Robert Dommett v Zebra Research Pty Ltd - [2011] APO 53

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Robert Dommett v Zebra Research Pty Ltd [2011] APO 53

Patent Application: 2010201111

Title:A system and method for undertaking market research of a target population

Patent Applicant:  Zebra Research Pty Ltd
Requestor:  Robert Dommett
Delegate:  O L Haggar
Decision Date:  12 July 2011
Hearing Date:  13 April 2011, in Canberra
Catchwords:  PATENTS - requests under sections 32 and 36 – inventorship – whether subject matter in respect of which inventorship is claimed was made publicly available before the priority date – whether there is subject matter for inventorship to subsist in – no declaration under section 32 or 36 appropriate.

Representation: Patent applicant: Matthew Ward patent attorney of Shelston IP
Requestor:Chris O’Sullivan and Siew-Lee Hew patent attorneys of
FB Rice & Co

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010201111

Title:A system and method for undertaking market research of a target population

Patent Applicant: Zebra Research Pty Ltd
Date of Decision: 12 July 2011
DECISION
The subject matter embodied by the inventive concept disclosed by patent application 2010201111 was first developed by Robert Dommett.
That subject matter was made publicly available by or with the consent of Mr Dommett before the earliest priority date of patent application 2010201111. Mr Dommett had as a result forfeited any right to inventorship.
It is therefore inappropriate to make any determination under section 32 or any declaration under section 36 in Mr Dommett’s favour.
There is no award of costs.
REASONS FOR DECISION
Background

Patent application 2010201111 (the present application) was filed on 22 March 2010 by Zebra Research Pty Ltd (the applicant) claiming priority from provisional applications 2009903646 and 2009905141 respectively filed on 4 August and 20 October 2009. The inventor of record is Katie Harris. The present application is currently undergoing examination.
On 23 June 2010, Robert Dommett (the requestor) filed requests under sections 32 and 36 for a determination of the “correct eligible person” in respect of the present application, and for a declaration that he, and not Katie Harris, is the inventor.
After an exchange of evidence in support, the requestor filed his evidence in response on 29 November 2010. On 14 December 2010, the applicant advised that it did not intend to file evidence in response, and the matter was consequently set for hearing.
The specification
The subject matter of the present application relates to a system and method for undertaking market research, and more particularly for gathering market research from online communities or online panels.
It is known to undertake market research in an attempt to gain insights into the likely demand for specific goods and/or services amongst a target population, or the level of satisfaction of existing goods and/or services that have previously been purchased by that population. Due to the expense and logistics involved in obtaining research from the entire target population, it is more usual to research only a sample or subset of the target population. The specification variously refers to the sample population…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2011] APO 53
Decision Date: 12 July 2011

CaseChat Overview and Summary

Robert Dommett brought proceedings against Zebra Research Pty Ltd, seeking a determination of inventorship in relation to a patent application. Dommett argued that he, rather than Katie Harris, the inventor named in the application, was the true inventor of the invention claimed. The dispute hinged on whether the subject matter in respect of which inventorship was claimed had been made publicly available before the priority date of the patent application. The Commissioner found that the invention had indeed been disclosed publicly before the priority date, and therefore Dommett had forfeited any right to inventorship. The Commissioner concluded that it was inappropriate to make any determination under section 32 or any declaration under section 36 in Dommett's favour. There was no award of costs.

The Commissioner examined the evidence provided by both parties, including statutory declarations and various documents. The evidence showed that the concepts behind the invention were already known in the industry and had been disclosed publicly by Dommett before the priority date. The Commissioner found that Dommett had established that he was the true inventor, but since the invention had been made publicly available before the priority date, Dommett had forfeited any right to inventorship. The Commissioner concluded that it was inappropriate to make any determination or declaration in Dommett's favour, and there was no award of costs.

Orders