Row Weeder Pty Ltd v Nielsen

[1997] APO 38

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 53118/94 in the name of ROW WEEDER PTY LTD.

Title:          A VEHICLE ASSEMBLY.

Action:          Application under Section 36(1) by Gregory Wayne NIELSEN, James Alan VENN, and Peter Francis VENN for a declaration regarding entitlement to the invention.

Decision:          Issued  .

Abstract:          A person need not necessarily make the key inventive step to be classified an inventor.  If the final concept of the invention would not have come about without that person’s involvement then that person has entitlement to the invention.

The inventors nominated by the patent applicant conceived the invention in all its features.  The work of the Section 36(1) applicants was performed under instruction of the nominated inventors.

In carrying out the instructions, the work of the Section 36(1) applicants did not require any inventiveness on their part.  The Section 36(1) applicants did not solve a problem nor produce an improved result or advantage not contemplated by the nominated inventors.

Consequently the Section 36(1) applicants do not have entitlement to the invention. 

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 53118/94 by ROW WEEDER PTY LTD, and an application under Section 36(1) by Gregory Wayne NIELSEN, James Alan VENN, and Peter Francis VENN for a declaration stating that they are eligible persons as defined in Section 15.

background

Patent application 53118/94 was filed on 10th January 1994 by Doyle Rodney Thompson and Stanley Edward Taylor (hereafter referred to as Thompson).  Following a deed of assignment the patent application was transferred to the present applicant, Row Weeder Pty Ltd (Row Weeder), on 2nd May 1996.

On 16th February 1995, Gregory Wayne Nielsen, James Alan Venn and Peter Francis Venn (hereafter referred to as Nielsen) made an application under Section 36(1) for a declaration stating that they are eligible persons in respect to the patent application.  Specifically Nielsen stated they are the inventors of the invention described and claimed in application 53118/94.

Nielsen filed evidence to support their application on 6th June 1995.  Thompson, the patent applicants at the time, gained extensions of time to file evidence-in-response.  They filed partial evidence-in-response on 19th October 1995 and completed the filing of this evidence on 17th April 1997.

The application lapsed on 10th January 1997 due to non-payment of a continuation fee.  The grace period for late payment of fees expired on 10th July 1997.  Row Weeder paid the fee a day later on 11th July.  Since the fee was paid outside the grace period, Row Weeder have applied under Section 223 for an extension of time to pay the fee, and thereby have the application restored.  This request has not yet been determined.

A declaration under Section 36(1) is not dependent on the application being in force.  Accordingly a hearing on the Section 36(1) application took place in Canberra on 1st August 1997.  Mr Cliff Carew of Griffith Hack, Brisbane, represented Nielsen by telephone.  Mr Bill Bennett, of Pizzeys, Canberra, represented Row Weeder in person.  Mr Thompson and Mr Taylor were also present at the hearing.

THE COMPLETE SPECIFICATION

The specification describes a vehicle assembly for selectively spraying weed killing chemicals onto weeds amongst crops planted in rows.  The prior art describes manual removal of weeds by persons, referred to as “chippers”, walking along the length of each furrow.  The chippers often have to prise apart closely planted mature plants.  This retards the progress of chippers and also may be hazardous if chippers repeatedly brush against plants previously sprayed with harmful insecticides.  Tractors may not be appropriate (due to their configuration) in areas where crops are fully grown.

Mr Bennett submitted the invention, in its broadest form, resided in a vehicle assembly with multiple user stations whereby each station has control over the forward motion of the vehicle.  Mr Thompson described various mechanisms which enabled users to control the vehicle’s motion.

Mr Carew submitted the invention described by Mr Bennett included the drive, steering and electronic control systems developed by Nielsen.  He said these systems enabled the practical operation of the vehicle.

The independent claims (1 and 12) of the specification read as follows:-

1.  A vehicle assembly including:-

transportation means capable of movement in both a forward and a reverse direction;

drive means for driving said transportation means in both forward and reverse directions;

a user support assembly for supporting a respective user in an aspect suitable for performing an operation;

support means mounted on said transportation means for supporting said user support assembly in an elevated position remote from said transportation means, and

direction control means, operable by a user supported by said user support assembly, for selectively controlling movement of said transportation means in a forward and/or a reverse direction.

12.  A vehicle assembly including

a plurality of control positions, wherein one of said control positions is a master control position having a maximum speed control means for controlling the maximum speed at which the vehicle assembly may be driven, direction control means for selectively controlling the movement of the vehicle assembly in either a forward or a reverse direction and steering actuation means for steering the vehicle assembly and wherein the remainder of said control positions are slave control positions having direction control means for selectively controlling the movement of the vehicle assembly in either a forward or a reverse direction.

Prima facie the first claim clearly includes, within its scope, commonplace vehicles such as motor cars, tractors or trains.  The second claim includes any of these types of vehicles with dual-control arrangements.  The independent claims, prima facie, do not define the present invention.

In its broadest form the invention, described in the specification as a whole, resides in a vehicle assembly with multiple user stations.  While spraying weeds, each user at their respective station also has selective over-ride control, as needed, over the forward motion of the vehicle.  The idea with this concept is that users may slow or even reverse the motion of the vehicle if they encounter a heavy weed patch or miss some weeds during spraying.  One of the users also has the capability to control the steering and the maximum speed of the vehicle.

The specification further describes preferred mechanisms for users to control the vehicle’s motion.  This description accords with Mr Thompson’s elaboration of the invention and pinpoints the area of Nielsen’s contribution as submitted by Mr Carew.  User-operated foot pedals control the motion of the vehicle through electric or hydraulic connection to a drive means comprising a hydrostatic transmission.  A mechanical linkage system and a hydraulic system control the vehicle’s steering in accordance with the king-pin principle.

THE PROVISIONAL SPECIFICATIONS

A first provisional specification for the invention, PL6727, filed on 8th January 1993, describes a self propelled vehicle where a number of operators are seated at various points across the width of the vehicle allowing them complete access to weeds so they may be eliminated.  Operators have full control of speed and direction and still have full use of both hands for operating spot spray guns.  The vehicle is constructed to allow operators full directional control, both forward and reverse, whilst having both hands free to operate the weed spraying apparatus.  The vehicle may have mechanical or hydraulic drive.

A second provisional specification, PM0643, filed on 17th August 1993, is essentially the same as the description of the complete specification.

EVIDENCE

SUMMARY OF STATUTORY DECLARATION BY GREGORY WAYNE NIELSEN

• In or about November 1992, Mr Thompson approached Mr Nielsen and told him that he (Mr Thompson) had a small machine used for working cotton fields.  Mr Thompson wished to have this machine converted from a mechanical drive to a hydraulic drive.

• On or about 10 February 1993 Thompson brought a machine to the premises of Mr Nielsen’s company.  Thompson wanted not only to convert the drive from a mechanical to a hydraulic drive, but also to convert the steering from a steering arm attached to the rear wheel to a skid-steer system similar to that found on bulldozers.

• Following demonstrations and trials between March and June 1993 Thompson and Nielsen had a meeting.  This was on or about 7th July 1993.  It was decided to abandon the skid-steer principle in favour of a conventional king-pin system.  Nielsen indicated on this and other occasions that a steering system approaching that of a conventional front-wheel drive vehicle would solve the problems with the skid-steer system that occurred in the trials. 

• Nielsen subsequently collaborated amongst themselves in developing and integrating the new steering system with a new hydraulic drive system.  Mr Nielsen, Mr J. Venn and a Mr Rohan Nichols redesigned the foot pedal system and the associated electronic control system thereof.

• In late July 1993 successful field trials were conducted at Oakey, Queensland.  Agreement was reached with Thompson in which Mr Nielsen’s company, Nielsen Hydraulics, were to supply the hydraulic system and electronics circuitry.  Mr J. Venn and Mr P. Venn were to build frames and assemble the vehicle, and Thompson were to market and sell the vehicles.

The remainder of the declaration analyses the content of the specifications and notes the contribution made by Nielsen to the features disclosed in the specifications.

SUMMARY OF STATUTORY DECLARATION BY JAMES ALAN VENN

• Thompson engaged Mr J. Venn on 10 February 1993 to design a vehicle in accordance with the skid-steer principle.

• After a Moree Exhibition Day in March 1993 Thompson requested Mr P. Venn and Mr J. Venn to commence construction of a vehicle assembly based on the skid-steer principle.

Other subsequent aspects of Mr J. Venn’s declaration confirm Mr Nielsen’s statements.

SUMMARY OF STATUTORY DECLARATION BY PETER FRANCIS VENN

• In or about April 1993 Mr Thompson requested Mr P.Venn and Mr J.Venn to commence construction of a vehicle in accordance with the skid-steer principle.

Other subsequent aspects of Mr P. Venn’s declaration confirm Mr Nielsen’s statements.

SUMMARY OF TWO STATUTORY DECLARATIONS BY DOYLE RODNEY THOMPSON

• During 1982 Thompson conceived of an idea of using a vehicle to support one or more persons in an attitude which allowed them to either spray or manually remove weeds.  They built several prototypes between 1983 to 1992.  They began building a row weeder vehicle approximating the concept of the present invention in May 1992.  This vehicle had three wheels, mechanical chain drive, steering via pivotal rear wheel  and override control via cables.

• Thompson engaged Mr Nielsen to replace the mechanical chain drive with a hydraulic drive, and the steerable rear castor with a skid-steer system.

• Following the trials up to June 1993 Thompson decided to replace the skid-steer system with a king-pin system as the skid-steer system proved to be too responsive.  The king-pin system was a system which Thompson always knew would work. .

• Subsequently Thompson engaged Mr J. Venn to prepare drawings of a conventional king-pin steering system and they communicated to Mr J. Venn the positioning of the various parts on the machine.

• After the trials at Oakey, Thompson engaged Mr Nielsen to modify the existing electronic control circuitry and the foot pedal system which controlled the selective motion of the vehicle in both the forward and reverse directions. 

• There is nothing inventive in calculating the preferred castor and camber of the wheels, the mere selection of standard hydraulic components, or an electrical circuit of the type Nielsen claim to have invented.

An annexure to Mr Thompson’s second declaration by a Mr Arthur Chaseling of Chaseling McGiffin Pty Ltd, mechanical engineering consultants, attests to Mr Chaseling inspecting an original experimental model on 19 July 1995.  Mr Chaseling notes:-

• The experimental vehicle used an automatic transmission from a car to transmit power to the driving wheels.

• Mechanisms to permit input from one operator to override the input from another are well known, e.g. cruise control, and the provision of such a system would be a simple matter for any professional engineer to design.

• The experimental vehicle used steel wire control lines.  From an engineering viewpoint the later vehicle with hydrostatic drive and electronic control would have been easier to manufacture and more likely to be reliable. 

• Features in the current vehicle which are not described specifically in the provisional patent application of 8 January 1993 include the machine structure, the hydrostatic drive system, and the steering system.  These features are all minor improvements which any experienced engineer or design draftsman could be expected to make, given a knowledge of the provisional patent application and the experimental vehicle.

The evidence to support Row Weeder’s case also included statements by a Mr Haddad, Mr Esten, Mr Weddup and Mr Johnson.  These statements describe an initial contact between Mr Thompson and Mr Nielsen and the trials that took place on various properties during the early stages of the vehicle’s development. 

APPLICABLE LAW

Section 36(1) enables a person to make an application that the nominated person for a patent application is not an eligible person in relation to an invention disclosed in the corresponding specification but that some other person is an eligible person.

Section 36(1) also indicates the Commissioner must be satisfied the nominated person is not an eligible person before declaring another person the eligible person.  The onus resides with the person making an application under section 36(1) to clearly establish eligibility to the Commissioner’s satisfaction.

In the present case Section 36(1) allows Nielsen to be declared as inventors in place of or alongside Thompson in respect to the invention.  The onus resides with Nielsen to clearly establish they are entitled to the invention, either solely, or jointly with Thompson.

Several decisions give guidance in respect to the operation of Section 36(1) in this case.

The Harris v CSIRO decision (26 IPR 469) decision puts forth a number of questions to consider. These are-: (1) what the invention(s) is/are of the person making the Section 36(1) request; (2) what the invention(s) disclosed in the specifications is/are of the person who made the patent application; and (3) whether one person has any rights in the invention of the other, and vice versa.  The decision also suggests a more significant question of whether the invention would have occurred without a particular person’s involvement.

The Costa v GR & IE Daking Pty Ltd decision (29 IPR 241) found two people to be joint inventors since the invention only occurred because of the involvement of both. The invention resided in a machine for picking vegetables, being a conveyor arrangement mounted laterally on a trailer. One person had a general idea of what was required to solve the problems of tilting of the conveyor boom and providing different heights for different crops. However that person did not necessarily know how to give effect to those ideas. The creation of the invention required the input of the other person.

The CSIRO v Gilbert and Hazlewood decision (31 IPR 67) stated the key issue in that case was not one of inventiveness but of entitlement. The rights in an invention do not flow from an assessment of the inventiveness of respective contributions but rather from an objective assessment of the contribution simpliciter to the invention.  The decision held that a consequence of collaboration between parties is that entitlements to any inventions, associated with the collaboration, are shared between the parties. 

The Falkenhagen et al v Polemate Pty Ltd et al decision (unpublished decision on application 84712/91 dated 16th June 1995) stated that a second person, engaged because of that person’s expertise to construct a device based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device.  This holds true even if the second person suggests ways to aid its design or operation.  However if the second person’s suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device.  The result or advantage would need to be a material one so that the resulting device is an improved one not merely a preferred workable embodiment of the original concept.

The common theme from the above decisions is that 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.  A secondary issue is whether that person’s contribution involved a key inventive step.

In assessing the contribution of Nielsen to the final concept of the invention I will follow this theme and consider the working relationship between Thompson and Nielsen.  Specifically I will consider whether Nielsen’s contribution was:-

(1) completely responsible for the final concept;
(2) made as part of a collaborative effort with Thompson in developing the final concept; or
(3) made under instructions from Thompson in accordance with the latter’s vision of the
      final concept.

If either (1) or (2) apply then Nielsen have sole or joint entitlement, respectively, to the invention (see CSIRO v Gilbert and Hazlewood (supra)). 

If (3) applies then I need to consider the secondary issue of the inventiveness of Nielsen’s contribution.  If Nielsen, in carrying out Thompson’s instructions:-

(a) solved a problem not recognised by Thompson;
(b) solved a recognised problem that Thompson had been unable to solve; or
(c) produced a result or advantage not contemplated by Thompson (see Falkenhagen (supra));

which lead to improvement in the invention, then Nielsen have made a key inventive step.  In this case Nielsen would also have joint entitlement with Thompson to the invention.

DECISION

Mr Carew mentioned the Harris v CSIRO (supra) case to say Nielsen were entitled to the invention because the invention would not have occurred without Nielsen’s involvement.  Mr Carew also stated the inventorship issue requires an analysis of the total combination of the invention rather than looking at the inventiveness of people’s contributions.  This point is similar to the statements of the CSIRO v Gilbert and Hazlewood (supra) decision.  Mr Carew said a novel combination A+B, when improved by adding C+D, produces a novel combination A+B+C+D.  Consequently the contributors of C or D also have entitlement to the invention even if C or D are only minor improvements.  Mr Carew cited the steering, hydraulic drive and electronic control systems, allegedly developed by Nielsen, as improvements falling in the category of items C or D.

I support Mr Carew’s approach in principle.  Consequently I need to determine whether Nielsen were the effective contributors of these systems.

Mr Bennett suggested the Harris v CSIRO (supra) case required Nielsen to clearly outline what their invention is.  He also submitted the developmental history of the row weeder vehicle showed the invention was solely conceived by Thompson.  Mr Bennett further scrutinised the inventiveness and patentability of both parties’ contribution to the steering, drive and control systems, particularly the alleged contribution of Nielsen.

While Mr Bennett is correct in Nielsen needing to establish what their invention is, it is not correct to focus predominantly on the inventiveness of their alleged contribution.  The CSIRO v Gilbert and Hazlewood (supra) case suggests the contribution made by the parties to the overall concept of the invention is the primary issue.  Consideration of the inventiveness of the parties’ contribution is a secondary issue.  The Harris v CSIRO (supra) case similarly supports this position by stating that a person may qualify as an inventor if the invention would not have come about without that person’s involvement. 

I will firstly consider the primary issue of the level of Nielsen’s alleged contribution, either solely or jointly with Thompson.

The evidence and submissions of both parties suggest Thompson conceived the original idea of a vehicle with multiple operator stations for weeding fields.  Each operator had independent over-riding drive control, as needed. 

Mr Nielsen acknowledges Thompson brought such a machine, as a prototype, to Mr Nielsen’s premises in February 1993.  Mr Thompson’s evidence states he and Mr Taylor conceived the idea of mechanising the weeding of fields in 1982 and spent the subsequent ten years developing several prototypes leading to the current vehicle.

On this basis I accept the overall concept was Thompson’s idea.

Mr Carew submitted Nielsen were heavily involved in the design and development of the steering, hydraulic drive and electronic control systems of the vehicle.  Both parties however acknowledge at least some of these systems operate on conventional principles.  For instance the row weeder vehicle’s steering, in its final concept, operates according to the conventional king-pin steering principle.  The parties appear to be in dispute about the level of their respective contributions in putting this principle into effect.

In respect to the king-pin system Mr Carew stated the Venn brothers were generally responsible for designing and developing this system.  Nielsen state in their evidence it was their suggestion on occasions, during and following the trials up to June 1993, to convert from the skid-steer system to the king-pin system.  The Falkenhagen (supra) case is pertinent on this point.  This case indicates that, to gain entitlement to the invention, it is not sufficient for a second person, engaged because of their expertise by a first person, to suggest ways to aid a device’s design or operation.

Nielsen also state that Mr Taylor likewise appeared to have reservations about the skid-steer system.  This indicates Mr Taylor gave some support for Nielsen’s suggestion.  On the other hand Mr Thompson wanted to continue trialing the skid-steer system.  Eventually though, Mr Thompson agreed the conventional king-pin system should be incorporated in the vehicle.

Mr Thompson’s evidence highlights a couple of steering systems on earlier versions of the vehicle before the incorporation of the king-pin system.  These included firstly a steerable rear castor
and subsequently a skid-steer system.  Mr Thompson declares the decision to replace the skid-steer system with the king-pin system was Thompson’s decision based on the trials up to June 1993 and on Thompson’s experience in knowing this system would work.  Thompson also engaged Mr J.Venn to prepare drawings of a king-pin system.  Mr Bennett added that Thompson clearly directed the work of Nielsen.  He cited Nielsen’s perseverance with the earlier skid-steer system up to July 1993 despite their reservations about the system.

The Costa v Daking (supra) case held there is joint inventorship if one person has a general idea for solving a problem but is unable to give effect to the idea while another person is able to.  In this respect the present case is different.  Thompson recognised a difficulty with the skid-steer system and knew the alternative king-pin system would work to solve the difficulty.  This is more than merely having a general idea for solving a problem.  Furthermore Thompson’s experimentation with other systems and their recognition of the merit of the king-pin system suggests Thompson would also have been able to give effect to the idea of using this system.  Thompson’s engagement of Nielsen appears to be a case of simply calling on the expertise of Nielsen to put the effect into practice.

The evidence suggests Thompson envisaged the concept of a row weeder vehicle with king-pin steering.  While Nielsen may have designed and developed the system and suggested the conversion to the king-pin system following the trials up to June 1993, Nielsen have not demonstrated they had complete responsibility or a collaborative role with Thompson on this system.  Thompson’s experimentation of other steering systems prior to settling on the king-pin system demonstrates their driving role with the conception of the steering system. 

On balance I conclude Nielsen developed the steering system under instructions from Thompson.

In respect to the hydraulic system Mr Carew mentioned that Mr Nielsen was primarily responsible for this system.  Mr Nielsen’s evidence further mentions that Mr Thompson requested Mr Nielsen to convert the drive system from a mechanical one to a hydraulic one.  Mr Thompson made a similar point in his evidence.

The evidence from both parties regarding the drive system is largely consistent.  It is apparent Thompson envisaged a hydraulic drive system and subsequently asked Nielsen to develop the system.  There is insufficient evidence of Nielsen having complete responsibility or a collaborative role with Thompson concerning the hydraulic drive system.  Instead the development of this system appears to have been under Thompson’s instructions.

Mr Carew submitted that Nielsen made a significant contribution in developing the electronic control circuitry of the vehicle.  He said Nielsen came up with a more workable foot pedal operation to control the vehicle.  Nielsen declare this contribution involved a re-design of the foot pedal system’s operation and that they conceived and developed the new operation.  Again the Falkenhagen (supra) case’s indication of suggestions to aid a device’s design or operation being insufficient to warrant entitlement to the invention is pertinent.

There is insufficient evidence from Nielsen to show who conceived the idea of electronically controlling the foot pedal operation.  On the other hand Mr Thompson declares the electronic control system was instigated and developed under his instructions and there is nothing inventive in the specific electronic control method that Nielsen developed.

On balance the evidence suggests Thompson were the instigators of the electronic control of the vehicle.  Nielsen appear to have used their expertise to develop the most effective circuitry necessary to meet Thompson’s requirements.  This situation again suggests one of Nielsen performing work under Thompson’s instructions rather than having any complete responsibility or collaborative role concerning the electronic control system.

For the above systems, it is clear Nielsen were not completely responsible for the conceptual developments with these systems.  Nielsen also did not conceive these systems in a collaborative sense with Thompson as required by CSIRO v Gilbert and Hazlewood (supra).  Instead the activities of the parties are of Thompson envisaging the final concept of the invention and providing instructions to Nielsen in what was required.

The relationship between Thompson and Nielsen in developing the final concept of the invention is insufficient to warrant Nielsen to have entitlement as inventors to the invention.

Consequently I ought to consider the secondary issue of the inventiveness of Nielsen’s alleged contribution.  Specifically I ought to consider whether Thompson’s instructions left Nielsen with particular problems to solve which required Nielsen to exercise some inventiveness in making their alleged contribution. 

Firstly I note that both parties have acknowledged that at least some of the steering, hydraulic drive and electronic control systems operate on conventional principles.  I have already mentioned the king-pin steering system as one example.

Mr Bennett further stated the improvements to the steering, drive and control systems, allegedly made by Nielsen, are all minor improvements which any experienced engineer or design draftsman could be expected to make.  To support this assertion Mr Bennett relied on Mr Chaseling’s statements submitted in evidence.  Mr Bennett consequently submitted the improvements are inherently not patentable for not being inventive. 

Mr Bennett also noted these improvements were publicly disclosed during the demonstrations and trials between March and July 1993.  This was before Thompson filed the second provisional application, PM0643.  This application also contained the first disclosure of these improvements.  In this way Mr Bennett again supported the contention that the improvements alone are not patentable for not being inventive.

Mr Carew submitted that Nielsen made an inventive contribution by virtue of their contribution being the subject matter of the second provisional application.  Mr Carew suggested the first provisional application, PL6727, merely contained a wish list of Thompson’s desires of the row weeder vehicle.  He thereby questioned the validity of the first provisional application.  Mr Carew specifically suggested Nielsen made the real invention and that this invention was first disclosed in the second provisional application.

I am not supportive of either party’s submissions on the point of the inventiveness of people’s contribution.  Mr Bennett’s submissions concerning earlier public disclosure relate to the novelty of the invention.  Mr Carew’s submissions challenge the fair basis of application 53118/94 and that this application is not supported by the first provisional application due to inadequate disclosure of the invention in the first provisional application.  However the issues of novelty and fair basis are more properly dealt with during the patent examination or substantive opposition stages.  Additionally the inadequacy of the disclosure of an invention does not affect a person’s entitlement to the invention.

Mr Bennett’s submissions concerning Mr Chaseling’s statements of the minor nature of the improvements, allegedly made by Nielsen, may suggest there were no particular problems faced by Nielsen in making their alleged contribution.  Consequently this may suggest Nielsen’s contribution did not involve a key inventive step. 

On the other hand Mr Chaseling’s statements relate to his view of an experimental model and his knowledge of the current vehicle on 19th July 1995.  This is some two-and-a-half years after Thompson filed the first provisional application and about eighteen months after Thompson filed the complete application 53118/94.  Consequently I cannot rely on Mr Chaseling’s statements.

There is no evidence before me of whether experienced people, skilled in the art of agricultural machinery, would have ordinarily made the alleged improvements at the time Thompson filed
the patent applications.  In any case the onus is on Nielsen to show such improvements would not have been ordinarily made.

There is insufficient evidence before me to suggest Nielsen faced any particular problems in undertaking the work Thompson engaged them to do.  Nielsen have not presented any evidence to indicate they were required to solve any problems which Thompson had been unable to solve or even recognise. 

Concerning the production of a result or advantage not contemplated by Thompson there may be merit in Nielsen producing a more workable, electronically controlled foot pedal operation.  However the Falkenhagen (supra) case requires the “result or advantage to be a material one so that the resulting device is overall an improved one not merely a preferred workable embodiment of the original concept”. 

I am not convinced by Nielsen’s evidence or submissions that Nielsen’s re-design of the foot pedal system’s operation is more than a preferred workable embodiment.  The re-design appears to be the most effective outcome to electronically control the vehicle.  Such a re-design would ordinarily be required of an expert engaged to design and construct an effective workable device once given the concept.  Nielsen have not suggested any materially improved result or advantage in their work which had not been contemplated by Thompson. 

Overall I am not aware of evidence to suggest Nielsen exerted inventive activity to overcome any problems or produce a result or advantage that led to improvement in the invention.  Consequently I am not convinced Nielsen made a key inventive step as part of their contribution.  This point also does not warrant Nielsen to have entitlement to the invention.

CONCLUSION

A person need not necessarily make the key inventive step to be classified an inventor.  Primarily if the final concept of the invention would not have come about without that person’s involvement then that person has entitlement to the invention.  The inventiveness of a person’s contribution is the secondary issue.

On the balance of the evidence, I have found Thompson conceived the overall row weeder concept and the associated steering, hydraulic drive and electronic control systems.  Nielsen subsequently incorporated these systems into the row weeder.  Furthermore Nielsen’s work was not performed on the basis of collaboration with Thompson.  Instead Nielsen performed their work under instruction from Thompson.

In respect to the secondary issue Nielsen have not sufficiently shown they made a key inventive step as part of their contribution in carrying out Thompson’s instructions.  Nielsen did not solve any problem nor produce any improved result or advantage not contemplated by Thompson.

Consequently Nielsen do not have entitlement to the invention. 

I declare Mr Thompson and Mr Taylor are the sole eligible persons in respect to the invention of patent application 53118/94.

COSTS

Both parties submitted costs should follow the event.  In this case there are no circumstances suggesting a departure from this practice.

Nielsen have not been successful with their Section 36(1) application.  Consequently I award costs against Gregory Wayne Nielsen, James Alan Venn and Peter Francis Venn.

M.G. Kraefft
Delegate of the Commissioner of Patents

Patent attorneys for Row Weeder Pty Ltd.   :  Pizzeys, Canberra

Patent attorneys for Nielsen et al.   :  Griffith Hack, Brisbane