Ralph G. Waters v Stratum Green Pty Ltd - [2008] APO 1

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2001211149 in the name of Stratum Green Pty Ltd

Title: Artificial surface for the growing of turf forming grasses and other plants

Action: Section 32 and 36 application by Ralph G Waters

Decision: Issued 10 January 2008.
Abstract

The evidence clearly establishes that Mr Waters worked jointly with Mr Hudson in the development of the Flexsorb product, and the decision to grow turf directly in Flexsorb. The invention described and claimed in the present application would not have occurred without the contribution of Mr Waters. Thus Mr Waters is an inventor of the present application. There is no suggestion that he has transferred his rights, and consequently he should also be an applicant. Declaration given pursuant to section 36(1) that Ralph Waters and Stratum Green are eligible persons in relation to the invention.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2001211149 by Stratum Green Pty Ltd, and an application under section 32 and 36 by Ralph G Waters

BACKGROUND

Patent application 2001211149 was originally filed as international application PCT/AU00/01295 on 20 October 2000 by Michael James Hudson. The application entered the national phase in Australia on 21 May 2003. The applicant was changed to Stratum Green Pty Ltd (hereafter referred to as Stratum Green) on 6 September 2005 as a result of an assignment, and two changes of name. On 3 October 2006 requests under sections 32 and 36 were received from Ralph G Waters, who claimed co-inventorship with Michael Hudson. Evidence stages were completed on 28 August 2007, and the matter was set for hearing. However, neither party wished to be heard and this decision is based on the evidence on file.
THE EVIDENCE
Ralph Waters’ request is supported by his own declaration and two further declarations by Sharon Ursino and Bruno Ursino. Thirteen pages of photographs and various printouts from the Stratum’s website ( and the Renaza Sports website ( are also in evidence.
Stratum Green’s evidence in chief comprises a statutory declaration by Peter Chamberlayne Dummer of Wallington Dummer Patent Attorneys (including 4 exhibits). Michael Hudson, listed on the patent request as the sole inventor, has not provided any evidence.
Mr Waters’ evidence in response consists of a letter purportedly addressing Mr Dummer’s statutory declaration. Stratum Green has elected to not provide any evidence in response. Subsequently Stratum Green provided a declaration by Robert Edgar Thomas Towner, accompanied by correspondence from the sole shareholder of Stratum Green, Mandolin Pty Ltd.
The evidence in this case is overwhelmingly provided by Mr Waters, and on all relevant points is uncontradicted. I am satisfied that Mr Waters has made out his case. However, for the record I will provide a full account of the reasons why Mr Waters is entitled to be recorded as an inventor and a co-applicant.
THE SPECIFICATION
The specification relates to an artificial surface suitable for growing turf forming grasses. In essence, the surface is a mixture of rubber, a polymer modified bitumen emulsion and slow release plant nutrient. When laid and cured, the surface is water permeable, and has air pockets through which the root system of turf forming grasses can penetrate. In this way, turf can be grown on the artificial surface.
The specification has 3 claims, the first claim being directed to an artificial surface for growing turf forming grasses, and the remaining claims being directed to a method of producing an artificial surface for growing turf forming grasses. Claim 1 reads as follows:
An artificial surface for the growing of turf forming grasses and other plants, comprising a mixture of rubber, a polymer modified bitumen emulsion and slow release, plant nutrient containing particles, mixed in sufficient proportions and to a substantially even distribution of each of the rubber, emulsion and particles throughout the mixture so that, when laid and cured, the mixture uniformly produces a water permeable, heat conductive surface having air pockets through which a root system of the turf forming grasses and other plants can penetrate, the plant nutrient containing particles being trapped within the surface for slow release of plant nutrient to the root system.
THE LAW ON INVENTORSHIP
The contribution to an invention that a person must make in order to be an inventor has been considered in a number of cases. In Row Weeder Pty Ltd v Nielsen (1997) 39 IPR 400, the hearing officer considered a number of decisions on entitlement and concluded:
"a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the final concept of the invention" [at page 405]
In assessing whether a person is an inventor, it is necessary to decide whether they contributed in a material way to the invention. The US decision of Mueller Brass Co v Reading Industries 17 USPQ 361 has often been referred to for guidance in these cases. At page 372 it is stated:
"The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law. On the one hand, it is reasonably clear that a person who merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed. To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specific component as one's sole idea, but one must be able to say that without his contribution to the final conception, it would have been less - less efficient, less simple, less economical, less something of benefit. This Court has found no case in which co- inventorship status was not deemed in some way, at least presumptively, to have beneficially affected the final concept of the claimed invention, and if such a case exists, it would be so anomalous as to warrant little attention."
This was reinforced by Crennan J in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at [132]:
"Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a person's involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants."
THE FACTS
The evidence documents the process whereby the invention and present application came into existence. Unless otherwise stated, the following facts are derived from the uncontradicted declaration of Mr Waters.
The creation of Protrak Australia Pty Ltd.
During 1994 Mr Hudson discussed with Mr Waters and Mr and Mrs Ursino the idea of developing an ‘artificial turf’ using recycled rubber. On 21 January 1995 the company Protrak Australia Pty Ltd (hereafter referred to as Protrak) was established with a view to further investigating the feasibility of this concept, and if possible taking the artificial turf through to a patent protected commercial reality. Mr Hudson was to be responsible for legal, ASIC and financial matters. Mr and Mrs Ursino were to supply start-up capital. Mr Waters was to be in charge of marketing and business strategy, while Mr Hudson and Mr Waters were to be jointly responsible for technical development. Mr and Mrs Ursino confirmed much of this, although in less detail.
Research and Development of Flexsorb
Lacking the requisite chemical and engineering expertise, Protrak pursued a strategic alliance. After consultation with managerial and technical personnel from CSR, different formulations of the proposed ‘artificial turf’ were trialed in test beds. The CSR road base division was purchased by Emoleum, who agreed to fund a co-operative venture with Protrak in exchange for laying rights within Australasia. Artificial turf formulations and laying techniques were developed and test beds were successfully laid. Following a dispute over intellectual property rights the relationship was subsequently severed. Protrak continued their own experiments without success.
A new strategic alliance with Pioneer and consultation with ReadyMix road services resulted in improved formulations being trialed at the McGrath Hill site of Pioneer. This work led to the filing of a provisional patent application on 11 April 1995, and an international application on 11 April 1996 (listing Mr Hudson as the sole inventor). This application later became patent number 712740. While not explicitly stated, it appears that this patent covers the Flexsorb product.
Shortcomings of Flexsorb
In February 1996 Protrak laid a Flexsorb crossing at Royal Randwick racetrack (using Pioneer). The first attempt resulted in large puddles in sections which caused disintegration of the rubber emulsion base. Mr Waters prepared the engineering drawings for adjustments to the drainage system. A second attempt proved to be more successful but nonetheless resulted in vehicles ripping the crossing when passing over the crest.
A major issue was that cars and horses displaced the loose rubber over-cushion resting on the Flexsorb base, and that constant re-raking was required to keep the over-cushion in place. Other shortcomings included the cost of the shredded rubber, the amount of paint required for the over-cushion, the method of painting the shredded rubber and the exposure and consequent damage to the rubber emulsion base when the shredded rubber was displaced.
Growing Turf in Flexsorb
It was decided that a better approach would be to lay turf directly over the Flexsorb base rather than use a loose rubber over-cushion. Initial trials were conducted by Mr Waters and Mr Hudson in 1996 by growing turf into a Flexsorb base contained in a car tyre and later turf was grown in large plastic trays of Flexsorb. This is confirmed by Mr and Mrs Ursino.
The trials resulted in prolific rates of growth. This was not an expected result, rather a serendipitous one. The emulsions used to bind the rubber, being rich in phosphate, were excellent fertilizers and the heat conducting, porous construction of the Flexsorb base ensured the root system could establish quickly. The phosphates would eventually leach out and it was therefore recognised that fertilizer application would be eventually required. Due to financial constraints Protrak did not lodge a patent application for this advance over the original invention.
Liquidation of Protrak Australia Pty Ltd.
In about 2000 Mr Waters informed Mr Hudson by telephone that he had found some potential investors. He was informed that the patent had been sold and could not be bought back. Mr Hudson had liquidated the company and purchased the patent from Protrak.
Mr Hudson lodged a second patent application in October 2000 (being the international application that has become 2001211149). The patent is directed to Flexsorb (and similar formulations) when combined with fertilizer, and to growing turf in these substrates. Mr Dummer declared that Mr Hudson is named as the sole inventor, and that all instructions on the prosecution of the application have been provided by Mr Hudson. The Patent Office records show that by means of assignment and name changes the application is now proceeding in the name of Stratum Green.
Mr and Mrs Ursino both declare that Mr Waters worked closely with Mr Hudson in the development of this product: “Ralph Waters worked with [sic] closely with Michael Hudson over the five year period and was jointly responsible for all products which resulted” [declaration of Sharon Ursino].
DECISION
The evidence clearly establishes that Mr Waters worked jointly with Mr Hudson in the development of the Flexsorb product, and the decision to grow turf directly in Flexsorb. It is not clear to me who recognised the desirability of incorporating fertilizer into the Flexsorb substrate, but this is not necessary in order to decide this matter. It is beyond doubt that the invention described and claimed in the present application would not have occurred without the contribution of Mr Waters. While the details of the contribution of Mr Hudson are less clear, his role as an inventor has not been disputed by any of the declarants.
I am satisfied that Mr Waters is an inventor of the present invention. There is no suggestion that he has transferred his rights, and consequently he should also be an applicant. I note that the records of this case indicate that Mr Hudson assigned his interest to Stratum Green. Consequently, Mr Waters and Stratum Green are entitled to be co-applicants. Pursuant to section 36(1), I declare that Ralph Waters and Stratum Green are eligible persons in relation to the invention.
I note that the present application has lapsed (under section 142(2)(e)) due to failure to gain acceptance within 21 months of the date of the first examination report. Consequently, there is no direction that is relevant to the application. Should the application be restored, Mr Waters can request a direction that the application proceeds in the name of Ralph Waters and Stratum Green.
I also draw the parties’ attention to section 36(4), whereby a new complete application can be made by declared persons within 3 months (see regulation 3.8).
Costs
There are no submissions in relation to costs. I note that Mr Waters has been totally successful and his evidence has not been challenged. It is appropriate for costs to follow the event, and I award costs against Stratum Green Pty Ltd.
Dr S.D.Barker
Delegate of the Commissioner of Patents
10 January 2008
Patent attorneys for the patent applicant : Wallington-Dummer