Mint) and Waste Diamond Solutions Pty Ltd (WDS), collectively, the Requestors, under s36 of the Act requesting a declaration under s36(1) that Mint and WDS are eligible persons with respect to the application and that the nominated person is not such an eligible person. The Requestors filed a statement of grounds with their request and a number of documents in evidence attached as Annexures A-O, which I will call “Evidence in support (EIS)” for convenience.
On 14 April 2020 the Applicant filed a letter stating their intention to defend their entitlement to the application as inventor.
On 15 April 2020 the application had lapsed because it was not accepted in time. I note that under subsection 36(2) of the Act, the making of a declaration under subsection 36(1) is not conditional on the application being in force. I also note that the period for gaining acceptance will be recalculated as a result of this decision under Regulation 13.4(1)(f) of the Patents Regulations, and the application will be reinstated.
On 22 April 2020 the Applicant filed a response to the EIS comprising a statement and several documents in evidence attached as Annexes1-3, which I will call “Evidence in Answer (EIA)” for convenience.
On 15 June 2020, the Requestors filed a further statement and three statutory declarations which I will call “Evidence in Reply (EIR)” for convenience.
On 20 June 2020, the Applicant indicated that they would prefer the hearing to occur by written submission. A similar statement was made by the Requestors on 26 June 2020. Also on 26 June 2020, the Requestors filed a further statement alluding to an error previously made in their submissions. In a letter dated 7 July 2020, a Delegate of the Commissioner asked that this error be explained in their written submissions in support.
The Applicant filed written submissions in support on 27 July 2020. The Requestors filed written submissions on 3 August 2020. A reply to the Requestors submissions was also filed by the Applicant on 11 August 2020. The Requestor confirmed by telephone on 20 August 2020 that they would not be filing further submissions.
In summary, the Requestors accept that the Applicant is an inventor but assert that several employees of Tech Manufacturing Pty Ltd (Tech Manufacturing) are also inventors and that the rights of these additional inventors vest in WDS. The Requestors further assert that the rights of the Applicant in the application have been assigned to Mint. The Applicant asserts that he is the sole owner of the invention the subject of the application. For clarity, I note here that Mrs Jihane El Khoury and the Applicant are directors and shareholders of WDS. Mr Joseph Taouk is the director and shareholder of Mint.
Onus of Proof
As noted in Woodside Energy Limited v Richard John Moore[1] the Requestor bears the onus to prove their case on entitlement on the balance of probabilities. However the evidentiary burden may shift under some circumstances, especially when knowledge of relevant facts lie particularly with one party or the other; see Dunlop Holdings Limited's Application[2] (“Dunlop Holdings”).
[1] [2018] APO 82 at [37].
[2] [1979] RPC 523 at 542 to 544.
The Law on Entitlement
Section 36(1) of the Act reads as follows:
“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.”
The Dictionary at Schedule 1 of the Act defines an eligible person as follows:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
Section 15(1) of the Act reads as follows:
“Subject to this Act, a patent for an invention may only be granted to a person who:
(a)is the inventor; or
(b)would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c)derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d)is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”
That is, a patent may be granted to the inventor of an invention or someone who derives title to the invention from the inventor. Such a person is also an eligible person for the purposes of s36(1).
The law on inventorship/entitlement has been recently considered in University of Western Australia v Gray[3] (“UWA”) and Polwood Pty Ltd v Foxworth Pty Ltd[4] (“Polwood”). In particular, the Court in UWA at [253] noted with approval the following steps used by the primary judge for determining who is an eligible person:
i.identify the “inventive concept” of the invention as defined in the claims.
ii.determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice.
iii.determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
[3] [2009] FCAFC 116.
[4] [2008] FCAFC 9.
The Full Court in UWA also found no fault in the reasoning of French J in his discussion of overseas authorities as quoted below in the first instance decision at [1426] of University of Western Australia v Gray (No 20)[5] (“Gray”).
“The inventive concept marks a boundary between invention and verification. An example arose in 1994 and 2002 in decisions reported in both the United States and Canada in relation to the use of the drug AZT to treat AIDS. Glaxo/Wellcome had identified a new use for an old compound in conceiving the idea that AZT would work in humans against the HIV retro virus. It used external scientists employed by the National Institutes of Health (NIH) to perform critical blind testing on the AZT and on other compounds (none of which were identified). The NIH scientists found that the AZT did inhibit HIV replication and so advised. The Glaxo/Wellcome patent was considered in the US Court of Appeals in Burroughs Wellcome Co v Barr Laboratories Inc (1994) 40 F 3d 1223. The argument had been raised there that the patent was invalid because of the wrongful exclusion as inventors of the NIH scientists. The argument focussed on when the inventors conceived the invention. Burroughs Wellcome said it was before they learnt the results of the NIH tests. The respondents argued that the NIH confirmation of the inventions operability from the NIH tests was an essential part of the inventive process. The Court of Appeals held that the NIH scientists were not joint inventors. It set out the following principles 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.
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.The propositions set out in Burroughs Wellcome (1994) 40 F 3 1223 define “invention” by reference to completion in concept which distinguishes the invention from its verification and reduction to practice.”
[5] [2008] FCA 498.
Polwood provides guidance with regard to determining the inventive concept at [60]:
“The invention or inventive concept of a patent or patent application should be discerned from the specification, the whole of the specification including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee's description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”
As far as contribution to the invention is concerned, a distinction is made between conception of the inventive concept and its mere reduction into practice. In this regard the Full Court in UWA commented in relation to Polwood as follows:
“The Full Court pointed out ... that the role of joint inventors is not necessarily equal and is qualitative rather than quantitative. The contributions may be joint or independent. The issue is whether a contribution is to the invention, as determined from the patent specification, including, but not limited to, the claims. In some cases, the reduction of a concept to practice or to a working apparatus may be part of the invention, in other cases it may not be.
Polwood does not change Australian law in respect of the identification of inventorship. The law remains that a putative inventor or putative joint inventor must have made a material contribution to the invention. What the case illustrates is that the reduction to practice of an inventive concept may or may not require an invention or inventive step. If not, reduction to practice does not demonstrate inventorship.”[6]
[6] UWA at [247] and [248].
Following the principles outlined in UWA, to decide the s36 matters, I need to first identify the inventive concept for the application in question and then determine the inventorship by determining who is responsible for the inventive concept. Finally I need to determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention. I will now consider each of these questions below, starting with the inventive concept for the application.
The Inventive Concept for the Application
The application, filed on 4 February 2018 and based on a provisional application 2017900412 filed on 9 February 2017, is directed to a process and apparatus for breaking down organic waste, termed VMW (valuable materials from solid organic waste). The process is said to produce water, carbon and sodium carbonate without producing toxic emissions. The description indicates that a previous reactor for transforming organic waste using high pressure and temperature, disclosed as WO 2016/062881, the Applicant’s previous patent application, resulted in undesirable ejection of steam loaded with hydrocarbons and insufficient heat transfer within the reactor[7]. I will consider briefly the invention disclosed in that earlier document to assist me in understanding the inventive concept of the present application.
[7] Description of application at [0013a].
WO 2016/062881 also discloses a method and apparatus for transforming waste into carbon in a reactor. This method relies on selecting an appropriate mixture of catalysts for its function[8] and the use of a “thermal conductive gas”[9], examples of which include hydrogen, helium[10] and carbon dioxide[11]; the use of nitrogen is not disclosed. The waste is dried within the reactor using increased pressure and heat[12]; there is no disclosure of drying the waste outside the reactor. The examples disclose that the reaction is conducted under helium. Finally, agitation is mentioned in passing – see example 2a which uses an “agitator system” to mix materials inside reactor[13], but there are no diagrams or further explanation of the specific agitator used. There is also no disclosure of a carbon dioxide trapping system using sodium hydroxide to produce sodium carbonate, nor of a system that operates continuously.
[8] Description of WO 2016/062881, page 7 lines 6-12.
[9] Ibid, page 15 line 29.
[10] Ibid, page 19 line 9.
[11] Ibid, page 20 line 20.
[12] Ibid, page 26 lines 3-13.
[13] Ibid, page 27 line 16.
In contrast, the description of the application identifies the features that are said to overcome the problems of the previous application.
“[0019a] Surprisingly, the inventor has found that, by drying the organic materials using a microwave or dryer machine before transferring the materials into the reactor, it results a carbonization during about 10 minutes.
[0019b] Surprisingly, the inventor has found that by speeding the rate of heating the carbonization will take place within 5 to 10 minutes.
[0019c] Surprisingly, the inventor has also found that by working under nitrogen gas the process can be improved.
[0019d] Surprisingly, the inventor has also discovered that by using an agitator equipped with blades close to the walls of the reactor, the heat will be transferred to the materials homogeneously and fast.”[14]
[14] Description of application pages 9-10.
The description elaborates as follows.
“[0020] A process and an apparatus called VMW (valuable materials from solid organic wastes) is a technology that can produce from solid organic waste three valuable materials which are clean water, carbon and sodium carbonate, without producing any environmentally toxic emissions.
[0020a] VMW technology is capable of transforming waste and organic material into three valuable materials within 5 to 10 minutes in case of drying the organic waste before launching the process…
[0021] The basis of this invention relies on the drying of the organic materials outside reactor using an industrial microwave for 20 minutes or other dryer machine. The steam water is directed inside a heat exchanger to be cooled and to produce clean water. The dry material is then transferred automatically to carbon inside the reactor which is ready at 500 °C. The process starts under nitrogen or carbon dioxide gas pressure above 1 Bar to avoid any possibility of combustion. In a short period of time, thereby carbonizing organic material and converting it into carbon within 5 to 10 minutes. The carbon dioxide obtained during the combustion of fuel with a burner is directed inside a sodium hydroxide tank which is converted into sodium carbonate. This is possible by an effective and fast transfer of heat, which in one embodiment is achieved by means of stainless steel agitator system that diffuses the heat into the material to be carbonized, in a highly effective manner. This invention has the additional advantage that is its ability to work with the presence of both oxygen and humidity.
[0022] This invention has the additional advantage of working continuously
DETAILED DESCRIPTION OF THE INVENTION
[0023] The present invention is an apparatus and mode of operation producing three products having values from solid organic wastes. The Combination of heat, nitrogen pressure for avoiding combustion and rapid heat transfer by using of stainless steel agitator equipped with blades close to the wall of the reactor, lead to (i) clean water after cooling via heat exchanger, (ii) to carbon by cracking the organic compounds and (iii) to sodium carbonate by capturing the carbon dioxide inside a caustic soda tank as shown in FIG 1.”[15]
[15] Ibid, pages 10-11.
I also note that Fig 1 discloses a separate dryer and shows agitator blades close to the wall of reactor. The reactor is connected to a cooling tank which provides output as sodium carbonate. Figure 1 is reproduced below.
Example 1[16] discloses that the reactor is pressurized by adding a nitrogen/air mixture in a proportion of 20/80.
[16] Ibid, paragraph [0068] page 22.
To my mind, these portions of the description make clear that the features of drying of the organic materials outside reactor, and ensuring rapid heat transfer by the use of an agitator equipped with blades close to the wall of the reactor are central to the inventive concept. These features were not disclosed in the previously published application WO 2016/062881. Working the process under nitrogen or carbon dioxide gas is mentioned at paragraph [0021], however only the use of nitrogen gas is mentioned in paragraphs [0019c] and [0023]. Also, the use of carbon dioxide to provide the pressure for the process was already disclosed in the previous application WO 2016/062881, which suggests to me that this particular feature is not part of the inventive concept of the present application. On the other hand, the use of nitrogen was not previously disclosed, and paragraph [0023] above indicates that “The Combination of heat, nitrogen pressure for avoiding combustion and rapid heat transfer by using of stainless steel agitator equipped with blades close to the wall of the reactor” leads to the improved result.
Two claim sets have been filed with the application, the original set dated 4 February 2018, and an amended set filed on 14 February 2020. The examiners for the application have indicated in the first and second examination reports that there are significant problems to be addressed in regard to the claims. For example, I have reproduced claim 1 of the original claim set below.
“The Apparatus VMW (Valuable materials from solid organic waste) is designing to be operating. VMW system requires 316 L stainless steel, high temperature and high pressure vessel capable of 150 psi (10 Bar) and 5000C heat. Heat is provided by a single diesel burner which will heat the vessel up to the required temperature for the carbonization process to take place. The agitator used in the process is designed with blades as large as close the walls of the reactor and then it plays the role of catalyst to convert all organic waste to carbon within 25 minutes.”
As this is not a conventionally drafted claim setting out all the features of the invention, the examiner has indicated that the claim needs significant redrafting.
Claim 1 of the amended claim set is also reproduced below:
“A process for converting feedstock into useful material, comprising: Municipal
solid waste, municipal sewage sludge, agricultural waste, animal processing
waste, animal by-product, expired medicine and shredder residue.
First reaction by heating the pressure vessel under nitrogen pressure 10 Bar at
500°C, wherein said reacting comprises evaporation of water as steam, and
cracking of the organic molecules, said cracking at temperatures between about
350°C -500°C, and pressures between about 3.5 to 10 Bar.
Second reaction by cooling the steam water circulated inside heat exchanger system
to collect distilled water.
Third reaction by converting the carbon dioxide generated from burner of diesel oil or
of carbon produced in the apparatus during the cracking phenomena, into
sodium carbonate by reacting the carbon dioxide with sodium hydroxide insidespecial tank”
Once again, the examiner of the second report has indicated clarity problems with this claim, and that subsequent claims are drafted as separate inventions. For example, claim 16 is drafted as an independent claim but has similar features of original claim 1:
“The Apparatus VMW (Valuable materials from solid organic waste) is designing
to be operating. VMW system requires stainless steel materials. High temperature and high pressure vessel capable of 150 psi (10 Bar) and 500⁰C heat. Heat is provided by a single diesel burner which will heat the vessel up to the required temperature for the carbonization process to take place. An agitator was used in the process and designed with blades as large as close the walls of the reactor and then it help to heat transfer.”For these reasons, I consider that the claims are of less assistance in understanding the invention and the inventive concepts than the description, and I will give them less weight. However, I note that claim 1 of the original claim set specifies an apparatus having large blades close to the walls of the reactor, and claim 1 of the amended claim set specifies that the reaction occurs under pressure of nitrogen. The claims are therefore consistent with the description in recognising these features as key to the invention. The claims do not specify a dryer outside the reactor for separately drying the waste. However, the description is emphatic at paragraph [19a] and [21], and in Figure 1 that the separate drying step is key to the invention. Additionally, both claim sets specify that carbon dioxide produced is trapped via reaction with sodium hydroxide to produce sodium carbonate (claim 4 in the first claim set and claims 1 and 24 of the second claim set).
I therefore conclude that the inventive concept of the application resides in:
i) the treatment of organic waste using a three-fold combination of steps:
· Drying of the organic materials outside reactor,
· Working the process under nitrogen gas,
· Ensuring rapid heat transfer by use of an agitator equipped with blades close to the wall of the reactor, and
ii) trapping carbon dioxide via reaction with sodium hydroxide to produce sodium carbonate, wherein the process is operated in a continuous fashion.
Disclosure of provisional application 2017900412
The application for a declaration under section 36(1) is made in respect of the standard complete application 2018200824, so I do not need to decide the question of entitlement in respect of the provisional. However, as my decision has implications for the provisional application, I will consider the disclosure of the provisional and make observations on its content below.
The provisional application was filed on 9 February 2017. The Requestors state that Mrs El Khoury, a director of WDS, was aware that the provisional had been filed but was not aware of the subject matter, nor that it had been filed with JR Innovations Pty Ltd as the applicant and Rima, the Applicant, as sole inventor[17].
[17] EIS paragraph 18a.
The description of the provisional titles the invention “Flash conversion of organic waste into valuable materials apparatus (FWC)”. Paragraph [0002] states the following:
“The present invention works in a convertor and by combining heat, air pressure, thereby transforming wet organic material into charcoal in 30 minutes to 35 minutes. Starting organic materials after processing become charcoal by cracking process, sodium carbonate by trapping the carbon dioxide into sodium hydroxide aqueous solution, purified water by cooling the steam ejected.”
A number of alleged objectives and advantages are stated, but few details of the process and apparatus are provided. The most significant disclosure is found in paragraph [0036] which explains Figure 1 as follows:
“Continuous FCW design is showed in Figure 1. The stages and doors of the apparatus are numbered from 1 to 5 representing: 1- Loading; 2- Pre-heating chamber; 3- Reactor; 4- carbon collecting chamber; 5- solid waste.”
Paragraph [0048] states that as shown in Figure 1, the system is designed to be able to work continuously. Figure 1 is reproduced below.
I note that chamber 2 is described as a pre-heating chamber rather than a dryer as in the complete application. Further, paragraph [0049] of the provisional states that “Due to the use of an agitation system…the humidity in the waste starts to evaporate” indicating in this disclosure that drying occurs inside the reactor.
The reactor is generally described[18], including its ability to withstand heat and pressure, and the heating system used. The description goes on to state that “In order to diffuse the temperature in the waste inside the reactor, a special agitator is installed in the reactor.”[19] However, no further details of the design of this agitator are provided. It also describes that the carbon dioxide generated by combustion is reacted with sodium hydroxide to form sodium carbonates.[20]
[18] Description of provisional, paragraphs [0045]-[0047c].
[19] Description of provisional, paragraph [0047f].
[20] Description of provisional, paragraphs [0047d], [0047e].
There is no reference to working the process under nitrogen gas in the provisional. There are several references to the use of pressure, but none that mention nitrogen gas. For instance, Example 1 titled “Treatment of municipal solid waste” states:
“10 kg of municipal waste was collected and was inserted into the reactor which was then pressurized and sealed appropriately to avoid any leakage during the carbonization process. We used an electric heater to heat the reactor and an air compressor to maintain the appropriate pressure.”
In comparison, example 1, also titled “treatment of municipal solid waste” in the complete application filed on 4 February 2018, states:
“100kg of municipal waste was collected and dried with microwave system and automatically was transferred into the reactor which was then pressurized to one bar by adding nitrogen/air in a proportion of 20/80 and sealed appropriately to avoid any leakage during the carbonization. A burner was used to heat the reactor and an air compressor and bottle of nitrogen to maintain the pressure more than one bar.”
I therefore consider that the three aspects that make up the inventive concept in the description of the application filed 4 February 2018, namely:
· Drying of the organic materials outside reactor,
· Working the process under nitrogen gas,
· Use of an agitator equipped with blades close to the wall of the reactor,
are absent in the earlier provisional. However, the additional features of trapping carbon dioxide via reaction with sodium hydroxide to produce sodium carbonate and operating the process in a continuous fashion are disclosed in the provisional.
Who was responsible for the inventive concept disclosed in the application?
The second step of the analysis according to UWA is to determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice. In order to consider this question of inventorship for the application, I will trace the development of the technology in question as it is presented in the evidence filed.
In their EIS, the Requestors refer to the “Rima Technology” as being the technology that the Applicant previously developed and described in his earlier patent applications including WO 2016/062881 published 28 April 2016 (PCT no. PCT/EP2015/074658)[21]. The Applicant refers to the “Rima Invention” in the EIA[22]. I understand that the “Rima Technology” is the same as the “Rima Invention” referred to by the Applicant, since the Applicant references two agreements entered into regarding this technology, both of which identify WO 2016/062881 and its related PCT application as the subject matter in question[23]. I further note that the Applicant refers to the subject matter of the application as being “totally different”[24] from the “Rima Invention”.
[21] EIS paragraphs 5-6.
[22] EIA, See Background.
[23] EIA, Annex 1 and 2.
[24] EIA, See Background.
The Requestor states that on or around early February 2016 the Applicant sent the documentation of the Rima Technology[25] pursuant to an agreement between Mint Development Pty Ltd Trust Mint Trust (Mint Trust) and Rima Industries BVBA. As this document is signed by Mr Taouk and Mrs El Khoury, I understand that these parties were in receipt of this documentation. The agreement was in relation to the distribution of a “product … capable of converting solid waste and any organic waste … to carbon powder and water utilising a process known as Rapid Pulse Carbonisation (RPC)”[26] The documentation consists of around 75 pages of engineering diagrams.
[25] EIS, paragraph 9 and Annexure C.
[26] EIS, paragraph 8 Annexure B.
I note that the documentation includes several diagrams of a “melangeur” (mixer) within the reactor, but there is no disclosure of blades close to the walls of the reactor. One of these diagrams is reproduced below. I further note there is no general diagram of the operation of the whole system of which the reactor is a part.
The Requestors state that the documentation was “found not to be sufficient to enable manufacturing of the plant, both in the sense that the engineering drawings were not complete, and in that the Rima Technology itself was not commercially viable and did not work…”[27]. As I have noted above, there is no evidence of agitation blades close to the walls of the reactor in this documentation, nor is there any indication of working the process under nitrogen, the trapping of carbon dioxide in a sodium hydroxide tank, or the operation of the system as a continuous process. The diagrams appear only to relate to the Reactor chamber. Substantial additional development and design work appears to have been required.
[27] EIS paragraph 9.
Due to the deficiencies mentioned, the Requestors state that Roger Golding of Tech Manufacturing Pty Ltd (“Tech Manufacturing”) was engaged by Mint on or around August 2016 to assist with development of the Rima Technology into an RPC prototype[28]. However, I note that several of the drawings produced by Tech Manufacturing are dated earlier than August 2016; I will return to this point later. I further note that Mr Joseph Taouk is the director of Mint and also Edifice Australia Pty Ltd (“Edifice”).
[28] EIS para 12.
The relationship with Mr Golding is evidenced by a series of emails[29] between Roger Golding and Joseph Taouk. I note that Mint is not mentioned in these emails. The email of 24 October 2016 from Joseph Taouk has Edifice referenced in the signature block. A later email dated 23 January 2017 also has the Edifice signature block. The emails clearly show a working relationship between Mr Golding and Mr Taouk, but it is not clear from them which of Mr Taouk’s companies employed Mr Golding.
[29] EIS, Annexures E and L.
The need for substantial additional design and development work is emphasized by Mr Golding in his email to Joseph Taouk of Sunday, 22 January 2017 1:49 PM.
“I gave a budget estimate based on the only drawings the professor gave me which was of the Reactor (Carbonisation Chamber ) only, the only drawings the professor gave me according to the professor was about 50 home education CAD drawings, was of the reactor chamber only, and all those drawing are not to Australian standards and show no work shop details at all for fabrication and installation, no details of any of the following components supplied, no exhaust cooling chamber or work shop drawings, no design of the housing structure or work shop drawings , no design flame arrestor or work shop drawings , no design of heat exchanger or work shop drawings , no design of the exhaust chamber or work shop drawings , no design of the sodium hydroxide chamber or the sodium bicarbonate collection system or the spill container to capture any overflow or spill of costic (sic) soda entering the enviroment (sic), no pipe work layout or drawings, no dimensions of any work, no electrical diagram, no pneumetic (sic) diagram, no design for the carbon cooling or detailed work shop drawings , no chiller design, what size to use or capacity, no detail work shop drawing for any sections of the RPC prototpye (sic) none at all, Tech Manufacturing did all the drawing and our Engineer designed the Reactor Chamber to me the size agreed by the Professor.”[30]
[30] EIS Annexure L.
These emails refer to “the Professor”. I understand from the context that “the Professor” is Rima, the Applicant. For example, Mr Golding’s reference to “the Professors 50 CAD drawings” could only be the engineering drawings[31] sent by the Applicant which include a panel containing the words “Rima Industries”. No other person is mentioned by either party who could have been the author of engineering drawings related to carbonisation apparatus. Also, in the document titled “Memorandum of Understanding”[32], the recitals include the statement that “Dr. Rima is a professor of scientific research…”. The patent request document in the casefile of the application indicates the patent was requested by “Prof Jamil Rima. It is therefore reasonable to infer that “the Professor” referred to in the emails is the Applicant.
[31] EIS, Annexure C.
[32] EIS, Annexure F.
The email exchange of 24 October 2016[33] between Roger Goulding and Joseph Taouk relates to the costs of developing the RPC prototype. I note that Mr Golding states in this exchange: “…I am far too committed now to stop…” It is not clear exactly when he started working on Mr Taouk’s project, but this statement suggests at this date he had already conducted significant design work on the apparatus. Indeed, several of the engineering design drawings provided by Mr Golding are dated May 2016, indicating an earlier date of Mr Golding’s engagement than the month of August 2016 stated in the EIS.
[33] EIS, Annexure E.
Emails dated 22-23 January 2017[34] provide a detailed explanation of progress of the RPC prototype build. In the email of Sun Jan 22 2017 1:49PM, Mr Golding states:
“Tech Manufacturing did all the drawing and our Engineer designed the Reactor Chamber to me (sic) the size agreed by the Professor.”
“My Engineer Changed how the reactor was to be heated and heating system to meet Australian design standards…”
“….the Engineering and design for the RPC prototype had to be redesigned from the very start…”
“All details of all the components were given to the Professor, all designs and drawings by Tech for the Professors approval. The Professor does not understand the Engineering functions of Australian fabrication and engineering industry, what approvals and certificates you require to build a Pressure vessel of the specs described and that is required to produce the professors patent design for carbonisation.”
[34] EIS, Annexure L.
A further email of 25 January 2017 at 10:52 AM[35] expresses Mr Golding’s concern about loss of copyright:
“I am interested in knowing what information are you giving the other fabricator all my sketches and drawings are copyright to Tech and Roger Golding the only drawing you can give some one else is the Professors 50 CAD drawings…”
[35] EIS, Annexure E.
The Requestors have provided copies of the dated Tech Manufacturing diagrams[36] sent by Mr Golding to the Applicant. Several of these drawings show a separate dryer. I have reproduced one of these drawings below, dated 22/5/16, illustrating a “predrying” area below the hopper.
I note that this diagram is very similar to Figure 1 of the provisional application reproduced above except that Figure 1 in the provisional refers to a preheating section rather than a predryer.
[36] EIS, Annexure L.
An early version of the reactor agitator is shown below dated 8/8/16.
Another diagram of the whole plant design dated 11/16 clearly shows the agitator inside the reactor with blades close to the wall of the reactor and the sodium carbonate collection tank. This design, reproduced below, appears to be the same as the Figure 1B of the application, reproduced previously.
These drawings and the comments of Mr Golding in the emails indicate to me that two of the key aspects of the inventive concept of the application, namely, drying of the organic materials outside reactor, and the use of an agitator with blades close to the walls of the reactor, were features that first appeared in the Tech Manufacturing designs between May and November of 2016. Also, the further features of continuous operation and carbon dioxide trapping via reaction with sodium hydroxide to produce sodium carbonate are also disclosed in these diagrams. Mr Golding states in his email that that although he sought the “approval” of the Professor, “the Engineering and design for the RPC prototype had to be redesigned from the very start”. With respect to the agitator blades, these are presented in the application as inventive features that provide significant benefit, indicating that these are more than a mere reduction to practice of the agitation system found in the “Rima technology” diagrams. The only aspect of the inventive concept that I am unable to find referenced in the Tech Manufacturing drawings is the working of the process under nitrogen gas.
A comparison of the Applicant’s previous application WO 2016/062881 and his reactor diagrams shown in Annexure C, with the Tech Manufacturing drawings indicate to me that new ideas have been conceived which are first evident in the Tech Manufacturing drawings. Mr Golding emphasizes the significant amount of additional work that was involved in altering the Applicant’s reactor to create a workable system, and his comment that the prototype had to be “redesigned from the very start” indicates to me that the ideas were conceived by him rather than being a mere reduction to practice of someone else’s ideas. Mr Golding’s concerns over the copyright of his drawings also indicates Mr Golding’s belief that his designs were original. Furthermore, no evidence has been provided of the conception of these ideas at a date prior to the date of the Tech Manufacturing drawings.
Additionally, in the EIR the Requestors have provided a Statutory Declaration[37] from Roger Golding stating the origin of various features, as follows. They note that Mr Michael M. Podinic is an employee of Tech Manufacturing[38].
· “1- The presence of an agiator (sic) with balde (sic) extending close to wall of the reactor was designed by Micheal M. Podinic and Roger Golding
· 2- The heat exchnager (sic) to cool the steam from drying process/cracking was design by Roger Golding
· 3- Cooling carbon chamber for cooling carbon was designed by Roger Golding
· 4- Transformation of carbon dioxide from heating burner into sodium carbonate is design by Roger Golding
· 5- The use of Microwave to pre-dry the organic matter was designed and innovated by Micheal M. Podinic
· 6- The presence of the coiled heating flow passage on the outside of the reactor vessel is innovated and designed by Micheal M. Podinic and Roger Golding
· 7- The operation of the process as a continue process is designed by Roger Golding”
[37] EIR, Annexure R.
[38] EIR, paragraph 3b.
The Requestors also state:
“Additional Concepts” not directly invented by employees of Tech or Mr Golding still belong to Mint by virtue of an alleged agreement with the Applicant, and that “Such Additional Concepts include:
i. The concept that the reactor uses a thermally conductive gas which is a mixture of nitrogen and air in the ratio of 20/80.”[39]This appears to me to be an admission by the Requestors that the Applicant conceived the feature of the use of nitrogen in the process.
[39] EIR, paragraph 5.
In the EIA, the Applicant does not discuss the origins of the inventive concept that is the subject of the application. He submits that a Memorandum of Understanding (“MOU”) between himself and Mrs El Khoury was established to facilitate development of the “Rima Invention” in Australia. In its recitals, the MOU[40] specifically states that this invention is the subject of patent application PCT/EP2015/074658. Regarding the MOU, the Applicant states:
“This constitutes a clear avowal from the Requestor that Rima and Rima Industries SAL (Holding) are the owner of all Intellectual Properties related to Rima Invention”[41].
[40] EIA, Annex 2.
[41] EIA, Background, bottom of page 1.
However, by his own admission[42], the “Rima Invention” is “totally different” to the application presently in question. To my mind, this supports the view that the Tech Manufacturing drawings relate to new inventive concepts, distinct from the invention of WO 2016/062881, rather than being a reduction to practice of former ideas. Furthermore, the Applicant makes no comments on the design drawings of Mr Golding other than to say that “Mr. Golding showed a clear incapacity to conduct both the designing and fabrication work.”[43] He does not comment on the similarity between Figure 1B in the application and the Tech Manufacturing drawing of the plant design, as reproduced above.
[42] EIA, Background, second paragraph.
[43] EIA, paragraph 4, ‘Relation between the parties and roger Golding’.
The evidence, then, that Tech Manufacturing conceived of the inventive concept features (with the exception of working the process under nitrogen), is the presence of these features in the Tech Manufacturing drawings dated November 2016 or earlier, the emails from Mr Golding indicating the substantial development work conducted by his company, the declaratory statements by the Requestors as to the origin of these features, and the absence of documentary evidence from the Applicant demonstrating an alternate origin prior to the date of the provisional application. The evidence that the Applicant conceived these features of the inventive concept is the Applicant’s assertion that he is the sole owner of the invention the subject of the application. The weight of evidence, therefore, leads me to conclude on balance that Mr Roger Golding and Mr Michael Podinic of Tech manufacturing conceived the following key ideas of the inventive concept: the ideas of drying of the organic materials outside reactor, using an agitator equipped with blades close to the wall of the reactor, trapping carbon dioxide via reaction with sodium hydroxide to produce sodium carbonate, and operating the process continuously. I consider that these ideas equate to “the formation in the mind of … a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice” in the words of Gray. However, the Tech Manufacturing drawings do not disclose the working of the process under nitrogen gas, and the Requestors concede that the Applicant invented this feature. Therefore, I am satisfied that the Applicant, Dr Rima, conceived of this part of the inventive concept. Thus, since as per Gray, “Conception is the touchstone of inventorship”, I am satisfied that Mr Roger Golding, Mr Michael Podinic and the Applicant, Dr Rima, are joint inventors of the invention disclosed in the application which is the subject of the request under section 36(1).
As an observation, I note that the provisional was not filed until February 2017, and that the additional features of the inventive concept of trapping carbon dioxide via reaction with sodium hydroxide to produce sodium carbonate, and operating the process continuously, disclosed in the Tech Manufacturing drawings pre-date the disclosure of those features in the provisional.
When were the features of the inventive concept conceived?
I have noted the dates of the Tech Manufacturing drawings that illustrate the inventive concepts developed by Mr Roger Golding and Mr Michael Podinic. The date at which the Applicant conceived the idea of working the process under nitrogen gas is less clear. I have considered the provisional application filed on 9 February 2017 and have noted that it contains no disclosure of working the process under nitrogen gas. I therefore conclude that this idea was conceived between the filing dates of the provisional and the complete applications, that is, before 4 February 2018 but after 9 February 2017.
Have the rights to IP been transferred?
The parties have filed in evidence a number of agreements that appear to represent the changes and developments in the relationships between the parties over the last five years. I will discuss the course of events and the agreements that existed before the filing date of the application that appear to me to impinge upon the IP rights of the parties.
The Requestors state that Dr Rima arrived in Australia on 3 November 2016[44]. Shortly after this, the MOU dated 6 November 2016[45] was signed between Dr Rima and Mrs Jihane El Khoury indicating the intention to form a new company (unnamed) to commercialise the Rima Invention. In the Recitals the MOU states that:
“Dr Rima has Invented a technology that consists of a carbon neutra1 process and technology that can turn organic waste into high purity carbon in as little as 15 minutes (the “invention”)”.
[44] EIS paragraph 10.
[45] EIS Annexure F; EIA Annex 2.
Immediately after this, the document states that Rima is the owner of the invention and the patent number PCT/EP2015/074658. As I have previously stated, this indicates to me that it is the Rima Technology that is covered in this MOU. The MOU states that “Dr Rima undertakes to develop the invention and supervise the manufacturing process of the machines”[46] and to licence his right to exploit the invention in Australia to the Company[47] but it does not identify or contemplate that any further inventions are to be covered by the agreement. This is confirmed by the Applicant’s statement in relation to this document that “this constitutes a clear avowal from the Requestor that Rima and Rima Industries SAL (Holding) are the owner of all Intellectual properties related to the Rima Invention”[48] (emphasis added). This agreement does not, then, extend to the invention covered by the application.
[46] MOU, clause 2.4
[47] MOU, clause 2.6, 2.7.
[48] EIA, last paragraph of page 1.
Additionally, a Deed of Agreement dated 14 November 2016[49] was made between Dr Rima, Mr Taouk and Ms El Khoury, stating:
“…RPC Prototype under preparation will be the property of the establishes (sic) Australian Company to be held between Dr Jamil Rima and Jihanne El Khoury or Joseph Taouk”
[49] EIS, Appears at the end of Annexure H
This Deed and the MOU appear to be early arrangements between the Applicant, Mr Taouk and Ms El Khoury in relation to the Rima Technology and do not contemplate further inventions. I consider that the MOU relates only to the original Rima Technology and the Deed of Agreement in any case does not make statements about IP rights, only the ownership of the prototype product.
The Consultancy Agreement
The Requestors state that on or around 16 February 2016, Mint and the Applicant entered into a Consultancy Agreement.[50] This agreement represents a point of contention between the parties, so I will consider the document provided by the Requestors in detail. This agreement commences with an address block on the top left of the document as follows:
“Mint Development Pty Ltd
125 Cosgrove Rd
BELFIELD NSW 2191
Ph: (02) 9758 8688
Fax: (02) 9758 842216th of Feb 2016”
[50] EIS, paragraph 11, Annexure D.
The first paragraph states:
“This Consultancy Agreement (the "Agreement'') is made and entered into this 9 July 2017 ( 09-07-2017) by and between Mint Development Pty Ltd with its principal place of business located at 125 Cosgrove Road, Belfield in the State of New South Wales (the "Company") and Dr Jamil Rima…(the “Consultant”)…”
The document recites the following in the introduction, indicating the intention of the agreement:
“WHEREAS, the Company is in the business of planning environmental and development
WHEREAS, the Consultant has expertise in the area of waste managment field our objective concentrate to develop a department of environment in Edifice company The main the objective is to contribute in the solid waste treatment and wastewater cleaning. We started with the fabrication of first machine called RPC based on the patent of Dr Jamil Rima...
WHEREAS, the Company desires to engage the Consultant to provide certain services in the area of Consultant's expertise and the Consultant is willing to provide such services to the Company;”
Under the heading “Engagement and Services” the agreement states:
“(a) Engagement. The Company hereby engages the Consultant to provide and perform the services set forth in Exhibit, and the Consultant hereby accepts the engagement.”
I note that this “Exhibit” is not present in the filed agreement. However, the agreement states that its objective is the fabrication of “…first machine called RPC based on the patent of Dr Jamil Rima”.... I therefore conclude that the services are to provide advice regarding the build of an RPC prototype using the Applicant’s earlier patent application WO 2016062881 as a starting point.
The Consultancy Agreement contains the following statements at clause 4:
“4. Work Product and License
(a) Defined. In this Agreement the term "Work Product" shall mean all work product generated by Consultant solely or jointly with others in the performance of the Services, including, but not limited to, any and all information, notes, material, drawings, records, diagrams, formulae, processes, technology, firmware, software, know-how, designs, ideas, discoveries, inventions, improvements, copyrights, trademarks and trade secrets.
(b) Ownership. Consultant agrees to assign and does hereby assign to Company all right, title and interest in and to the Work Product. All Work Product shall be the sole and exclusive property of the Company and Consultant will not have any rights of any kind whatsoever in such Work Product.
Consultant agrees, at the request and cost of Company, to promptly sign, execute, make and do all such deeds, documents, acts and things as Company may reasonably require or desire to perfect Company's entire right. title, and interest in and to any Work Product.
Consultant will not make any use of any of the Work Product in any manner whatsoever without the Company's prior written consent. All Work Product shall be promptly communicated to Company.c) License. In the event that Consultant integrates any work that was previously created by the Consultant into any Work Product, the Consultant shall grant to, and Company is hereby granted, a worldwide, royalty-free, perpetual, irrevocable license to exploit the incorporated items, including, but not limited to, any and all copyrights, patents, designs, trade secrets, trademarks or other intellectual property rights, in connection with the Work Product in any manner that Company deems appropriate. Consultant warrants that it shall not knowingly incorporate into any Work Product any material that would infringe any intellectual property rights of any third party.”
This Consultancy Agreement as provided in Annexure D appears to contain the signature of Dr. Jamil Abdalah Rima on page 5 of the agreement. The signature is not dated. There is some uncertainty, then, as to when the agreement was actually entered into; the requestors assert it was on or around the February 2016 date, yet the first paragraph has a different date, 9 July 2017, and the signature is not dated at all.
Furthermore, the Applicant asserts[51] that no Consultancy Agreement was ever signed between Rima and Mint Development, and that the signature on that document is falsified. The Requestor replies that Applicant’s allegation is false and invites the Applicant to show what other agreement his signature could have been taken from.[52]
[51] EIA, paragraph 3: Applicant submissions of 27 July 2020, paragraph 2.
[52] EIR, paragraph 6.
The Applicant’s comments are noted. However, there remains in evidence a document that on its face has been signed by both parties. No other document, from which the signature page could have been copied, has been presented in evidence. Prima facie, the agreement is valid. The evidence that the agreement was not signed by the Applicant is the Applicant’s recollection. However, I note that there were a number of documents drafted by the parties in the course of their interactions, and it is possible that this recollection may be faulty.
I also note there is other evidence that demonstrates that the Applicant was acting in a manner consistent with the terms of this agreement. The emails between Mr Golding and Mr Taouk indicate that Mr Golding considered the Applicant to be functioning as a consultant for Mr Taouk who, as previously mentioned, is the director of Mint. Below are examples of the content of these emails that indicate to me this consultancy role. I have previously stated that I consider “the Professor” in these emails to be the Applicant.
In the email of Wed 25 January 2017 10:52 AM[53] Mr Golding states:
[53] EIS, Annexure E.
“…don't need the Professor to complete the Project he is only a consultant on his Invention”
In the email of Sun 22 January 2017 1:49 PM[54] Mr Golding states:
“….All details of all the components were given to the Professor, all designs and drawings by Tech for the Professors approval…
…the Professor is not to be involved in the costing of the RPC Project , this is between Tech and your self,the investor, the Professor is only to consult on the Technical side and patent of the RPC…
…the Professor can advise and examine all progress…”
Mr Golding’s earlier email of Monday 24 October 2016 5:31 PM[55] also mentions “the Professor”:
“…design of the sodium hydroxide tank and system which is now stainless ..the professor said plastic....my oridginal (sic) cost is just a guess estimate at that time...”
These emails indicate to me that “the Professor” – the Applicant – was engaged in a consulting role from very early on in the process of the design work conducted by Mr Golding, and at least from October 2016. Given the presence of the Consultancy Agreement, it is reasonable to conclude that the consultancy mentioned in the emails is the consultancy for Mint.
[54] EIS, Annexure L.
[55] EIS, Annexure E.
In addition, the Consultancy Agreement states that there was an intention to “develop a department of environment in Edifice company” indicating a relationship between the companies Edifice and Mint. A further agreement provided in evidence from the Requestor is a signed Contact of Employment between Edifice and the Applicant who is titled “Prof. Rima” in this document,[56] engaging the latter from 20 January 2017 for a minimum of 4 years. Clause 9 states:
“The employee must not directly make use of any intellectual property of the Company except with the authority and for the benefit of the Company.”
I consider that this employment contract provides further contemporaneous evidence of the understanding of the parties regarding the ownership of the intellectual property at the beginning of 2017 – that is, it would not be owned by the Applicant.
[56] EIS, Annexure J.
Whilst the first paragraph of the Consultancy Agreement specifies the date of 9 July 2017, the other evidence on file indicates to me that the Applicant was acting in the role of a consultant according to the terms of this agreement with Mint for some months prior to this date. He had also signed an employment contract with the related company Edifice at the earlier date of 20 January 2017, as indicated above. The Applicant’s working relationship with Mr Taouk via his companies Mint and Edifice, and with Mr Golding, clearly predated July 2017. On balance, I consider the evidence demonstrates that a consultancy arrangement was in place, at least from October 2016. Whilst I cannot be sure as to the exact date that the Consultancy Agreement itself was signed, I am satisfied that the evidence as discussed above demonstrates that a consultancy arrangement commensurate with the Consultancy Agreement was in operation at least from October 2016. It follows that I should consider the terms of the Consultancy Agreement as having effect, from that time.
Clause 4(a) of the agreement states clearly that the “work product” means all work product generated by Consultant solely or jointly with others in the performance of the Services and includes, amongst others, “…ideas, discoveries, inventions, improvements…” I read the “performance of Services” to mean the consultancy role that the Applicant had been performing since at least October 2016. It follows then that the statement in Clause 4(b) of the Consultancy Agreement that the consultant “agrees to assign and does hereby assign to Company all right, title and interest in and to the Work product” relates to any work that the Applicant had performed in the course of his consultancy, and encompasses any intellectual property that he devised during that time. Other contemporaneous evidence supporting this conclusion of the Applicant’s intention to assign the IP rights is found in the terms of the contract of employment that the Applicant had with Mr Taouk’s related company Edifice, in which the Applicant had agreed not to make use of any intellectual property of that company.
As indicated previously, I consider that the idea of working the process under nitrogen gas was conceived some time before 4 February 2018 but after 9 February 2017. To my mind, the Consultancy Agreement operated to transfer all ideas and inventions that had been conceived during the time that the consultancy was operating, including this period. This intention is also consistent with the intention evident from the Employment Agreement. Therefore, I consider that the parties understood that any intellectual property devised in the course of the Applicant’s consulting role would belong to the companies who employed him, and the Consultancy Agreement to my mind gives effect to this intention.
I conclude that the Applicant’s contribution to the invention disclosed in the application has transferred to Mint via the Consultancy Agreement. It follows that whilst the Applicant is an inventor, he is no longer an eligible person given this transfer of entitlement.
Deed of Agreement/Arrangement
The Requestors have submitted a copy of a Deed of Agreement/Arrangement (the Deed) made between WDS and Mr Joseph Taouk of Edifice, with Mr Roger Golding, Tech Manufacturing.[57] Clauses 9-10 of that agreement state:
“9. All parties and participants have agreed and confirmed that Waste Diamond Solution Pty Limited (WDS) is the sole owner of the RPC reactor unit.
10. All documentations, and intellectual property, user manuals, standard
documentations for the Rapid Pulse Carbonisation Reactor Unit are owned by Waste Diamond Solution Pty Ltd (WDS).” (emphasis added)This document has been signed by Prof Jamil Rima and Ms Jihane El-Khoury for WDS, Mr Joseph Taouk for Edifice and Roger Golding for Tech Manufacturing. Each signature is witnessed but not dated. The date on page 1 of the agreement is 11 August 2017.
[57] EIS, Annexure G.
A deed is a document that indicates the intentions of the parties. In this case, from the background of evidence which clearly demonstrates a history of disagreement and misunderstanding between the parties, it appears to me clear that this document was intended to clarify the position of each party, particularly with respect to Mr Golding of Tech Manufacturing. For example, I note in the email from Mr Golding to Mr Taouk of 22 January 2017 1:49PM, Mr Golding writes:
“…a proper agreement will be drafted up and signed by all stating all the conditions as I have listed, if we can not come to a mutual agreement I and Tech will not longer be involved in the RPC project.”
Of itself, the Deed does not necessarily transfer the entitlement to the invention from Mr Golding to WDS. However, the Deed does represent contemporaneous evidence of what the parties intended and understood about the state of affairs at the date of the Deed.
The evidence shows that Mr Golding and his company Tech Manufacturing were employed in some capacity by Mr Taouk or one of his companies to make the RPC prototype and to do additional design work as necessary. The evidence does not include any specific employment agreement between Mr Golding and Mr Taouk. I note that the courts may infer that inventions developed by employees in the course of their employment may belong to their employer as an implied term of contract. However, even in the absence of such evidence, in my view the Deed demonstrates Mr Golding’s understanding that the intellectual property in any invention created by him and the employees of his company (including Tech Manufacturing’s employee Mr Podinic) had been transferred in law to WDS.
This document also appears to me to be a clear acknowledgement on behalf of the Applicant that it is WDS that holds the intellectual property in the process and apparatus that was under development by Tech Manufacturing.
I further note the comments by the parties[58] on the status of the company WDS due to failure to pay a fee. The submission being made was not that the registration fee was not paid, but instead that it was paid late. However, despite the late payment of a fee, there is no evidence on file that WDS ceased to exist as a company. Thus, I consider that WDS is, and was at the relevant times, a registered company existing as a legal entity.
[58] EIS paragraph 32; EIA paragraph 8.
I therefore conclude that entitlement to the inventive concepts invented by Roger Golding or any other employees of Tech Manufacturing have been assigned to WDS, and that therefore WDS is an “eligible person” according to section 36(1) of the Act.
Conclusion on Entitlement under s36
The Requestors are successful. Whilst the Applicant is an inventor, his entitlement to the invention has transferred to Mint, the first requestor, by virtue of the Consultancy Agreement. WDS, the second Requestor, is also an eligible person, since they have obtained assignment from the other inventors, Mr Podinic and Mr Golding.
I declare that the Requestors, Mint and WDS, are the sole eligible persons under section 36 of the Act and the Applicant of record is not an eligible person. I also determine under section 36(3A) that that application proceed jointly in the names of Mint and WDS.
The Requestors have requested an extension of time of 1 year to be provided for the prosecution of the application. I have noted previously that the period for acceptance will be adjusted under Regulation 13.4(1)(f) to be the period of 3 months from the date of this declaration. I further note that according to Regulation 13.4(3) the Commissioner may substitute a period longer than 3 months if the Commissioner is satisfied that acceptance of the patent request and complete specification should be postponed. I therefore give the Requestors one month to provide submissions indicating why the Commissioner should further extend the time for acceptance.
Costs
Costs usually follow the event. I see no reason to do otherwise here. I award costs against the
Applicant, Jamil Rima, according to Schedule 8 of the Regulations.
C. A. Douglas
Delegate of the Commissioner of Patents
Mint Development Pty Ltd and Waste Diamond Solutions Pty Ltd v Jamil Rima [2020] APO 50
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