NewSouth Innovations Pty Ltd v Dr. Wieslaw Kaczmarek

[2010] APO 2

OFFICIAL NOTICE

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application  :          No. 2007905831 in the name of Dr. Wieslaw Kaczmarek

Title:          Apparatus and method for detecting ionizing radiation with storage phosphors with long fluorescence lifetime

Action: Request for a direction on entitlement under Section 36 of the Patents Act 1990 by NewSouth Innovations Pty Ltd

Decision:          Issued  5 February 2010

Abstract

Entitlement – request under section 36 of the Patents Act in relation to a provisional application filed by Dr Kaczmarek.

To the extent that Dr Kaczmarek was an inventor in relation to the subject matter of provisional application 2007905831 and retained rights despite his employment by the University of New South Wales UNSW, those rights accrued to NewSouth Innovations Pty Ltd (NSI) under the terms of a Researcher Intellectual Property Commercialisation Agreement. This agreement between the researchers Professor Riesen and Dr Kaczmarek and Unisearch Limited (subsequently NSI) provided the researchers with a percentage of the commercialisation profits in relation to certain rare earth radiation storage phosphors and any improvements in exchange for assignment of rights in the inventions.

The subject matter of the provisional application in Dr Kaczmarek’s words is “based on the apparatus in which I connect a well known modulation technique and a new storage phosphor (according to the first invention) for ionizing radiation detection”. Found that this invention occurred at UNSW during the term of Dr Kaczmarek’s employment, that it was a development, enhancement or adaptation that is directly tied to and incorporates the new phosphors making them more useful or useful in a new way and therefore was captured by the agreement. This amounted to an assignment or an obligation to assign any rights in the improvement to NSI.

On this basis it was unnecessary to determine whether Dr Kaczmarek was indeed an inventor in relation to the subject matter of the provisional and a declaration made that NSI is solely entitled in relation to the subject matter of the application.  

PATENTS ACT 1990

DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. 2007905831 by Dr Wieslaw Kaczmarek and request under Section 36 of the Patents Act 1990 by NewSouth Innovations Pty Ltd

BACKGROUND

1. Provisional patent application 2007905831 concerning “Apparatus and method for detecting ionizing radiation with storage phosphors with long fluorescence lifetime” was filed on 23 October 2007 by Dr Wieslaw Kaczmarek. He had previously filed a similar provisional application 2007905735 however this was subsequently withdrawn.

1. Requests under sections 32 and 36 were filed on 28 July 2008 by NewSouth Innovations Pty Ltd (NSI) seeking that the applications proceed in its name and that NSI be declared the sole eligible person in relation to them within the meaning of section 15 of the Act.

1. Following evidentiary stages, the matter came to hearing in Canberra on 2 December 2009. Dr Kaczmarek represented himself with the assistance of a colleague Mr Stawski and NSI was represented by Ms Katrina Howard SC instructed by Mr Andrew Lee, patent attorney, of Pizzeys Brisbane.

1. At the hearing it became clear that the only request being pursued was that under section 36 in relation to application number 2007905831. Nevertheless this application serves as the basis for a claim of priority for two other patent applications. The first filed by Dr Kaczmarek on 21 October 2008 (2008101046) was for an innovation patent which was subsequently granted and has been certified following examination. The second is an international application (PCT/AU2008/001566) filed by NSI and, in addition to the present provisional application, further claims priority from a provisional application 2008905332 filed by NSI on 15 October 2008. Consequently it is apparent that a finding of entitlement in relation to the present application will likely have implications for either or both of the innovation patent and PCT application.

THE SPECIFICATION

1. There is considerable disagreement concerning the scope of provisional application 2007905831 and the nature of the invention alleged by Dr Kaczmarek to be reflected in it. This arises predominantly from the position taken by the parties in relation to the dispute and more particularly the relationship between what is disclosed and a particular piece of apparatus that the parties agree was developed during the later part of 2005 at the Australian Defence Force Academy (ADFA) campus of the University of New South Wales (UNSW). This appears to have been developed for use with what can be referred to as the “SmaXstor” phosphors, SmaXstor being a commercial name for x-ray storage phosphors developed by Professor Hans Riesen and Dr Kaczmarek at the UNSW School of Physical Sciences and involving rare earth elements in the trivalent +3 oxidation state. An example is BaFCl:Sm³⁺.

1. The specification indicates that the invention relates to apparatus and a method for radiation measurement for a number of purposes including for personal radiation exposure management. It is said inter alia that the inventor developed “a simple differential and integral type apparatus and method for radiation measurement that was based on the integrating of measured radiations with a light excitable phosphor”. The particular phosphors involved are the rare earth phosphors mentioned above and more particularly are those that are the subject of Australia patent application number 2005316212 (PCT/AU2005/001905) now in the name of NSI.

1. A particular feature of these and other radiation storage phosphors is that when optically stimulated they fluoresce with an intensity that is indicative of previous radiation exposure; involving an effect known as optically stimulated luminescence (OSL). The apparent advantage of the phosphors of the NSI application, most relevantly, is that they exhibit an exceptionally long fluorescent lifetime which enables the effect of background noise to be reduced in the process of stimulation and measurement of florescence.

1. In this context the invention is said to lie in the adaptation of Time Resolved Spectroscopy (TRS) in the use of long fluorescence OSL phosphors for measuring radiation dose. Of this the specification states:

“To enable TRS detection, the detector must be turned on and off within a controlled time period. The detection period starts some time after termination of excitation (after a delay time) and lasts for a period of time (the acquisition time).

During the excitation period and the delay time, the detector is occluded or turned off (hereinafter referred to as gated off). During the acquisition time, the detector is exposed to emissions from the sample (hereinafter referred to as gated on). For new OSL phosphors it is likely that any single cycle of gating off and gating on will generate a signal on the detector, however in practical application the cycle is repeated until a sufficient reliable signal has accumulated.

Delayed fluorescence emission for new OSL phosphors containing RE 3+ ions is much more intense than fast fluorescence emission from phosphors containing RE 2+ ions, and area imaging systems can work with high levels of higher emission/unit area. Hence, it is desirable for a TRS system to have a geometry which results in high optical throughput (etendue) and low transmission losses. Measurement optimization for a system to achieve this combination of slow gating and high etendue can be significantly simplified in the area of the hardware and software used.

Both the excitation light and the detector must be gated. Gating of excitation with mechanical choppers and/or by using pulse lasers is widely known, as is use of flash lamps which decay quickly enough that their contribution to the delayed acquisition is minimal.

A macro imaging system would require a large mechanical shutter mechanism, which has a relatively gradual transition from open to closed state. For the implementation of such a 2D (two dimensional) detection system, a high resolution optical system incorporating Charge-coupled device (CCD) can be used. In the best case, for high resolution applications, CCD element can be a Electron-Multiplying Charge-Coupled Device (EMCCD).”

1. A number of figures are attached which illustrate the method and apparatus claimed. These include an arrangement of the OSL phosphor with an excitation source, photomultiplier detector and a mechanical chopper which effect separate illumination and detection phases indicated in the extract above.

1. The specification includes a single claim which reads as follows:

“A method for measuring the dose of radiation accumulated in an excitable phosphor with chemical composition incorporating rare earth (RE) element or elements in 3+ oxidation state (such as in BaFCl:Sm³⁺) as a radiation storage and detecting medium having a long fluorescence lifetime in range of µS - ms (effect usually called slow fluorescence). A method comprising the steps of illuminating the stimulable phosphor with pulsed exciting light having an irradiation time not longer than the lifetime of stimulated fluorescence from the stimulable phosphor, detecting the emitted fluorescence with a gated photodetector, amplifying the detected signal with a charge-sensitive preamplifier, feeding the amplified output signal into an analog/digital converter to determine the integrated intensity. A gated photomultiplier tube is used as the photodetector and synchronized with the illumination of the stimulable phosphor with pulsed exciting light.  The gate of the photodetector (photomultiplier tube or CCD integrated circuit) is controlled such that it remains off as long as the illumination continues but turns on after the illumination ends, and the emission of stimulated fluorescence from the excited stimulable phosphor is detected.”

LAW

1. Section 36(1) of the Patents Act 1990 reads:

“(1) If:

(a)a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; 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, 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 so disclosed.”

1. Schedule 1 of the Act provides that an “eligible person” in relation to an invention means a person to whom a patent may be granted under section 15. Section 15(1) requires that:

(1) 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).

1. Thus it is apparent that if the Commissioner is satisfied that a person derives title from the inventor(s) in relation to an invention disclosed in a patent application (whether those inventors are named in the application or not) the Commissioner may declare in writing that the person is an eligible person either solely or jointly with another person who is similarly found to be entitled. Finally it should be clear in this context that reference in my decision to an “invention” means an alleged invention and no assumptions concerning the patentability of the subject matter should be made.

EVIDENCE

1. NSI relies on the following declarations:

·   Dr. Robin Stanley, senior business development manager – Physical Sciences and Engineering at NSI. Dr Stanley’s declaration (16 December 2008) includes matters relating to the contractual relationships between NSI, UNSW and specific researchers said to be relevant to the subject matter of the application. Exhibit RS-3 in particular is a Researcher Intellectual Property Commercialisation Agreement signed by Professor Reisen and Dr Kaczmarek.

·   Professor Hans Riesen, Associate Professor UNSW. Professor Reisen’s declarations (18 December 2008 and 29 April 2009) concern a number of matters including his research into X-ray storage phosphors, the development of readers for those phosphors and the employment of Dr Kaczmarek by UNSW and his involvement in Dr Riesen’s research.

·   Ken Piper, former Senior Technical Officer in the UNSW School of Physical, Environmental and Mathematical Sciences at ADFA. Mr Piper’s declarations (18 December 2008 and 29 April 2009) relate particularly to his involvement in the construction of the reader developed at UNSW in 2005.

·   Dr Barry Gray, Senior Technical Officer (Instruments), UNSW at ADFA. Dr Gray’s declaration particularly relates an instance where Dr Kaczmarek obtained access to Dr Riesen’s laboratory.

1. Dr Kaczmarek, currently a systems availability and capacity manager, Department of Finance and Deregulation, filed evidence in the form of a declaration signed on 27 February 2009. It is set out as a point by point response to matters raised in NSI’s evidence including some matters of evidence but also includes submissions on matters of law. I would note that despite a direction from the Commissioner that the parties file evidence concurrently Dr Kaczmarek chose not to provide evidence in the time permitted but did so in a further period when in possession of the requestors evidence.

1. At this point I will address two submissions made by Dr Kaczmarek in relation to the evidence. Firstly that the fact that Professor Riesen and Mr Piper were not present at the hearing diminishes the weight of their evidence. Dr Kaczmarek did not request that these declarants appear for examination nor requested the Commissioner issue a summons under section 210 for that purpose. In those circumstances no inference can arise and I reject the submission entirely.

1. The second point was essentially that since the onus lies with NSI to make out its case, Dr Kaczmarek was not obliged to provide evidence supporting entitlement on his part. It is obviously a matter for Dr Kaczmarek what evidence he relies on if any but he has misunderstood the nature of the onus on NSI. In reaching a decision on this matter I am entitled to act on any material that is "logically probative" and the standard of proof required is the civil standard, that is, on the balance of probabilities (Dunlop Holding Ltd's Application (1979) RPC 469). Consequently if matters before me are such as to raise doubts in relation to Dr Kaczmarek’s entitlement, the failure to address those doubts in evidence may well be detrimental to his position. In this respect it is sometimes said that the evidentiary burden has shifted from one party to the other and indeed in entitlement cases evidence of a plausible course of events leading to the development of the invention may often be important to the outcome of the matter. In any event I can only reach a decision on the material that has been put before me and if Dr Kaczmarek has chosen not to provide evidence of relevant matters he must accept whatever consequences may arise from that.

DECISION

1. The case essentially made by NSI is that it is solely entitled to the invention disclosed in the application either because it is entitled from the true inventors Riesen and Piper, or if Dr Kaczmarek is an or the inventor, by virtue of a transfer of entitlement under the researcher commercialisation agreement which he signed in May 2005. From the evidence the general background of the dispute seems to be as follows:

-     Professor Riesen has a background in material science including optical/laser spectroscopy and has conducted research into X-ray storage phosphors from 2001. He has been employed by UNSW since at least 1998.  

-     Dr Kaczmarek commenced employment as a part time research associate with UNSW on 14 July 2003. This was the first of a number of separate and essentially contiguous periods of employment with UNSW extending to 2007.

-     Dr Kaczmarek’s duties during 2003 and 2004 involved the production of certain nanocysyalline powders and rare earth phosphors under the direction of Professor Riesen. This resulted in the filing of a provisional application 2004907192 in 2004 and subsequently the PCT application PCT/AU2005/001905 on 16 December 2005 which has been referred to previously. Both Professor Riesen and Dr Kaczmarek are listed as inventors in relation to these applications.

-     The specifications of both applications primarily cover what is said to be a new class of X-ray storage phosphors but include a description and claims to “a process for recording and reproducing an image” that includes exposing a radiation storage panel, comprising the particular storage phosphors of the invention, to radiation to be measured, exposing the panel to an excitation light source and detecting the emitted light. In the PCT but not the earlier application, a further paragraph appears indicating that the readout process may use a gating method for the exciting light and the emitted light, such as used in phosphoroscopes, that allows the detector to be closed when the phosphor is exposed to excitation light. An example of means facilitating the gating method is a mechanical chopper. Additions to the PCT application also include a new advantage of the invention at page 17:

“The existing imaging technology can be modified for the new phosphor by including gating and modulation techniques, taking advantage of the ca. 2 ms lifetime of the photoexcited state”

and claim 85 directed to the process for recording and reproducing an image “when used for personal or environmental radiation monitoring or monitoring of dosages in radiation therapy”

-     A commercialisation agreement between Unisearch Limited and Professor Riesen and Dr Kaczmarek was signed in May 2005. Unisearch changed its name to NSI on 9 September 2005.

-     As indicated previously a “reader” to measure delayed phosphorescence was developed at UNSW in the second half of 2005. While contemporary records on the development of the reader are sketchy at best it appears clear from the evidence of both parties that it was used with the rare earth storage phosphors developed by Professor Riesen and Dr Kaczmarek and used a gated excitation and detection methodology, more specifically a mechanical chopper.

-     Dr Kaczmarek continued to have some ongoing involvement with Professor Riesen’s research but from June 2005 to June 2006 was employed by UNSW on other projects. After a further period as a visiting fellow to June 2007, Dr Kaczmarek ceased employment with UNSW. From at least May 2005 it is apparent that tensions were developing between Dr Kaczmarek and Professor Riesen and NSI over commercialisation of the SmaXstor phosphors and the reader. It seems clear that Dr Kaczmarek was particularly concerned with obtaining a commercial benefit from the technology and in this respect was not satisfied by the efforts made by Professor Riesen, NSI (or its predecessor Unisearch) or the commercialisation vehicle Dosimetry & Imaging Pty Ltd that was set up by NSI. This interest is perhaps not surprising when one considers the commercialisation agreement provides Professor Riesen and Dr Kaczmarek with a percentage share of the profit of commercialisation. In any event the relationship between the parties has deteriorated and this forms the background to the filing of the patent application by Dr Kaczmarek in October 2007.

Researcher Intellectual Property Commercialisation Agreement

1. The Researcher Intellectual Property Commercialisation Agreement that has been provided as exhibit RS-3 to Dr Stanley’s declaration is clearly central to any claim of entitlement that NSI has to the extent that Dr Kaczmarek is an inventor and has retained rights in the invention despite his employment by UNSW. Key features of the agreement are as follows:

-     The parties to the agreement are Unisearch Limited and the Researchers, Professor Riesen and Dr Kaczmarek. There is no dispute that Dr Kaczmarek signed the agreement on 10 May 2005.

-     Under the agreement Unisearch (now NSI) has a number of obligations. One is to use reasonable efforts to commercialise the “Invention IP”. The Invention IP is defined as intellectual property rights relating to or arising in connection with the Inventions or the Improvements. In this case the Inventions are defined in Schedule A of the agreement as those inventions described in provisional application 2004907192 titled “Radiation storage phosphor and applications”. Improvements are defined as “improvements to, and developments, adaptations and enhancements of, the Inventions (patentable or otherwise) created after the commencement of this Agreement while you are an employee of UNSW or otherwise subject to the UNSW IP policy”.

-     Other obligations on Unisearch include protecting the Invention IP and distributing Net Revenue according to the Revenue Shares indicated in the Schedule. This included a 33.33% split between Unisearch, UNSW and the Researchers who were each entitled to a 50% share of their portion.

-     The obligations of the Researchers Professor Riesen and Dr Kaczmarek include requirements as to confidentiality and publication, identification and notification of improvements, assistance in the protection and commercialisation of the Invention IP and that they would not challenge the validity of the Invention IP or register the Invention IP in their own name without consent.

-     Another effect of the agreement is that under clause 3.1 it assigns from the inventors their entire right, title and interest in the Invention IP as at the date of execution. Then clause 3.2 states that “Upon creation or development of any Improvement you assign to us, and we accept, your entire right, title and interest (whether legally or beneficially owned) in the Improvement with effect from the date of creation, and the Improvement then forms part of the Invention IP”

-     Significantly clause 10(i) provides that “The assignments of Invention IP and Improvements in clause 3 are absolute and unconditional and are not affected by any act or thing including the unenforceability of any other provision.”

-     Finally the term of the agreement is linked to the expiry or termination of the last subsisting rights in the Invention IP. Termination of the Agreement is provided for on breach of the Agreement by the Researchers or on notification by Unisearch in which case reassignment of the Invention IP could occur according to the UNSW IP Policy.

1. Dr Kaczmarek’s submissions concerning the validity and application of the commercialisation agreement are somewhat unclear. It seems that, in particular, he is under the impression that the decision of Justice French (as he then was) in University of Western Australia v Grey [2008] FCA 498 assists his position. However Grey at first instance and on appeal (University of Western Australia v Gray [2009] FCAFC 116) was concerned with presumptions at law relating to the ownership of inventions made by university employees in the course of their employment. It is not a basis for suggesting that an assignment of any interest he has to another party is invalid.

1. The other main attack on the commercialisation agreement appears to be that it is invalid due to NSI not meeting its obligations to use reasonable efforts to commercialise the Invention IP or in that regard to consult him. I am not in a position to determine whether or not this is the case but it is irrelevant to the present matter. As indicated above the assignment of title to the Invention IP is intended to be absolute and unconditional. As such any concerns Dr Kaczmarek has with the performance of obligations under the agreement are not relevant to the question of entitlement and will need to be pursued through an appropriate forum. It is not a matter which is appropriate for me to decide or comment on.

1. At the hearing Dr Kaczmarek handed up a copy of a blank assignment which he said he had been asked to sign subsequently and which he suggested indicated NSI had doubts about its entitlement to the Invention IP. I note that this is headed Schedule B – Formal Patent Assignment document, relates to the invention entitled “Radiation storage phosphor and applications”, provides for a 2005 execution date and for execution by Dr Kaczmarek, Professor Riesen and Unisearch. Unisearch registered its change of name to NSI on 9 September 2005. Consequently this document appears to be contemporary with the commercialisation agreement and perhaps prepared for inclusion in it. If so and not executed I am not aware of the reason. However I do not believe that a request for Dr Kaczmarek to sign such a document would in the circumstances suggest misgivings about the effect of the commercialisation agreement. Rather it appears intended to provide a simple documentary form of assignment for use in obtaining patent rights. The filing of such an assignment with the Patent Office as evidence of entitlement as opposed to a broader and often confidential commercialisation agreement is not exceptional.

1. Since there is nothing else in Dr Kaczmarek’s submissions that seem to challenge the effect of the commercialisation agreement I will proceed on the basis that it forms a valid assignment of any rights Dr Kaczmarek has in the Invention IP. In relation to clause 3.2 and any Improvements I do not consider that it is significant that the purported effect of the agreement is the present assignment of future rights. If not valid as such it seems very clear that it is an attempt to assign such property for consideration and can be taken as a contract obliging the Researchers to assign those rights once they are created (see Fermiscan Pty Ltd v Veronica Jean James [2009] NSWCA 355 at [60]). In either case NSI’s entitlement under section 15 will be the same since the legislation specifically provides that a person is entitled to grant of a patent if on grant they would be entitled to have the patent assigned to them. I will now turn to the question of whether the invention subject of the present application falls within that Invention IP defined in the agreement.

Is the invention covered by the commercialisation agreement?

1. Dr Kaczmarek at page 10 of his declaration in response summarises the invention of the present application as “based on the apparatus in which I connect a well known modulation technique and a new storage phosphor (according to the first invention) for ionizing radiation detection”. He emphasises at every opportunity that this is distinct from any specific detection apparatus including that developed at UNSW which he considers to be known and non-patentable. This seems to be rather convenient semantics on the part of Dr Kaczmarek. Despite a surprising lack of detailed evidence concerning the reader developed at UNSW in 2005 I am satisfied that it was developed for and used in conjunction with the class of phosphors described in PCT/AU2005/001905 and when so used incorporated what Dr Kaczmarek himself says is the inventive concept disclosed and claimed in provisional application 2007905831. That is it applied a phosphoroscopic gated measurement technique to the new storage phosphors.

1. While I do not have expert evidence on the point it also seems probable that a person skilled in the art would find that inventive concept at least inherently disclosed in the PCT application filed in 2005. It also appears most likely that the inclusion of the reference to a gated method and phosphoroscopes at page 10 and the other additional disclosures were a direct result of the development of the reader at about the same time. I am therefore satisfied that the inventive concept was developed at UNSW prior to at least 16 December 2005 while Dr Kaczmarek was an employee of UNSW. It is not in my view significant whether Dr Kaczmarek was working in Professor Riesen’s laboratory at the time or elsewhere or whether any work was done in his “spare time”. The agreement covers improvements created “while you are an employee of UNSW”.

1. It remains to determine whether the invention is an Improvement over the inventions described in provisional application 2004907192. As indicated above the commercialisation agreement defines this as “improvements to, and developments, adaptations and enhancements of, the Inventions (patentable or otherwise)”. From this it is evident that the notion of an improvement covered by the agreement is to be understood broadly. It is also apparent that the terms of the definition should be understood in a commercial rather than technical sense given the purpose of the agreement appears to be to ensure that the commercial value of the existing and follow on research and innovation was captured. In this regard I note Lord Hoffman’s reasons in Buchanan v Alba Diagnostics Limited [2004] UKHL 5.

1. Whether the original Invention IP is taken to be the rare earth storage phosphors alone or includes the process for recording and reproducing an image it appears that a new device or process for measuring the radiation dose accumulated by those specific phosphors does constitute a development, adaptation or enhancement. It is a development, enhancement or adaptation that is directly tied to and incorporates the phosphors making them more useful or useful in a new way. As such it may have significantly enhanced the commercial value of the original Invention IP and it is perhaps not surprising that in June 2006 promotional material released by NSI highlighted the combination of the phosphors and reader as a personal radiation monitoring system. This situation can be distinguished from the case in Fermiscan Pty Ltd v Veronica Jean James, supra, where the Court of Appeal considered in light of a rather more expansive definition of “improvement” that a certain method for detecting neoplastic or neurological disorders by X-ray diffraction of skin or nail samples was an alternative to and not an improvement over a similar method using hair samples.

1. On this basis I am satisfied that under the commercialisation agreement NSI has entitlement to the invention disclosed in the provisional specification to the extent that any rights might reside with Dr Kaczmarek.

Other basis for entitlement

1. At this point it is unnecessary for me to determine whether NSI derives entitlement otherwise than through the commercialisation agreement. If alternatively and assuming an inventive contribution on his part, entitlement passed to UNSW by virtue of its employment of Dr Kaczmarek, then it seems clear that entitlement will still lie with NSI having been assigned by the university to NSI under an agreement between them made in 2007. A copy of this agreement is Exhibit RS-2 to Dr Stanley’s declaration. Similarly it would appear clear that NSI would derive entitlement from the other possible inventors. Therefore it is also unnecessary for me to determine who is or are the true inventors of the invention and I decline to make any finding on that point.

CONCLUSION

1. I have found that if Dr Kaczmarek is the or an inventor in relation to an invention disclosed in patent application 2007905831 and has retained rights to the invention despite his employment by UNSW then any entitlement he has in the invention has passed to NSI by virtue of the commercialisation agreement signed by him on 10 May 2005. I thereby declare that Dr Kaczmarek is not an eligible person in relation to the invention disclosed in the application but that NewSouth Innovations Pty Ltd is such an eligible person.

1. As indicated at the beginning of my reasons this determination has implications for those applications that claim priority from the present provisional application. In light of the outcome it appears particularly that the validity of innovation patent 2008101046 may be open to challenge on the principles enunciated in Davies Shephard Pty Ltd v Stack [2001] FCA 501. There is no statutory basis for the Commissioner to pursue this matter on her own volition however the circumstances may constitute grounds on which the innovation patent is opposed under section 101M or an order for revocation sought under section 138.

1. Pursuant to section 36(5) my decision in this matter can be appealed to the Federal Court.

COSTS

1. Costs normally follow the event and I can see no reason to depart from that practice in the present case. Consequently I award costs pursuant to schedule 8 against Dr Kaczmarek.

P M Spann
Deputy Commissioner of Patents

5 February 2010