Romteck Australia Pty Ltd. v Philip Victor Harman
[2022] APO 58
•15 August 2022
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Romteck Australia Pty Ltd. v Philip Victor Harman [2022] APO 58
Patent:2020101363
Title:Alarm Signalling Equipment Secure Access Method
Patentee:Philip Victor Harman
Requestor:Romteck Australia Pty Ltd.
Delegate:B. Norman
Decision Date: 15 August 2022
Hearing Date: Written submissions filed on 5 May 2021, 6 May 2021 and 19 May 2021
Catchwords: PATENTS - Request for rectification of Register under s191A – inventive concept – conception – request dismissed – costs awarded.
Representation: Patent attorney for the Patentee: Griffith Hack
Counsel for the Requestor: David Larish and Joseph Elks
Patent attorney for the Requestor: Foundry Intellectual Property Pty Ltd
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2020101363
Title:Alarm Signalling Equipment Secure Access Method
Patentee:Philip Victor Harman
Date of Decision: 15 August 2022
DECISION
The entitlement to patent 2020101363 is properly recorded on the Register. The request for rectification of the Register is dismissed. I award costs according to Schedule 8 against Romteck Australia Pty Ltd.
REASONS FOR DECISION
Background
Philip Victor Harman (“the Patentee”) filed an innovation patent application 2020101363 on 14 July 2020 and this proceeded to grant on 5 August 2020. I will refer to the granted patent hereinafter as the “Patent”. The patent claims divisional status to Innovation Patent 2019101434 (“the Parent”).
The Parent was filed by the Patentee on the 21 November 2019. However, the parent ceased on 24 July 2020 due to failure to gain certification after three adverse examination reports.
The claims on file are identical to amendments proposed for the Parent on 1 July 2020 and subsequently objected to in the 2nd examination report on the Parent.
Romteck Australia Pty Ltd (“the Requestor”) applied on 09 September 2020 seeking rectification of the Register of Patents, pursuant to s191A(2), to name the Requestor as the sole patentee of the Patent (the “request”). The Requestor also laid out the grounds for, and supplied evidence in support of, that request.
The Patentee wrote to the Commissioner on the 6 October 2020 to indicate their intent to defend their entitlement.
A delegate of the Commissioner of Patents made directions on the 26 October 2020 providing the Patentee with two months, from the making of the proposed direction, to file evidence in answer to the evidence in support, and the Requestor one month, from the conclusion of evidence in answer period, to file any evidence in reply to the evidence in answer. The Patentee filed evidence in answer on the 12 January 2021. The Requestor completed their evidence in reply on 15 February 2021.
The parties were invited on the 18 February 2021 to elect the mode by which they would be heard. While the Patentee indicated their preference for written submissions and the Requestor indicated a preference for an oral hearing, the hearing ultimately went ahead on the basis of written submissions.
The Requestor filed a third-party examination request on the 9 March 2021, and further requested that examination be completed prior to the hearing the request. However, a delegate of the Commissioner advised the parties, on 11 March 2021, that he declined to stay hearing the request pending examination of the Patent. In the same letter, the delegate proposed directions for the parties to each make their written hearing submissions in support of their entitlement to the patent within four weeks, and written submissions in answer to the other party’s submissions in support in the subsequent two weeks after filing of the submissions in support.
The Requestor filed their submissions in support (“the RSIS”) on 4 May 2021, and the Patentee filed their submissions in support (“the PSIS”) on 5 May 2021. However, the PSIS was accompanied by new evidence in the form of declarations, and a request for the Commissioner to consider them under Regulation 5.23 of the Patents Regulations 1991 (Cth) (“the Reg 5.23”) as amended on 15 April 2013 by the Intellectual Property Legislation Amended (Raising the Bar) Regulations 2013 (No1). .
The Requestor wrote to the Commissioner asking for clarification as to whether the new evidence would be considered. Subsequently, the agent for the Requestor called and spoke to a delegate of the Commissioner, who explained that principles analogous to Reg 5.23 would be followed and this would mean that the Requestor would be given an opportunity to respond with evidence and/or submissions to the new material if it was to be formally introduced by the Commissioner. The delegate also indicated that there was therefore no need to respond in detail to the new material as part of the submissions in answer.
The Requestor filed their submissions in answer on the 19 May 2021. The Patentee did not file any submissions in answer.
An adverse examination report was issued on the 28 June 2021, with objections raised on the basis of lack of manner of manufacture and a lack of novelty.
The Innovation Patent has since ceased due to failure to gain certification within the prescribed time.
The Evidence
The Requestor filed evidence in support from Mr Randall Joseph, a General Manager of the Requestor. The evidence comprised a declaration dated 4 September 2020 (“1st Joseph Declaration”) and annexes RJ-001 through RJ-009 which were:
RJ-001 – a copy of an employment contract and Deed of Confidentiality between the Patentee and the Requestor dated 5 December 2014
RJ-002 – a copy of Undertakings between the Patentee and the Requestor signed 7 March 2019
RJ-003 – a screenshot of a FIREMON Database
RJ-004 – a screenshot of an email sent 18 December 2017 to the Patentee concerning the FIREMON mobile device application
RJ-005 – photos of a QR code on an alarm signalling equipment (“ASE”) box
RJ-006 – a screenshot of a dialog in Configuration tool of the Requestor’s software.
RJ-007 – an ASE maintenance page explaining the dialog of RJ-006
RJ-008 – emails discussing 2FA sent on 8 January 2019 with the Patentee cc’d in.
RJ-009 – a commercial invoice for fire alarm transmission equipment dated 26 November 2018
Patentee’s evidence in answer
The Patentee filed evidence in answer from Mr Phillip Harman in the form of a declaration dated 17 December 2020 (“Harman Declaration”) with annexes PVH-1 through PVH-3, Mr Peter Leader (“Leader Declaration”) in the form of a declaration dated 17 December 2020 with annexes PL-1 through PL-3, and from Mr Michael Lindroos in the form of a declaration dated 17 December 2020 (“Lindroos Declaration”). The annexes were:
·PVH-1 - Wikipedia page explaining the ‘Touch Key’ technology, downloaded on 16 December 2020.
·PVH-2 Document from the Airservices Australia web site with explanation of the requirement to use a Touch Key
·PVH-3 - Image of a QR code on a cellular modem
·PL-1 QR code label adhered to the underside exterior of a Romteck ASE device casing
·PL-2 Photo of a Touch Key (Dallas iButton)
·PL-3 Section 7.1.1. from Air Services Australia ASE Equipment Installation Checklist.
Requestor’s evidence in reply
The Requestor filed evidence in reply from the same Mr Randall Joseph who provided evidence in support, and Mr Barry Andrews, a senior engineer working for the Requestor. The new evidence comprised of declarations from Mr Randall Joseph dated 12 February 2021 (“2nd Joseph Declaration”) and from Mr Barry Andrews dated 13 February 2021 (“Andrews Declaration”). The annexes accompanying these declarations are BA-1 through BA-3, and RJ2-1 through RJ2-3 which were:
·BA-1 – Email from Trevor Vandreike to Barry Andrews sent 26 September 2013
·BA-2 – Email communication between Panasonic and Barry Andrews between 1 and 8 January 2014
·BA-3 – Martin Louis email to Barry Andrews and the Patentee sent 8 March 2018
·BA-4 – GIT History, covering 8 November to 5 December 2018
·BA-5– QR code on-screen display
·RJ2-1 a Certificate of Conformity from CSIRO for the RM3119 Series ASE dated 22 December 2020
·RJ2-2 a higher quality copy of the 1st Joseph Declaration and its exhibits RJ-001 to RJ-009.
·RJ2-3 a copy of email correspondence between Mr Harman and Mr Mohiddin Al Balaa on 18 December 2017.
The Patentee’s Evidence under Reg 5.2.3
The new evidence that accompanied the Patentee’s submissions in support were two new declarations by Mr Steven Ronald Merralls and Mr Tony Porter both dated 8 April 2021.
The Specification
The Patent is directed to alarm signalling equipment (“ASE”) or alarm transmission equipment (“ATE”), which is a self-contained electronic device that can receive alarm signals and communicate them elsewhere. This device is used to interface the fire detection and sprinkler systems in a building (e.g the fire indicator panels) with remote monitoring systems (e.g for alerting emergency services). The configuration of these devices is paramount to their operation, and, as such, it is necessary to access these devices securely to view the configuration and possibly reconfigure them. Different levels of access are required to these devices to comply with the Australian Standards.
Whilst an ASE can be reconfigured when it is connected to a central, or building, monitoring system; until the ASE is connected it will need to be directly accessed in order to configure it so as to allow the aforementioned connection. This creates a requirement for ASEs that can be accessed by only those authorised to do so at an appropriate level. Thus, there is need in the art for secure access to an ASE.
The specification makes it clear that means of securely accessing ASEs are known in the art, and indeed are required as per the relevant Australian standard. A number of such secure access means are discussed, such as the use of a mechanical key, inputting of a PIN on a keyboard located on, or adjacent to, the ASE; insertion of a USB drive into a port on the ASE, with data read and providing access if verified; and touching of a one wire memory device, which provides for a unique digital key.
It is noted that there are a number of security issues with the known methods of secure access. The use of mechanical keys, USBs, or one wire memory device can be simply passed from user to user, or stored near the ASE. A PIN or code can also be passed from user to user or simply written on or nearby the ASE.
The specification addresses these issues by providing a system and method of accessing an ASE that allows for different levels of access based on information about the user stored in a database. This is achieved using a device that can scan the unique identifier of an ASE and consult a database to determine if the user is allowed the level of access requested.
The preferred embodiment of this method is best illustrated by the process flow diagrams depicted in Figure 4:
This embodiment depicts a process flow diagram of how a user accesses an ASE. The ASE is able to display the unique identifier itself. A software application running on a wireless communication device is used to scan a QR code with the unique identifier. This application sends the unique identifier and user registration date to a database and determines whether access is permitted. If permitted, a configuration update is sent to the ASE to allow access by the user using the wireless device.
The specification ends with five claims. The first and only independent claim broadly covers the invention as disclosed:
1. A method of securely accessing an Alarm Signalling Equipment (ASE), the method comprising:
providing information indicative of a unique ASE identifier associated with the ASE; storing the unique ASE identifier in a database;
providing a wireless communication enabled user device having a software application usable to access the ASE, the software application having associated user identification information indicative of a user of the user device, the software application arranged to obtain the unique ASE identifier by scanning the information indicative of the unique ASE identifier in response to user instruction;
storing in the database user identification information indicative of one or more users authorised to access the ASE;
using the software application to obtain the unique ASE identifier by scanning the information indicative of the unique ASE identifier;
comparing the obtained unique ASE identifier and the user identification information
associated with the software application with the stored unique ASE identifier and the stored user identification information;
allowing the software application to access the ASE if the user is authorised to access the ASE; and
if access is allowed, using the software application to view and/or modify configuration information of the accessed ASE.
The appended claims further define the invention by limiting to optional features, specifically to how the unique ASE identifier is physically associated with ASE, whether it is encrypted and the ability to set a level of access:
2. A method as claimed in claim 1, comprising storing the level of access available to each authorised user, and providing the user with a level of access to the ASE based on the stored level of access.
3. The method of claim 1 or claim 2, wherein the unique ASE identifier is contained in a QR code or barcode that is displayed on a display of the ASE.
4. The method of claim 1 or claim 2, wherein the unique ASE identification is contained in a QR or barcode that is attached to the ASE.
5. The method of any one of the preceding claims, wherein the information indicative of the unique ASE identifier is encrypted to prevent being read than by other than the software application.
Applicable Law
Subsections 191A(2) and Subsections 191A(3) of the Patents Act 1990 (“the Act) are applicable and are in the following terms.
2) The Commissioner must, on application, make a declaration as to a person’s entitlement to a patent, or a share in a patent, if the Commissioner is satisfied, on the balance of probabilities, that the Register does not properly record a person’s entitlement to a patent, or a share in a patent:
a)because the patent, or a share in the patent, was granted to a person who was not entitled to it; or
b)because the patent, or a share in the patent, was not granted to a person who was entitled to it; or
c)for any other reason.
3) If the Commissioner makes a declaration under subsection (2), the Commissioner must rectify the Register accordingly.
With respect determining who is entitled to the grant of patent, this is defined in the Act at Subsection 15(1). Subsection 15(1) provides that a patent may only be granted to a person who:
a)is the inventor; or
b)would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
c)derives title to the invention from the inventor or a person mentioned in paragraph (b); or
d)is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
In Commissioner of Patents v Thaler [2022] FCAFC (“Thaler”) at [107], the court affirmed the principles of Stack v Davies Shephard Pty Ltd [2001] FCA 501 (“Stack”):
“On a natural reading of s 15(1), each of ss 15(1)(b), (c) and (d) provide for circumstances where a person becomes entitled to the grant of a patent by ultimately receiving that entitlement from the inventor in s 15(1)(a). Put another way, there must be a legal relationship between the actual inventor and the person first entitled to the grant. That was the construction adopted by the Full Court in Stack which, after reviewing many of the historical matters to which we refer above, concluded at [21] that “[a] patent may only be granted to the inventor or somebody claiming through the inventor”, a proposition with which we respectfully agree. Such a construction is also consistent with the broad statement as to the intended effect of s 15 provided in the Explanatory Memorandum (see [99] above).”
Accordingly, the primary person to whom a patent may be granted is the inventor. All other persons may derive title to the patent, and the invention claimed therein, via the inventor. Therefore, it follows it is necessary to determine who are the correct inventor(s) of a patent.
In University of Western Australia v Gray (No 20) [2008] FCA 498 (“Gray”), French J commented, at [1426], “that the inventive concept marks a boundary between invention and verification”. French J then referred to the US Court of Appeals Federal Circuit decision, Burroughs Wellcome Co v Barr Laboratories Inc [1994] USCAFED 1125, (1994) 40 F.3d 1223. He stated that this decision set out the following principles, amongst others, as established by US appellate courts:
“Conception is the touchstone of inventorship, the completion of the mental part of inventions.
Conception is the ‘formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice’. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.”
On appeal, the Full Court of the Federal Court, in University of Western Australia v Gray [2009] FCAFC 116, did not appear to disturb French J’s position on the above points. The Full Court, at [253] to [257], also appeared to accept the following steps accepted as appropriate by the primary judge at [1442] of the primary decision:
“1. Identify the “inventive concept” of each relevant invention as defined by the claims;
2. Determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice; and
3. Determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.”
In JMVB Enterprises Pty Ltd v Camoflag Pty Ltd, [2005] FCA 1474, (2005) 67 IPR 68 (“JMVB”), Crennan J stated as follows at [132]:
“Rights in an invention are determined by objectively assessing contributions to the invention, rather than an assessment of the inventiveness of respective contributions. If the final concept of the invention would not have come about without a particular person’s involvement, then that person has entitlement to the invention. One must have regard to the invention as a whole, as well as the component parts and the relationship between the participants. The fact that the parties were in collaboration can be a major consideration.”
This aspect of Crennan J’s decision was not considered on appeal, which was dismissed: JMVB Enterprises Pty Ltd (formerly A’Van Campers Pty Ltd) v Camoflag Pty Ltd, [2006] FCAFC 141 (“JMVD”). The passage was cited with apparent approval by the Full Court of the Federal Court in Polwood Pty Ltd v Foxworth Pty Ltd, [2008] FCAFC 9 (“Polwood”) at [53]. Furthermore, in Polwood, at [33] - [35], it was stated (emphasis in original):
“The entitlement to the grant of a patent as the inventor is not determined by quantitative contribution. The role of joint inventors does not have to be equal; it is qualitative rather than quantitative. It may involve joint contribution or independent contributions. The issue is whether the contribution was to the invention. What constitutes the invention can be determined from the particular patent specification which includes the claims. In some cases, evidence can assist. In some cases, the reduction of a concept to a working apparatus by a person may not be part of the invention, in other cases it may be. For example, the construction of an apparatus may involve no more than carrying out the instructions in the specification. This would not normally entitle that person to joint inventorship. On the other hand joint inventorship may arise where the invention is in the apparatus itself, or where the person constructing the apparatus contributed to a different or better working of it which is then described and claimed.
One criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention. It may be that an invention is made as part of a collaborative effort. In those circumstances, it would ordinarily follow that the collaborators are joint inventors of the product of the collaboration. ...
To ascertain the inventor for the purposes of entitlement to the grant of the patent it is therefore necessary to determine the contributions to the invention described in the patent application. The claims may assist in that determination, bearing in mind that the claims may be to less than the totality of the invention. It may also be appropriate to investigate the contributions to the inventive steps giving rise to the invention.”
The inventive concept or “heart” of the invention is to be determined from the specification, including, but not limited to, the claims, as indicated by Polwood 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.”
Regulation 5.23 Request and Regulation 22.24
The applicability of Regulation 5.23 to matters of this type was considered by the delegate in Mine Site Technologies Pty Ltd v R F Industries Pty Limited [2021] APO 21. There it was stated at [48]-[50]:
48. Regulation 5.23 enables the Commissioner of Patents to consult a document that is relevant to an opposition, has not been filed in evidence and is available in the Patent Office. Since the present matter is not strictly an opposition, regulation 22.24 is appropriate in these circumstances. The latter regulation enables the Commissioner to determine the practice and procedure to be followed for the purposes of enabling an application or matter to be decided that is not an opposition. This includes the filing of evidence.
49. In Andrew Bodlovich and Kevin Gleeson v Green Camel Pty Limited, [2021] APO 6, the delegate noted, at [7], that the regulatory basis for extensions of time in filing evidence in section 36 proceedings was previously considered in ERG R&D Pty Ltd v Octopus Cards Limited (“ERG”), [2006] APO 21. At [14] of the ERG decision, the delegate indicated that the Commissioner’s power to determine the practice and procedure under sections 32 and 36 derived from regulation 22.24. Moreover, the delegate considered, at [16], that this discretion was similar to that provided under the extension of time provisions for filing evidence in oppositions under then regulation 5.10.
50. The legal principles pertaining to allowing extensions of time for filing evidence in opposition proceedings, now regulation 5.9, are well-documented. Similarly, the principles pertaining to the invoking of regulation 5.23 for considering documents filed outside the normal evidentiary periods in oppositions are well-documented. It follows that those principles provide appropriate guidance for the exercise of discretion under regulation 22.24.
I agree with the reasoning of the delegate, and can see no reason to not follow the same approach in the present matter.
As mentioned earlier, during the period for submissions in support, the Patentee filed additional evidence in the form of two declarations. Similarly, as mentioned earlier, the Requestor expressed concern about being unable to address this new evidence in their submission.
It follows that if I am satisfied the Patentee is entitled to the grant of the patent based on the existing evidence already filed, this new evidence would likely serve no purpose. As such, I will defer my consideration of any new evidence until after I have considered the material filed during the ordinary evidentiary period, to see if this would have any material impact on any decision I should wish to make.
What is the Inventive Concept?
Notwithstanding the submissions about the inventive concept provided by the Requestor and the Patentee, when I turn to the specification as whole, discussed at [18]–[24] above, I consider that the inventive concept comprises:
i) a method of providing secure access to an ASE via a wireless device running a software application that has user identification associated with it,
ii) the software application is able to scan an ASE identifier so as allow comparison of the unique ASE identifier and user identification in a data base outlining user identifications authorised to access an ASE, and
iii) allowing access to the ASE via the wireless device if the user if the user is so authorised.
It is also important to distinguish that the inventive concept does not lie in the functions of the ASE itself.
When Was Inventive Concept Conceived?
The question of when the inventive concept was conceived would appear to be where the contention lies between parties, as outlined in their submissions.
As can be expected, the Patentee’s submission is that the inventive concept was not conceived during the Mr Harman’s employment with the Requestor. They submit that the inventive concept was conceived at around the 15 October 2019.
The Requestor’s submissions with respect to the time of conception are twofold. Firstly, they submit that the inventive concept is embodied by the Requestor’s software used for configuring the ASEs, namely the FIREMON software, which was in use during Mr Harman’s employment at the Requestor. Secondly, they submit that if the inventive concept is not embodied by FIREMON then the inventive concept was sufficiently conceived and developed at least in prototype form before February 2019, including: using a wireless communication device to access and/or configure the ASE; use of a mobile application on such device; and secure remote access to the ASE[1].
[1] Paragraph 55 of Requestor’s Submissions in Support
The evidence submitted by both parties describes the Requestor’s software and its features. From the evidence I am able to discern three different softwares used by the Requestor during Mr Haman’s employment that were relevant to my considerations. I will consider these below.
The word “FIREMON” has been used by Mr Andrews, Mr Harman and Mr Joseph to describe both the software operating the central monitoring system[2] (“FIREMON system”) and the client software (“FIREMON client”)[3] used to access the monitoring system and thus the ASE. Similarly, “ASEMaintenance” is used Mr Andrews and Mr Harman, to refer to client software which is used for the initial setup and configuration of an ASE[4] prior to connection to the FIREMON system.
[2] Paragraph 15 of the Andrews Declaration
[3] Paragraph 20 of the Andrews Declaration
[4] Paragraph 27 of the Andrews Declaration
An issue that arose in the evidence is that in Mr Joseph’s evidence he refers to the ASEMaintenance[5] software as ‘FIREMON’[6]. Whereas both Mr Andrews’ evidence[7] and Mr Harman’s evidence[8] distinguishes ASEMaintenance and the FIREMON client softwares as being for separate purposes with separate functionality.
[5] RJ-006 & RJ-007 of the Requestor’s Evidence in Support.
[6] Paragraph 11 of the 1st Joseph Declaration
[7] Paragraph 27 of the Andrews Declaration
[8] Paragraph 12, 13, 21, 28 & 29, 34-35 of the Harman Declaration
To clarify this, it should be recognised that the FIREMON system is a server which handles a number of functions centred around monitoring and configuring individual ASEs connected to the system. While there is limited evidence with respect to the FIREMON client software, it appears that the FIREMON client software provides a secure access to the FIREMON system via a username and password, and is a web-based interface for accessing the functionalities of the system run on a Windows laptop. [9] The FIREMON client software permits configuration of an ASE once it has been connected to the monitoring centre or the FIREMON system, via the FIREMON server. That is, the FIREMON client softwarre is not accessing the ASE but the FIREMON system, the latter of which in turn accesses the ASE. This requires the ASE to be already connected to the monitoring system. The FIREMON system database determines which ASE can be accessed by the client software. As such, the software does not compare any obtained identification with stored identification
[9] Paragraph 21 of the Harman Declaration
The FIREMON software as described on the Requestor’s website[10], as referenced by Mr Joseph in the 2nd Joseph Declaration, would appear to me as being used to monitor the Requestor’s ASE. I have therefore inferred this as a reference to the FIREMON system and not the FIREMON client software.
[10] >
The ASEMaintenance software is used to directly access the ASE, as required when an ASE is installed. With respect to ASEMaintenance’s ability to access an ASE, it has two modes: Express Mode and Unrestricted Mode. The former is a default mode for installers limited to changing inputs and addresses, whilst the latter allows full maintenance functions. Access to the latter is via a licence key provided by the Requestor based on a Serial Number and Installation Identifier, which can then be entered into the system configuration form via the setup menu option. The ASEMaintenance software appears to be a Windows based program[11]. It is not apparent whether the licence key is validated online or by a security algorithm within the software itself. Whilst this could amount to secure access, this means it is not clear if this validation involves comparison of the licence key with the unique ASE identifiers and user identifications stored in a data base (outlining those user identifications authorised to access an ASE). However, nothing turns on this as I will now discuss.
[11] RJ-006 and RJ-007 of the Requestor’s Evidence in Support
From the evidence, it is clear that neither of ASEMaintenance or the FIREMON client softwares has a capacity to scan information through the user device. There is no secure access via an application on a wireless device to the ASE, further substantiated by evidence that the Requestor’s ASE RM3318 utilised an electronic touch key and FIREMON system to securely access the ASE as late as 04 November 2019[12][13]. Similarly, the FIREMON system does not scan unique identifiers as well.
[12] Page 9 of PVH-2 of the Patentee’s Evidence in Answer
I am not satisfied that either of the FIREMON client or the ASEMaintenance client softwares embody the inventive concept, as both clients would appear to lack the ability to scan information that uniquely identifies the ASE. Similarly, the FIREMON system also lacks this ability. Consequently, I cannot conclude that Mr Harman gleaned the inventive concept from any of the various software systems put forward by the Requestor as embodying the inventive concept.
It follows that my consideration must now be whether Mr Harman conceived the inventive concept whilst in the employment of the Requestor. As a starting point, it is worthwhile considering a timeline of the events as presented by the evidence during the period of Mr Harman’s employment.
Some key events identified by the parties and presented as evidence, are summarised in chronological order.
Prior to 2013 Mr Harman commences with Romteck Pty Ltd.[14]
[14]Paragraph 5 of the Harman Declaration
26 September 2013 emails between Mr Andrews and Mr Vandreike regarding development of RM3188[15]
[15] BA-1 of the Requestor’s Evidence in Reply.
8 January 2014 emails between Panasonic and Mr Andrews regarding Bluetooth (‘BT’) and Bluetooth Low Energy (‘BLE’) on RM3188[16]
[16] BA-2 of the Requestor’s Evidence in Reply
19 May 2014 Mr Leader commences with Romteck Australia Pty Ltd[17]
[17] Paragraph 4 of the Leader Declaration.
10 December 2014 Mr Harman commences as General Manager of Romteck Australia Pty Ltd[18]
[18] RJ-001 of the Requestor’s Evidence in Support.
18 December 2017 Email exchange between Mr Mohiddin Al Balaa and Mr Harman discussing ATE capability[19]
8 March 2018 Email from Mr Louis to Mr Andrews and Mr Harman on ESP32 programming (a type of microcontroller)[20]
August 2018 Mr Lindroos commences with Romteck Australia Pty Ltd[21]
26 November 2018 Invoice for RM3118 ATE & RM4118ATE from Romteck Australia Pty Ltd[22]
8 January 2019 Emails between Paul Adams and Ben Aylett regarding 2FA.[23]
25 February 2019 Mr Harman leaves Romteck Australia Pty Ltd[24]
May 2019 Mr Lindroos leaves Romteck Australia Pty Ltd[25]
14 May 2019 Mr Leader leaves Romteck Australia Pty Ltd[26]
15 October 2019 Mr Harman claims to have started developing the invention[27]
21 November 2019 Mr Harman files parent application 2019101434
[19] RJ-004 of the Requestor’s Evidence in Support and RJ2-3 the Requestor’s Evidence in Answer.
[20] BA-3 of the Requestor’s Evidence in Reply.
[21] Paragraph 3 of the Lindroos Declaration
[22] RJ-009 of the Requestor’s Evidence in Support
[23] RJ-008 of the Requestor’s Evidence in Support
[24] Paragraph 5 of the 1st Joseph Declaration.
[25] Paragraph 3 of the Lindroos Declaration
[26] Paragraph 4 of the Leader Declaration
[27] Paragraph 14 of the Harman Declaration
The Requestor submits that the emails regarding the RM3188 in 2013 & 2014 is evidence that the that ASE was “designed to be able to allow ASE configuration via WiFi and/or Bluetooth at some future time”[28][29]. I strongly disagree with this submission. Firstly, Mr Vandreike refers to the intention of these features “Mainly for diagnostics…”[30]. I do not consider that diagnostics of an ASE is the same as the configuration of an ASE, as the former requires only the reading of information from the ASE whereas the latter requires the ability to send information back and update the ASE. Similarly I could find no evidence of any ‘phone app’ as suggested by Mr Vandreike, being developed by the Requestor, allowing scanning of a unique identifier of the ASE.
[28] Paragraph 60 of the Requestors Submissions in Support
[30] BA-1 of the Requestor’s Evidence in Reply.
Furthermore, with respect to the emails between Mr Mohiddin Al Balaa and Mr Harman, whilst there is discussion of phone (a wireless device) software, there is no suggestion of scanning unique identifiers. I note that the preferred method of selection is the Building Maintenance Systems (BMS) via a drop-down menu. [31]
[31] RJ-004 of the Requestor’s Evidence in Support and RJ2-3 the Requestor’s Evidence in Reply.
Moreover, whilst the email from Mr Louis to Mr Andrews and Mr Harman on ESP32 programming might suggest that Mr Harman was aware of wireless protocol for communicating with an ASE[32], there is no discussion regarding scanning a unique identifier of the ASE for secure access. [33]
[32] Paragraph 20 of the Andrews Declaration
[33] BA-3 of the Requestor’s Evidence in Reply.
Similarly, the email between Paul Adams and Ben Aylett regarding 2FA is not provided with any context, such that it is not clear if it even pertains to an ASE[34]. Mr Harman explains this was in response to a question about how ‘Google Authenticator works’[35]. I can find no further evidence disputing this.
[34] RJ-008 of the Requestor’s Evidence in Support
[35] Paragraph 39 of the Harman Declaration
Mr Joseph initially provided evidence of wireless devices scanning a QR code on an ASE[36], explaining that is a unique identification number[37]. He also states that FIREMON was configured before the priority date of the application to receive a unique identifier assigned to an ASE from a QR code on the ASE itself, scanned by a mobile phone. The evidence depicts a photograph of an ASE with physical label attached to the bottom of an ASE, which I note is almost identical in format with the label depicted by the Patentee’s evidence[38]. However, I also recognise what is a touch key reader present on the ASE to the right of a display LCD. This photograph from RJ-005 is reproduced below:
[36] RJ-005 of the Requestor’s Evidence in Support
[37] Paragraph 14 of the 1st Joseph Declaration
[38] PL-01of the Patentees Evidence in Answer
Firstly, it is important that my consideration at this stage is not as to what was done by the Requestor before the priority date, which would be more relevant for considering the validity of the Patent once Certified. My consideration is directed to what was being done during Mr Harman’s employment with the Requestor. Mr Joseph’s evidence regarding the Requestor’s software would appear to differ from the other evidence, including the Requestor’s evidence from Mr Andrews.
Mr Linderoos explains that during his employment with the Requestor the QR code was a label that encoded a modem IMEI number, which was scanned by laser device for inventory purposes, to track the IMEI as well as the date and firmware version of the ASE[39]. Mr Leader also notes that the QR code label was for a ‘manufacturing user database’[40]. Mr Andrews explains that the QR code label was used for tracking either the serial number or MAC address of the ASE[41]. However, Mr Andrews also explains that such QR codes are well known and open source[42]. Mr Andrews also notes that the ability to display a QR code on the ASE was not implemented until after Mr Harman left the employment of the Requestor[43].
[39] Paragraph 3 of the Lindroos Declaration
[40] Paragraph 10 of the Leader Declaration
[41] Paragraph 24 of the Andrews Declaration.
[42] Paragraph 70 of the Andrews Declaration.
[43] Paragraph 63 of the Andrews Declaration.
In light of the above evidence, it would be surprising to me that the QR code played a role in secure access to the ASE when it clearly has a Touch Key reader on the ASE itself, and, in light of the evidence listed above, the QR code would appear to be used for inventory and other purposes unrelated to gaining secure access to the ASE. Similarly, from the evidence it appears that secure access on the panel of an ASE is achieved via the Touch Key[44] for an ASE connected to the FIREMON system by allowing the ASE to determine whether the TouchKey has access for the ASE. [45] This is different to comparing a unique identifier and user identification in a database to determine if the user can access the device. The Touch Key enables access by the panel of the ASE, not any software[46]. I
[44] Paragraph 9 of the Leader Declaration, PVH-1 of the Patentee’s Evidence in answer
[45] Paragraph 10 of the Harman Declaration and PVH-2 of the Patentee’s Evidence in Answer
[46] Paragraph 8 of the Lindroos Declaration
The ASEMaintenance software offers secure access to an ASE via a wireless device (using a direct connection), there is no evidence that this secure access is by consulting a database to determine whether a user has access to the ASE, or by scanning a unique code on, or associated with, the ASE.
The FIREMON client again offers secure access to the FIREMON system, which in turn offers access to the ASE. It would also appear that it could be used on a wireless device. However, I could find no evidence of the FIREMON client comparing any obtained ASE identifier with a stored ASE identifier, or by scanning a unique code.
There is no evidence of this scanning feature being included in any of the Requestor’s software or it being contemplated as an addition during Mr Harman’s employment with the Requestor. Nor can I find evidence of something closely resembling the inventive concept. At best there are some discrete concepts, such as wireless access to an ASE, that were discussed while Mr Harman was employed by the Requestor, but nothing to suggest that he, or anyone else, arrived at the complete inventive concept, as I have outlined it above, prior to 15 October 2019. Given that the Requestor’s evidence of the alleged features of the inventive concept, as the Requestor sees it, is spread across five years, this makes it more unlikely that Mr Harman arrived at the inventive concept during his time of employment by the Requestor from disparate concepts he was exposed to while employed by the Requestor.
When I consider the evidence as a whole, I cannot be satisfied on the balance of probabilities that the conception of the inventive concept occurred whilst Mr Harman was being employed by the Requestor. Consequently, there is nothing to disturb Mr Harman’s evidence that he conceived of the inventive concept after he left the employ of the Requestor, and I have otherwise no reason to doubt Mr Harman’s evidence. It follows that I conclude that the conception of the inventive concept occurred after Mr Harman ceased employment with the Requestor.
Who Was Responsible For The Inventive Concept?
The Patentee submits that Mr Harman was responsible for the conceiving the inventive concept. The Requestor’s submissions[47] are not as clear, and are directed more to when it was conceived and thus entitlement by virtue of Mr Harman’s period of employment by the Requestor. Whilst submitting that Mr Harman may have conceived the concept, the Requestor also submits that the inventive concept may have been conceived by other Romteck employees during that same period. However, the Requestor does not put forward who these other employees are, nor is there any evidence to suggest that anyone other than Mr Harman was the inventor. The Requestor has placed emphasis on its software being an embodiment of the inventive concept, but, as discussed above, this does not embody the inventive concept, and, in any case, I could find no evidence directed to who originally developed this software.
[47] Paragraph 7 of Requestor’s Submissions in Support
I have already concluded that the inventive concept conceived by Mr Harman occurred after his employment with Requestor. I consider Mr Harman to be the sole inventor.
Who Was Entitled To The Inventive Concept?
Even if Mr Harman has conceived the inventive concept after termination of his employment, I must consider whether there are any contractual terms that affect who is entitled to the Patent.
RJ-001 is a deed of confidentiality between Mr Harman and his employer. I note that Item 4 states that any ideas or inventions by the employee during pursuit of their employment belongs to the Employer. Similarly, Item 5 provides that the contract is still binding after termination, and that, with respect to trade secrets, the employee has a continuing duty to not reveal them until they become public knowledge. Mr Harman does not dispute this was the contract of his employment.
RJ-002 is a letter outlining Mr Harman’s continuing obligation to the Requestor on subsequent termination. Of note there is the proverbial requirement to not contact clients of the Requestor, and not use or disclose information obtained as an employee to gain advantage. I can see nothing precluding the filing of IP rights for inventions developed or conceived after leaving the Requestor’s employment.
Requestor submitted that inventive concept was either already commercialised by them prior to Mr Harman’s departure in February 2019, or was sufficiently conceived and developed at least in prototype form[48]. I note that the Requestor’s formulation of the inventive concept is rather broader than mine, so the Requestor’s comments here should be understood in that light. I have already determined above that none of the commercialised software by the requestor embody the inventive concept as I had determined it to be. The question remains whether any of the Requestor’s prototypes or software provided information to Mr Harman that could only be a result of his employment with the Requestor. My attention was drawn to an ESP32 ASE prototype, which had wireless and BT capability.[49]. However, Mr Andrew also states that a number of ASE models previously commercialised by the Requestor were configured wirelessly from the monitoring centre, so I do not follow why this prototype is significant. As I have previously stated above, the inventive concept lies in the method of accessing the ASE and not the ASE itself.
[48] Paragraph 55 of Requestor’s Submissions in Support
[49] Paragraph of 20 of the Andrews Declaration
Whilst Mr Andrew discusses Mr Harman’s involvement in this ESP32 ASE prototype, he also describes the present application’s specification of having “...really nothing new or unusual…”[50], going so far as to list how features of the inventive concept and claims were individually well known[51]. It would appear that this information is well in the public domain, and, thus, is further at odds with the submission that Mr Harman has relied on the Requestor’s prototype to arrive at the inventive concept. As such, I cannot see how, in arriving at the inventive concept, Mr Harman has used any information that could only be obtained during his employment with the Requestor. The Requestor does not identify any trade secrets that Mr Harman has taken advantage of.
[50] Paragraph of 13 of the Andrews Declaration
[51] Paragraph of 20 of the Andrews Declaration
It follows that it cannot be said that Mr Harman was taking advantage of confidential information gained during his employment with the Requestor. The Requestor has also given evidence that various features of the inventive concept were in the public domain[52]. In any case, I see no evidence to suggest that Mr Harman utilised any confidential information of the Requestor in conceiving of the inventive concept.
[52] Paragraph of 70 of the Andrews Declaration, BA-3 and BA-5 of the Requestor’s Evidence in Reply
Therefore, I am satisfied that the Patentee solely derives entitlement to the application for the alleged invention, and the subsequent Innovation Patent.
Furthermore, I see no reason to consult the new evidence submitted by the Patentee. This evidence only serves to clarify the features present in the Requestor’s software, which I have already determined was missing features of the inventive concept.
CONCLUSION
I refuse to make a declaration under s191A(2), as the Register has properly recorded the entitlement to a patent 2020101363.
I decline to invoke Reg 5.23 with respect to further material adduced by the Patentee.
Pursuant to sub-section 191A(6), an appeal lies to the Federal Court from this decision.
COSTS
Costs normally follow the event and I see insufficient reason to depart from that approach in the present case.
I therefore award costs according to Schedule 8 against the Requestor, Romteck Australia Pty Ltd
B. Norman
Delegate of the Commissioner of Patents
[13] Paragraph 54 of the Andrews Declaration
[29] Paragraph 6-8 of the Andrews Declaration
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