Silent Shade Pty Ltd v Tony Hopkins
[2025] APO 20
•30 June 2025
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Silent Shade Pty Ltd v Tony Hopkins [2025] APO 20
Patent Applications: 2023900674 & 2023901115
Titles:Mechanical blinds system auto glide & Mechanical combined awning and blind system
Patent Applicant: Tony Hopkins
Requestor:Silent Shade Pty Ltd
Delegate:Greg Powell
Decision Date: 30 June 2025
Hearing Date: Written submissions filed on 19 March 2025, 20 May 2025 & 2 June 2025
Catchwords: PATENTS – section 36 – inventorship – applicant is the sole inventor – whether the requestor is the sole eligible person – joint venture agreement – whether the agreement exists – behaviour of the parties to agreement – implied contract – agreement was effectively in existence – third party employer of the applicant – s36 considerations do not extend to the third party – should documents not in evidence be considered? – documents not in evidence were not considered – request under s36 successful – the requestor is the sole eligible person with respect to the invention – costs awarded against the applicant
Representation: The applicant and requestor represented themselves
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Applications: 2023900674 & 2023901115
Titles:Mechanical blinds system auto glide & Mechanical combined awning and blind system
Patent Applicant: Tony Hopkins
Date of Decision: 30 June 2025
DECISION
The requestor has established that they have entitlement to the invention.
I declare that the requestor, Silent Shade Pty Ltd, is the sole eligible person in relation to provisional applications 2023900674 and 2023901115.
I award costs in accordance with Schedule 8 against the applicant, Tony Hopkins.
REASONS FOR DECISION
Tony Hopkins (the applicant/Mr Hopkins) filed provisional patent application 2023900674 (the ‘674 application) on 13 March 2023 and filed provisional patent application 2023901115 (the ‘115 application) on 16 April 2023 (collectively, the provisional applications). On 7 June 2023 standard patent application 2023203556, claiming priority from the provisional applications, was filed in the name of Jeti Enterprises Pty Ltd, listing Mr Hopkins as sole inventor.
On 11 July 2024, Silent Shade Pty Ltd (the requestor) filed a single request under section 36 of the Patents Act 1990 (the Act). The request was made with respect to standard application 2023203556 but stated:
“This application relates to:
- Australian Provisional Patent Application Nos. 2023900674, 2023901115 in the name of Tony Hopkins, and
- Australian Complete Patent Application No. 2023203556 in the name of Jeti Enterprises Pty Ltd.”
The request sought a declaration from the Commissioner that Silent Shade Pty Ltd was the sole eligible person in respect of the provisional applications and the standard application which claimed priority from the provisional applications. The request stated:
“The inventor Tony Hopkins was a director of Silent Shade Pty Ltd during the period in which the invention was made. He has engaged in conduct in breach of his fiduciary duties as a director of Silent Shade Pty Ltd, and in contravention of a Joint Venture Agreement signed by him on 4 July 2017. Tony Hopkins was also employed by Abra Aluminium Pty Ltd during the period in which the invention was made, and the invention was made within the scope of his employment with the company. Further particulars are explained in the attached declaration of Edward Donald Allen, a co-director of Silent Shade Pty Ltd.
The inventor, and his company Jeti Enterprises Pty Ltd, are not entitled to the invention disclosed and claimed in the two provisional patent applications or the associated complete patent application. Silent Shade Pty Ltd is the sole eligible person.”
Following correspondence from the Commissioner, the requestor subsequently “split” their single request into three separate requests (as required by the Act), one for each application.
The applicant of standard patent application 2023203556, Jeti Enterprises Pty Ltd, then requested its withdrawal on 15 August 2024. The requestor did not dispute this withdrawal and subsequently discontinued their s36 request against the standard application. As such, this decision is in relation to the provisional applications only.
Evidence
The declaration of Edward Donald Allen (Allen1) dated 9 July 2024 attached to the request, with exhibits EDA-1 to EDA-9, formed the evidence in support (EIS) for the request.
The applicant subsequently filed their evidence in answer. It consists of a declaration by Tony Hopkins (Hopkins) dated 11 December 2024, with exhibits TH-2 to TH-8, TH-10 to TH-11b, TH-14 to TH-21, TH-25 to TH-34, TH-36 to TH-38, TH-40 and TH-43 attached. While the gaps in exhibit numbering are unusual, there are no exhibits missing.
The requestor then supplied evidence in reply (EIR). The filed documents were, in accordance with the Commissioner’s requirements, PDF files. However, while the PDF file names for the evidence indicated that the EIR consisted of a second declaration by Edward Donald Allen, a declaration by Harish Alakkandy and a declaration by Peter Cock, upon reviewing the files prior to my consideration, it was found that the Cock declaration was a copy of the Alakkandy declaration. The parties were informed of this situation. They were also informed that the omission could not be corrected by simply filing the Cock declaration as the period for filing evidence had passed. The requestor was informed that if they wished to rely on the Cock declaration, they had to file it and explicitly request the Commissioner to consider it, explaining why the declaration was crucial for resolving the entitlement dispute. The requestor filed the missing declaration and asked that it be considered, stating that it was “crucial” since it was from an independent witness and presented contrary evidence to that of Mr Hopkins as to the issue of conception of the invention and the understanding as to the intended ownership of the invention. As I discuss below, I do not believe that the Cock declaration is crucial, and I did not consider it. As such, the EIR consists of the second declaration of Mr Allen (Allen2) dated 20 January 2025 with exhibits EDA-10 to EDA-24, and the declaration of Mr Alakkandy (Alakkandy) dated 20 January 2025.
I would observe that there is considerable dissatisfaction on the part of Mr Hopkins with the way that Mr Allen has apparently set up certain business arrangements. Mr Hopkins is certain that these arrangements were deliberately created to deprive him of what he considers to be his rightful share of profits arising from his inventions. This dissatisfaction is apparent in the evidence from both parties. However, whether the arrangements are in existence and whether they are permitted under law is not something that I must decide. My remit is purely on the question of who the eligible persons are with respect to the ‘674 and ‘115 provisional applications.
The requestor filed their written submissions (RS) on 19 March 2025, the applicant filed their submissions in response (AS) on 20 May 2025, and the requestor filed their submissions in reply (RRS) on 2 June 2025.
For completeness, I also note that the applicant filed what he termed “new evidence” on 20 February 2025, seeking to have the section 36 matter dismissed. The evidence was a “Preliminary Signature Analysis Report” which advanced an opinion that there was support for the proposition that a signature of the applicant appearing on exhibit EDA–21 was “the product of a simulation/forgery process.” A delegate of the Commissioner wrote to the parties on 12 March 2025 indicating that he was of the view that the Commissioner did not think the new evidence should be consulted. However, the delegate invited the applicant to make an explicit request for the Commissioner to consult explaining how the new evidence would be crucial to the decision. The requestor responded to the delegate’s letter disputing the evidence and filing a declaration responding to the forgery allegation. The applicant responded to the delegate’s letter stating:
“I do not seek to raise any further material at this stage”.
Consequently, the delegate wrote to the parties stating:
“The Applicant’s correspondence … states that they do not wish to raise any further material at this stage. I take this to mean that they will not be making further submissions on the material they filed on 20 February.
…
The Requestor has filed a declaration in the name of Don Allen dated 18 March 2025, along with an annexure and related submissions. I understand that this material is responsive to the Applicant’s filings of 20 February 2025. Given that the Applicant has chosen not to pursue the matter, there does not seem to be any need for the Commissioner to consider the Requestor’s new material for the purposes of determining this s 36 matter.”
As the parties have abandoned this matter, I will not consider the new evidence or the declaration the requestor filed in response. That being said, like the Cock declaration, if the parties had persisted, I do not believe that the new evidence is crucial to my decision and would not have considered it in any case.
Whether to consider the Cock declaration
In an opposition under s59, regulation 5.23 of the Patents Regulations 1991 (the Regulations) can be exercised by the Commissioner to consider late, or additional, documents and evidence. In matters under s36, regulation 5.23 has no part to play. Instead, practice and procedure are determined by the Commissioner under regulation 22.24, applying normal principles of fairness. That being said, in dealing with additional evidence it is the Commissioner’s practice to apply principles that have been developed in relation to regulation 5.23, but modifying those principles where the nature of the dispute makes that appropriate.
The approach of the Commissioner in dealing with regulation 5.23 is set out in Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited:
“Thus in order for me to determine if I should invoke regulation 5.23, I must form a broad view of the circumstances and potential implications should I decide to invoke or not to invoke regulation 5.23.
To form this view, I will do so by considering the following matters:
1.The circumstances leading up to the evidence not being filed earlier
2.What does the evidence show
3.Is the information likely to be crucial to the delegate's decision
4.The public interest in having the information considered
5.The balance of convenience of the parties if the information is considered”[1]
[1] [2017] APO 8 at [51]–[52]
The importance of the third consideration was made clear in Merial Limited v Bayer Intellectual Property GmbH:
“If the new information is not likely to change the outcome of the opposition in a significant way, there is little advantage gained by bringing it into the opposition.”[2]
[2] [2015] APO 16 at [25]
Where evidence is filed out of time in a proceeding such as the present matter, these principles provide a sensible way to assess whether to treat the new evidence as part of the proceeding.
Conception of the invention
On the point about the conception of the invention, in their submissions the requestor stated:
“As I explained in my first declaration, ‘The desire for an external window awning that could also act as a full-length blind was initially suggested to Tony by an Abra sales representative in about March 2022’ (Allen 1 [32]). That sales representative was Mr Peter Cock who I identify in Allen 2 [58], and Mr Hopkins mentions in paragraph [111] of his declaration. As I also explained ‘Tony took the suggestion and started to develop a blind system that eventually became the Auto Glide’ (Allen 1 [32]).
In reply, Mr Hopkins asserted in his declaration ‘On Sunday, 23 October 2022, the inception of my invention occurred while I was solving a problem at my own home’ and ‘the idea came to me while standing on my driveway’ (Hopkins [119]-[121]).
Presented with this assertion, Mr Cock provided a declaration in which he confirmed the accuracy my earlier statement. In particular, Mr Cock explains in the 4th paragraph of his declaration, that the idea for the Auto Glide invention evolved from a discussion between himself and Mr Hopkins.”[3] (italics in original)
[3] RS at [11]–[13]
The requestor also submitted:
“Mr Cock does not claim to be a co-inventor but merely that he suggested the idea to Mr Hopkins within the scope of their common employment by Abra. The subsequent development and engineering of the prototype by Mr Hopkins was within the scope of his employment with Abra (Allen 2 [25]-[26] and EDA-10 and EDA-14).
As such, contrary to Mr Hopkins assertion, he did not conceive the inventive concept completely independently…”[4]
[4] RRS at [38]–[39]
However, while these submissions indicate that it was Mr Cock who suggested to the applicant the idea of a full-length blind, that is not what Mr Cock says in his declaration. Rather Mr Cock states in his 4th paragraph:
“During a discussion with Tony Hopkins the idea of a blind that could cover an up-stairs window that would provide the features of an existing style of awning called an ‘Auto But with a motorized function was verbalized.”
It is noteworthy that Mr Cock does not explicitly state that he suggested the idea. Rather, he says that the idea was “verbalized” and does not identify who “verbalized” the idea. The statement made by Mr Cock does not, as submitted by the requestor, contradict Mr Hopkins’ evidence. In my opinion, there seems to be no utility in admitting evidence that does not support the submission made.
Intended ownership
As to an understanding as to the intended ownership of the invention, the requestor submitted that:
“All patent rights relating to the Auto Glide invention were intended to be owned by Silent Shade Pty Ltd. This was understood by all parties involved (Allen 1 [33]-[38], Allen 2 [49] and EDA-23, Allen 2 [55]-[57] and EDA-24, Allen 2 [60]-[61], Cock [final paragraph] and Alakkandy [final paragraph])”,[5]
and
“Contrary to what Mr Hopkins now asserts, it was always his intention, and the intention of Silent Shade and all individuals involved, that all patent applications for the Auto Glide were to be filed in the name of Silent Shade. This is evident at least from Allen 1 [33]-[40] and EDA-6; Allen 2 [25], [42] and EDA-14; and Allen 2 [49], [55]-[57], [60] and EDA-24; and corroborated by others in Cock [final paragraph] and Alakkandy [final paragraph].”[6]
[5] RS at [38]
[6] RRS at [3]
In this regard I note that these submissions are consistent with Mr Cock’s statements, but I also note that the submissions also rely on other supplied declarations to support this same notion. I do not see why it is “crucial” to supply another declaration that says the same thing that is already in evidence.
Conclusion
As such, I do not believe Mr Cock’s declaration is likely to change the outcome of this matter in a significant way. Accordingly, there is little advantage gained by bringing it in, and I decline to do so.
The invention described
I will briefly describe the invention as there is little to no dispute between the parties as to what it is. While two provisional applications are involved, the disclosures of each are very similar. Indeed, the specification for the ‘115 application is quite obviously derived from the specification for the ‘674 application as both refer to the invention as the “Auto Glide” (although, for the 2023901115 specification most (but not all) references to “Auto Glide” have been amended to “Pivot Glide Blind”). There is, in effect, only one invention. For convenience, and as has been alluded to in the submissions and evidence that I have already cited above, I will refer to the invention as the “Auto Glide”.
Essentially the Auto Glide is an external window blind that can operate as an awning, which typically projects outwardly from a window, but can become a vertical blind, which typically completely covers the window with minimal projection. In use, as the Auto Glide blind is operated it moves from its starting position, with the blind cloth fully retracted, to an awning-type configuration, and then to a position that is typical of a vertical blind.
The sequence is illustrated in the figures below (taken from the ‘674 application):
As the roller fabric is unwound (which can be done via manual crank or an electric motor in the header box), the side arms pivot outwardly to form a hood awning-type arrangement covering the top half of the window. If this is what is desired, unwinding stops. Further unwinding of the roller fabric allows the side arms to pivot even more, bringing the arms more or less vertical and the roller fabric closer to the window. The length of unwound roller fabric may not necessarily cover the whole window at this point. Additional unwinding results in the now-vertical side arms travelling further down the rails so as to completely cover the window with roller fabric. The position of the blind/awning could be adjusted to suit different weather situations or times of day.
While not directly relevant to the present matter, I note that this invention is also the invention disclosed in WO2024/187228. This application claims priority from the ‘674 application, the ‘115 application, as well as provisional application 2023901615. Both the provisional application 2023901615 and WO2024/187228 are in the name of the requestor, and both name Mr Allen and Mr Hopkins as inventors.
The law on entitlement
Section 36(1) of the Act sets out that:
“If:
(a) a patent application has been made and, in the case of a complete application, the patent has not been granted; and
(b) an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
(c) the Commissioner is satisfied on the balance of probabilities, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
(i)that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii)that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed.”
A declaration must not be made without first giving the nominated person a reasonable opportunity to be heard (subsection 36(3)).
The Dictionary at Schedule 1 of the Act defines an eligible person as follows:
“eligible person, in relation to an invention, means a person to whom a patent for the invention may be granted under section 15.”
Section 15(1) of the Act states that:
“Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”
Thus, the invention may only be granted to the inventor or someone who derives title to the invention from the inventor. The general approach to determining who is an eligible person arises from University of Western Australia v Gray[7] and Polwood Pty Ltd v Foxworth Pty Ltd[8] and involves the following steps:
(a)Identify the “inventive concept” of the invention as defined in the claims.
(b)Determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice.
(c)Determine whether any contractual or fiduciary relationships give rise to proprietary rights in the invention.
[7] [2009] FCAFC 116
[8] [2008] FCAFC 9 (Polwood)
Third party employer of the applicant
I observe that Abra Aluminium Pty Ltd (Abra), which is mentioned in the grounds and Mr Allen’s evidence, is a company owned and operated by Mr Allen and his son. According to Mr Allen’s narrative, Mr Hopkins began working with Abra to help develop Mr Hopkin’s products, and the requestor was created as part of a joint venture agreement between Mr Allen and his son and Mr Hopkins.
I also note that, while the requestor initially stated in the RS:
“we seek a Declaration under section 36 of the Patents Act 1990 that Silent Shade Pty Ltd is an eligible person under the Act and that Tony Hopkins is not such an eligible person. In the alternative, we seek a declaration that Abra Aluminium Pty Ltd is an eligible person and that Tony Hopkins is not such an eligible person”,[9]
the requestor subsequently submitted in the RRS:
“In our earlier submissions we also named Abra as a potential rightful owner, given the employment agreement, but submit that all rights acquired by Abra by virtue of Mr Hopkins’ employment have been assigned to Silent Shade.”[10]
[9] RS at [41]
[10] RRS at [64]
Whatever might be said around ownership, the section 36 request was only ever made by Silent Shade Pty Ltd. As is clear from the text of section 36, the Commissioner may only make a declaration with respect to the applicant and/or the requestor. Consequently, to dispel any doubt, it is not open to me to make any declaration with respect to Abra.
Other commercial parties
The evidence also mentions other commercial entities. They are:
(i)Lusso Fashion for Windows (“Lusso”) – this is a trading name belonging to the Hopkins Family Trust. It belongs to the applicant.
(ii)Silent Shade – this is a business name belonging to the Hopkins Family Trust. It is distinct from the requestor (Silent Shade Pty Ltd).
As evident from its name, the applicant is one of the trustees for the Hopkins Family Trust. These entities do not directly impinge on this matter.
Inventive concept
With respect to the first step at [33] above, as noted above, the parties did not raise any disputes as to the invention. As such, I will proceed assuming that what I described at [25]–[29] above is the inventive concept.
Inventorship
With respect to the second step, in JMVB Enterprises Pty Ltd v Camoflag Pty Ltd Crennan J stated:
“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.”[11]
[11] [2005] FCA 1474 at [132]
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.[12] The passage was cited with apparent approval in Polwood. Furthermore, in Polwood, 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.”[13]
[12] [2006] FCAFC 141
[13] Polwood at [34]–[36]
Consideration
There is complete agreement between the parties that the applicant, Mr Hopkins, is entitled to be named as an inventor. The disagreement arises over whether Mr Allen should also be named as an inventor. In this regard, I believe that the requestor has not discharged its onus.
While the RS and the RRS have nothing to say about whether Mr Allen is an inventor, the evidence from the requestor indicates that Mr Allen thinks he is. In this regard, I note that Mr Allen states:
“Tony and I developed a new combination blind and awning system that we referred to as the ‘Auto Glide’. The desire for an external window awning that could also act as a full-length blind was initially suggested to Tony by an Abra sales representative in about March 2022. Tony took the suggestion and started to develop a blind system that eventually became the Auto Glide. I and an Abra engineer were heavily involved in this project.”[14]
[14] Allen1 at [32]
He also states, with respect to provisional application 2023901615, that:
“I named myself as a coinventor because I provided input to the design of the Auto Glide and additional input following the resignation of Mr Hopkins, prior to the filing of [provisional application 2023901615]”.[15]
[15] Allen2 at [14]
However, when it comes to identifying his contributions, Mr Allen’s evidence comes up short. In his evidence Mr Allen provides:
“numerous emails between me, Tony Hopkins, Matt Doney and other Abra personnel regarding the development of new components including for the Auto Glide”.[16]
However, those emails, to my mind, do not establish any inventive contributions by Mr Allen. If anything, the emails supplied by Mr Allen show that Mr Hopkins was the one undertaking further development, and actions by other employees of Abra involved the creation of drawings and prototypes in line with Mr Hopkins’ instructions.
[16] Ibid at [7]
The one email[17] that could possibly be said to show any contribution by Mr Allen was one sent to Mr Hopkins where Mr Allen says:
“Hi Tony
I have just made to [sic] minor alterations that Harish is changing the drawing to. One to the block to make it 25.5 by 25.5 SQ. And one to the pin to allow hex type or screw driver type. My thought is it would be easier to rotate the pin with a screw driver rather than an allen key.
Your thoughts.
Regards”.
[17] Ibid, exhibit EDA-12 203
Mr Hopkins replied to this email saying:
“Hi Don,
It looks great, I agree the screw driver option is a good addition to make adjustment easier. This part for the motor end combined with the original Nylon part for the idler end will be perfect for the system.
Kind Regards
Tony Hopkins”The inventive concept that I have identified above is the general concept of a window covering that operates to move to an awning configuration to a blind configuration and back. Changing the size of a block that already existed in the invention and suggesting different fasteners do not seem to alter the general inventive contributions. Rather, they seem to be variations in a design. For example, the pins suggested by Mr Allen, while possibly allowing a more convenient adjustment option (i.e. screwdriver instead of Allen key) are no more than an example from the general field of fasteners which could be used secure the parts of the slider assembly together.
I note Kafataris v Davis,[18] where Mr Kafataris was seeking to be named as an inventor because he had suggested a casino game to which the applicant’s “secondary wager” invention could be applied. The court noted:
“The work of Mr Kafataris, once he had examined the Provisional Application, was to identify blackjack as being a further game in which the secondary wager concept could be applied, as he knew it was a game that already offered side bets. The finding reached by the primary judge was undoubtedly correct that Mr Kafataris was ‘alerted to the concept or idea of a supplementary or subsidiary betting opportunity by Mr Thomas’ and then considered the rules of blackjack to determine if ‘a similar opportunity arose’. There can be no other conclusion as to how Mr Kafataris approached his work. But his work itself then was described more in quantitative than qualitative terms and, as expressly found and not seriously challenged, largely involved copying from publicly accessible material and rules provided to him by Mr Thomas.
At the root of the appellants’ failure was the finding that the addition of a further card game ‘did not bring about a change to the invention, rather it merely provided another example’. This finding was undoubtedly correct. The work done by Mr Kafataris did not alter the nature of the invention. There is nothing novel about the game of blackjack, nor was there anything novel about the secondary bet option for blackjack, which was an obvious application of the inventive concept.”[19] (my emphasis)
In a similar way, there is nothing to suggest in this matter that the changes suggested by Mr Allen were material to the invention. At best, they are mere examples of another embodiment of the invention.
[18] [2016] FCAFC 134 (Kafataris)
[19] Kafataris at [74]–[75]
Other parts of the evidence highlight the insufficiency of Mr Allen’s claim that working on the invention generated an inventorship claim. One is the fact that, as noted at [41] above, while Mr Allen stated that he “and an Abra engineer were heavily involved in [the Auto Glide] project”, Mr Allen does not seek to have the Abra engineer also named as an inventor. Another part of the evidence is Mr Allen’s statement that the applicant “worked with me and other Abra staff to further develop the range of Widescreen blinds and components” for earlier products.[20] As with the previous piece of evidence, despite working with the applicant, Mr Allen never sought to be named as an inventor in the applications from arose from that work. Both of these highlight the principle that working on an invention does not automatically lead to inventorship.
[20] Allen1 at [14]
As such, I cannot conclude that Mr Allen is an inventor with respect to the provisional applications. Rather, Mr Hopkins is the sole inventor.
While this may have some bearing on Mr Allen’s status as an inventor for provisional application 2023901615, as well as WO2024/187228, that is not within the scope of this decision.
Contractual or fiduciary relationships
The third step set out at [33] above is, in my opinion, the determinative factor in this matter. Having determined that Mr Hopkins is the sole inventor, the question then becomes whether the requestor has the right to apply for, or hold, a patent in relation to the invention. At this point, all attention turns to an alleged joint venture agreement (JV) between Mr Hopkins, Mr Allen and Mr Allen’s son, James, which gave the rights to the invention to the requestor. Mr Allen insists the JV existed and was in force, while Mr Hopkins insists that the JV was never put in place.
Evidence on the joint venture
The JV was provided by Mr Allen in his evidence.[21] The text of the JV is as follows (the underlining is present in the original document, and the bolded words below are in a larger size font and in red text in the original document):
[21] Ibid, exhibit EDA-3
JV WITH TONY / SILENT SHADE
MOU for discussion
(1)A new company to be set up.
(2)50% partnership owned between Tony Hopkins only or with wife or other of Tony's choosing. 50% owned between Don and James Allen.
(3)Trading name to be Silent Shade
(4)All Patents to be held by the partnership company
(5)All money used to develop and finalise designs, patents and prototype to be reimbursed to both partners when cash flow permits
Commitments from Don and James
(a)Help develop product to final acceptance
(b)Provide design and drawing assistance.
(c)Finance the development to final acceptance
(d)Facilitate all manufacturing of components and supply of extrusions
(d)[sic] Finance the purchase of all material, cost of promoting sales (plus provide funds to support tony at a rate of $1,500 per week) until the company is in a position to repay any loans owing to all partners and has cash flow to continue.
(f) Not to market other products outside the partnership that would detract the market share of the partnership company. (Excepting existing products already on the market)
Commitments of Tony and other of his choosing
(a) Provide all existing and future product development of products to the JV Company
(b) Assist with all aspects of marketing.
(c) Not to market other products outside the partnership company that would detract the market share of the partnership. (Excepting existing products already on the market)Operation agreement
Abra will control manufacture and the purchasing of all components. Abra will carry the purchasing accounts.
Abra will pay Silent Shade (40%) Percent of the GP upon payment of components from customer.
When Silent Shade achieves a profit then this profit will be shared equally between share holders at agreed intervals.
All accounts for the purchase of components and sales invoicing for Silent Shade products to be available to Silent Shade upon request.
Funds to support Tony.
Until Silent shade generates enough profit to provide this support. These funds will be taken from any initial profit made by Silent Shade and Abra will make available loans to support any short fall needed to make up the balance.
The document supplied by Mr Allen is composed of two sheets: one which is headed “JV WITH TONY / SILENT SHADE” and the other being headed “Operation agreement”. At the bottom of the second page, there are signatures from Mr Hopkins and Mr Allen. The signatures are dated 4 July 2017.
Mr Allen maintained that, given the existence of the JV, the inventions contained in the provisional applications were developed on the understanding that the intellectual property would belong to the requestor. He states that other, earlier provisional applications filed by Mr Hopkins had been assigned to the requestor in accordance with the JV, and subsequent complete and PCT applications associated with these earlier provisional applications were filed in the name of the requestor. Mr Allen states:
“… it was always understood by Mr Hopkins that the Auto Glide patent application was intended to be filed in the name of Silent Shade Pty Ltd. This was consistent with the Joint Venture agreement and consistent with the pattern previously established for the earlier … inventions”.[22]
[22] Allen2 at [49]
Mr Hopkins did not dispute that his signature appears at the end of the JV. However, he stated that the document supplied by Mr Allen was composed of two distinct documents and that his signature was applied only to the “Operation agreement”. Mr Hopkins pointed to the fact that the “JV WITH TONY / SILENT SHADE” explicitly stated that it is a “MOU for discussion”. He stated:
“This document outlines preliminary details meant to be deliberated upon. Following these discussions, Mr Allen assured me he would facilitate drafting a formal contract encapsulating specifics for review. Mr Allen avoided having these discussions. the [sic] discussions have never occurred.”[23]
[23] Hopkins at [58]
Mr Hopkins also stated:
“Mr Allen approached me to set up a company and produced a Memorandum of Understanding (‘the MOU’) for discussion. Mr Allen promised to provide an actual contract for review based on our discussions. However, no contract was ever produced as promised.”[24]
In his opinion, there was no binding and enforceable agreement between himself and Mr Allen.
[24] Ibid at [45]
Mr Hopkins indicated that:
“… the MOU is being intentionally confused by Mr Allen with the signed Operation Agreement. The MOU was a preliminary document for discussion, not a binding contract. It outlined potential terms for future agreement and was never intended to be final.
In contrast, the Operation Agreement signed on 4th July 2017 is the binding document that governs our operational terms. These two documents serve different purposes and should not be conflated.
The separate Operation Agreement outlines margin distributions. The Mou is not relevant.”[25]
[25] Ibid at [61]–[63]
Is a joint venture in place?
As a first point, I note that the references to paying, and profits of, “Silent Shade” and sharing profits between “share holders” in the signed “Operation agreement” suggest an acceptance of the contents of MOU which mentions setting up a partnership company named Silent Shade with shareholders. As such, since the references to Silent Shade and shareholders in the “Operation agreement” do not make much sense without the context of the other part of the document, it might reasonably be said that the signatures apply to the whole document.
However, I also note that in evidence is an email exchange between Mr Hopkins and Mr Allen in which Mr Allen states (presumably in response to a (non-provided) query from Mr Hopkins about the JV):
“Hi tony
It looks like its my fault that the final agreement from the solicitors has not been completed. I was waiting on final information on your side to Brendon’s questions below and forgot to follow up. If you can send nr [sic – “me”] the details I will send all off to the solicitors for proper formatting.
Any [sic – “anyway”] below is what we have agreed on in principal. There has been so much going on I actually thought you and I had signed the final agreement but we just agreed as per below and I did not follow it through. Sorry mate I will have this done ASAP.
Regards
Don”[26]
Below this message is the text of the JV that I have set out at [52] above.
[26] Ibid, exhibit TH-10
There is then a response from Mr Hopkins some 6 years later saying:
“Hi Don,
This has slipped through the cracks; can we now get this completed.”[27]This suggests no formal document was drawn up for the signature of all parties.
[27] Ibid, exhibit TH-8
However, that is not an end of the matter. In Australian law, even if a joint venture agreement is not formally signed, it can still be legally binding if the parties act as if the agreement is in force. This is based on the principle of implied contracts, where the conduct of the parties indicates their intention to be bound by the terms of the agreement.
In McBride v McBride, Elkaim AJ stated:
“I accept that an offer can be inferred from the conduct of the parties. The defendant referred me to Hendricks v McGeoch (2008) Aust Torts Reports 81-942; [2008] NSWCA 53 at [10]:
‘A contract need not be made by formal offer and acceptance, or by an overt course of negotiation. Entry into a contract can be found in the conduct of the parties, in what they said and did towards each other. In Integrated Computer Services Pty Ltd v Digital Equipment Corp (Aust) Pty Ltd (1988) 5 BPR 97326 McHugh JA, with whom Hope and Mahoney JJA agreed, said at 11,117 -
“It is often difficult to fit a commercial arrangement into the common lawyers’ analysis of a contractual arrangement. Commercial discussions are often too unrefined to fit easily into the slots of ‘offer’, ‘acceptance’, ‘consideration’ and ‘intention to create a legal relationship’ which are the benchmarks of the contract of classical theory. In classical theory, the typical contract is a bilateral one and consists of an exchange of promises by means of an offer and its acceptance together with an intention to create a binding legal relationship. cf Atiyah, ‘Contracts, Promises and the Law of Obligations’ 94 Law Quarterly Review at 194. A bilateral contract of this type exists independently of and indeed precedes what the parties do. Consequently, it is an error ‘to suppose that merely because something has been done then there is therefore some contract in existence which has thereby been executed’: Howard, ‘Contract, Reliance and Business Transactions’ [1987] Journal of Business Law at 127. Nevertheless, a contract may be inferred from the acts and conduct of parties as well as or in the absence of their words: Empirnall Holdings Pty Ltd v Machon Paull Partners Pty Ltd (Court of Appeal) (11/11/88). The question in this class of case is whether the conduct of the parties viewed in the light of the surrounding circumstances shows a tacit understanding or agreement.”’”[28] (italics in original)
That is, a contract could be taken to be in existence by actions which demonstrate an intention of both parties to be bound. In this regard, I believe there is ample evidence to show that Mr Hopkins acted as if the JV was in place.
[28] [2024] NSWSC 45 at [23]
Turning to the evidence, there is firstly the fact[29] that the requestor exists. It was registered as a company with Mr Allen, his son and Mr Hopkins named as directors. Each person was also a shareholder by virtue of the fact that the Allen’s shares belong to a company which is stated by Mr Allen to be “trustee for two separate family trusts owned by James and I, respectively”,[30] and Mr Hopkins’ shares belong to Jeti Enterprises Pty Ltd of which he is the sole director. Mr Hopkins had 50% of the shares and the remaining 50% was shared between the Allens. This is consistent with the JV requirement that “A new company to be set up”, “50% partnership owned between Tony Hopkins only or with wife or other of Tony's choosing. 50% owned between Don and James Allen”, and “Trading name to be Silent Shade”.
[29] Allen1, exhibt EDA-1
[30] Ibid at [13]
Next there is the evidence[31] of the assignment of Mr Hopkins’ earlier provisionals to the requestor and subsequent filings of compete and PCT applications in the name of the requestor. This is consistent with the JV requirement that “All Patents to be held by the partnership company”.
[31] Allen2, exhibits EDA-15, EDA-16, EDA-17
I accept that it could be said that these inventions are not the Auto Glide of the provisional applications and, as such, these actions by Mr Hopkins are not determinative. So, I will proceed to investigate Mr Hopkins’ conduct upon conceiving of the Auto Glide invention.
The first thing I notice is that, upon having hit upon the idea that underlies the Auto Glide, Mr Hopkins sent a video to Mr Allen, his son and others attaching a video. The email stated:
“Hi all, please see this video of the second prototype of the new Widescreen AutoGlide. For those who aren’t familiar with external blind types, this is potentially a bit of a break through. This video cannot be shown to anyone outside this group to ensure we dont compromise the Patent process. It will be an easy addition to our current manufacturing. I think its a game game [sic] changer. An awning and a blind in one product”[32] (bolded part was in red text in the email)
[32] Allen1, exhibit EDA-6
There is a couple of things to note here. Firstly, the email talks of the second prototype of the Auto Glide, and does not explain what the Auto Glide is. This suggests that (i) all parties were aware of what the Auto Glide invention was and (ii) they had either seen a first prototype, or had been told of a first prototype. Secondly, there is a clear intention to apply for a patent. Mr Hopkins states that the email was “straightforward and reflects the standard caution necessary for new inventions.”[33] He stated:
“… my invention allows it to be used in conjunction with many generic parts available to all blind manufacturers in Australia. This aligns with my plan to wholesale my products through my business, Lusso/Silent Shade, and to sell components to all manufacturers through a distributor, as I have consistently done with other products through Andrew's company, Scottfree Australia before and during my tenure as a director of Silent Shade PTY LTD and my brief employment at ABRA.
I believed that adding my invention components to the Panther Global manufacturing of the Widescreen range would be beneficial, as it would be for any manufacturer capable of assembling an external roller blind. But also provide an additional paying customer to generate margin share for myself.
It is important to note that my invention does not rely on any of my existing inventions or designs to function; it is a standalone product with zero reliance on any Widescreen component.
Mr Allen’s inclusion of the video in his declaration inadvertently reveal that he was not involved in the invention process. This video was the first time Mr Allen had ever seen this invention, contradicting his claim of being an inventor of the product as mentioned above.
Mr Allen’s decision to shift from selling Widescreen components to selling finished products manufactured by Panther Global and resold through ABRA underscores that my invention would not be confined to his business model.”[34]
[33] Hopkins at [138]
[34] Ibid at [139]-[143]
Mr Hopkins further stated:
“My reference to the Auto Glide as being an easy addition to ‘our’ current manufacturing was made in the context of considering potential manufacturing and distribution strategies. I believed that integrating my invention into the Panther Global manufacturing of the Widescreen range would be beneficial, just as it would be for any manufacturer as above mentioned. Mr Allen is again confused as to the roles each entity has, Silent Shade PTY LTD is not and has never been a manufacturer.”[35]
[35] Ibid at [145]
The inference I am being invited by Mr Hopkins to draw is that, while he showed the invention, it was not with the intent that the invention should belong to the requestor. But the question then arises as to whom the invention was to belong.
In this regard, I note a series of emails to Mr Ray Tettman of Griffith Hack from Mr Allen and Mr Hopkins beginning in January 2023[36]. The series begins with an email that states inter alia:
“Also we have a new product that we are developing for our Blind range. I have attached a video of a prototype showing the function. The novel function is this is the only blind that go from conventional blind to a complete cover of floor to ceiling window and completely contract back into the head box. We would like to discuss the advantages and the patent potential ASAP.”
This email was from Mr Allen and was CC’d to Mr Hopkins and, in my opinion, pertains to the Auto Glide.
[36] Allen2, exhibit EDA-24
The response from Griffith Hack to both Mr Hopkins and Mr Allen stated:
“Hi Tony
It was good to catch up with you last Thursday and learn more about your new combination awning/roller blind idea. As discussed, it is certainly the type of thing that should be patentable, assuming it is new. We discussed the desirability of conducting at least some form of patent search to assess whether the idea is new and would be considered inventive. …
You mentioned that you would send more detailed information so that I can initiate the search. I look forward to receiving that from you when you get a chance.
…
If you have any questions please let me know. I look forward to receiving the more detailed information from you so that I can instruct our patent searchers (assuming Don also agrees to proceed with the proposed patent searches).”
Mr Hopkins responded saying:
“Thanks Ray,
I found these, our function is different however these are similar. They use a mid bar to initiate the projection and a gas strut to tension the blind.Our projection function is at the top and then closer at the bottom, basically up side down. I think it might be hard to patent my idea? <various URLs are then listed>”
Griffith Hack responded to Mr Allen and Mr Hopkins stating:
“Hi Tony
Good to see you've been doing your homework!
Yes, the concept of a combination roller blind and awning is clearly present in these products but these are indeed upside down compared to yours. I would have thought that your arrangement has definite advantages over these products, both in its function and simplicity. The product shown in the first video seems to use a gas strut but I can't see the strut in the 2nd and 3rd videos, and I wonder whether these products are spring tensioned arms like yours?
In any event, I would have thought having the awning deploy at the top of the window, rather than halfway down after half the window is already covered by a vertical blind, would be preferable at least from the point of view of creating shade over the window while retaining views and light?
If we proceed with a patent application we would want to focus on your sliding carriage, its relationship with the spring-loaded arm, and the interplay/balance between these two components.
If you haven't found anything closer then it would seem that we should still be able to obtain patent protection for your product.”
Mr Hopkins responded to all recipients of the email saying:
“Hi Ray,
Fortunately it didn’t take long to find these, it is promising I haven’t been able to find anything with the function of my idea.
Yes, I think they may have spring arms similar to ours.
I am glad you think we may still be able to obtain protection, when I saw the videos I thought it was over.”
Further emails followed setting up a novelty search being done by Griffith Hack. Mr Hopkins replied:
“Hi Ray,
I have spoken with Don this morning, and can confirm it is ok to proceed with a basic patent novelty search. Please let me know if there is anything further I can do to help.Do you have a standard non-disclosure document I can use so I can show selected people the product prior to application lodgement?”
Mr Hopkins also sent another email, apparently with drawings attached, saying:
“Hi Ray,
Please see attached drawings of the invention, Please let me know if these are ok.”Another email thread from March 2023[37] (after Mr Hopkins filed the ’674 application) begins with Mr Hopkins sending text (possibly for a website) that seems to announce a blind that would be displayed at an upcoming exhibition. In an email to Ray Tettman of Griffth Hack Mr Hopkins states:
[37] Ibid, exhibit EDA-23
“Hi Ray,
Please [see] the text relating to the new blind system. I need to get this out today, Don asked me to run this text past you prior to sending. The document is unfinished, but the text is complete”The text sent by Mr Hopkins includes statements such as:
“Widescreen is excited to announce the release of its newest product, the Auto Glide, the world’s first motorised ‘automatic’ [awning with] all the features of the traditional auto blind. This innovative product is set to revolutionise Australian architecture and provide customers with more applications than any other external products in the market”
and
“Widescreen is confident that the Auto Glide will be well-received by the industry and is excited to introduce this ground-breaking product to the market.
With its unique features, and innovative technology, the Auto Glide is set to change the way customers think about external window furnishings”
Griffth Hack responded (with a CC to Mr Allen) stating (inter alia):
“Thanks for your email, and good speaking just now. I confirm that the proposed text is mostly good to go. It does not disclose anything which I consider would be confidential and should not be disclosed prior to the filing of the provisional patent application.
However, in the second paragraph I would suggest replacing ‘Its patented technology…’ with ‘Its patent pending technology…’. It is now [a] good thing that you filed the earlier provisional patent application because you can indeed assert that it the product is ‘patent pending’. However, the patent application has not proceeded to grant so it is not yet ‘patented’. Stating that it is ‘patented’ would be an offence under the Australian Patents Act and could also be considered misleading within the meaning of the Australian Consumer Law (equivalent to the old Trade Practices Act).
…
It would appear that the “Discover More” link goes to your web site but I presume there is no further information about the new AutoGlide system on the website. I have had a brief look and can’t see any, and I suggest you keep it that way until after the new provisional patent application has been filed.
Also, as discussed, can you please send me a copy of the filing receipt for the provisional patent application that you filed. That will give us the number and also the filing date from which we will need to calculate future deadlines for this patent application.”
Mr Hopkins subsequently sent the filing details for the ‘674 application (the ‘115 application had not been filed at the date of the email).
There is then an email[38] from Mr Allen to Mr Hopkins in April 2023 (after Mr Hopkins’ interaction with Griffith Hack) where Mr Allen makes requests of Mr Hopkins. He states:
[38] Ibid, exhibit EDA-22
“Hi tony.
I’m sending the below information to ray to help strengthen the patent application. If you have any thing I have missed let me know and I will add it.Patent for Silent Shade
Please see the four stages that the patent for Silent Shade needs to cover. (drawing No A003-BP-3044)
Stage 1 shows the blind in totally up position.
Stage 2 shows the blind in conventional 45 degree position.
Stage 3 shows the blind in the 90 degree position covering the complete window. This is one of the patent features as no other blind has the capability of doing.
Stage 4 shows the blind completely slid down position. This allows the blind to completely cover floor to ceiling cover. This is the main feature for the patent.Because this system is also motorised it will allow the blind to be fixed on external windows above ground level. At present no other blind of this type can be above ground as all are operated with a rod to move the blinds up and down.
The way this works is using a spring arm, weighted bottom rail and motor.
When the blind is in the up position the motor is released and the blind is unrolled by the force of the spring until it reaches the first position. To bring the blind down to the second position the motor is set to unroll the blind to stop in the third position. This uses the spring and weighted bottom rail to achieve this position. The forth [sic] position relies on the weighted bottom rail to drop the blind as the motor unrolls the blind.When the blind is in the third position the force of the spring is negated so the weighted bottom only drops the blind from position 3 to position 4.
We are still working on the spring component drawings and will send them on as soon as they are completed.
Regards”
The bolded words are in red in the email, and “Patent for Silent Shade” is in larger font.
Mr Allen followed this email with one to Griffith Hack:
“Hi Ray,
There are still some minor issues with the blind and making it work smoothly. When the blind is rolling up and the slide carriage hits the top stop it tends to drop down slightly. While the blinds rolls up and takes up this slack it is not aesthetic. We [are] working on a form of retention using a spring or a magnet to hold the carriage up until the blind is completely up.
Tony is there any other things that we should add to the patent application you filed.”
Mr Hopkins replied:
“Hi Don,
I am working on some ideas to help with the carriage creep. Nothing to add yet.”I also note further emails[39] from early 2023 where the drawings that Mr Allen is referring to in the email above are created. In an email to Mr Alakkandy, Mr Hopkins stated:
“Thanks Harish,
I need the additional views to show the Patent attorneys the function of each step.The drawings look good.
Kind Regards
Tony Hopkins”[39] Ibid, exhibit EDA-19
Later, having received drawings, Mr Hopkins said:
“Thanks Harish,
Could you please give me these views plus a fully up version all un-rendered, and also side view detail in the following positions.
A view with the Base bar fully up
A view with the Base bar at 90 degrees
A view with the bearing cradle half way down the travel rod
A view with the Base bar fully down.Kind Regards
Tony Hopkins”Mr Hopkins maintains that he had not decided whether to file the application in his own name. He stated in his evidence:
“While it is true that I provided information to Griffith Hack regarding the invention, it is important to clarify that at no point did I indicate under what name the application would be filed. I had not made a decision regarding this matter. I had invented the Auto Glide in my own time at my own property at my own expense.”[40]
[40] Hopkins at [135]
To my mind, Mr Hopkins was the sole inventor of the Auto Glide invention; but Mr Hopkins’ subsequent actions are not consistent with him thinking the invention should only be in his name. It seems clear from the emails that Mr Hopkins involved Mr Allen and others very soon after he conceived of the Auto Glide invention. It is also clear from these emails that Mr Hopkins was fully aware of the intention to file a patent application and found, and provided, information when requested of him to ensure Griffith Hack had enough information to draft a specification. It is evident that Mr Hopkins was fully aware of the intention to file the application in the name of the requestor. The email from Mr Allen to him with the unambiguous indication of “Patent for Silent Shade” makes this very plain.
There is also the explanation given by Mr Hopkins as to why he filed the ‘674 application in his name. Mr Allen’s evidence was that:
“In or about 13 March 2023, Tony alerted me to an ‘incident’. He explained that a competitor visited his house and saw the prototype of the Auto Glide blind system installed. Tony said he wasn't there at the time, and that his son met them, but didn't show them anything. Tony said he was concerned about possible disclosure. He panicked and quickly put in a patent application at IP Australia. Tony led me to believe that he filed the application on behalf of Silent Shade, but it later turned out that he had not. It was always understood that all patents were to be in the name of Silent Shade. Tony's actions were inconsistent with that understanding.”[41]
[41] Allen1 at [41]
Mr Hopkins responded stating:
“It is true that I was concerned a competitor might have viewed my prototype. As a result, I registered my provisional patent as soon as possible, on March 13, 2023.
From the time of my application registration, Mr Allen was fully aware that the application was in my name. I made no secret of this.”[42]
[42] Hopkins at [167]-[168]
But this does not explain his lack of protest when informed by Mr Allen that the Auto Glide invention was to be a “Patent for Silent Shade”, or his continued work in providing information for Griffith Hack. To my mind, the actions of Mr Hopkins in performing all of these tasks, as well as including Mr Allen in emails to Griffith Hack, reinforce the existence of an implied contract. While Mr Hopkins may have held an opinion that the inventions should be in his name only, on balance, this would seem to be an incorrect understanding of the situation.
There is also the near-identicality of the specification for the ‘674 and ‘115 applications and an invention disclosure questionnaire that Griffith Hack had asked Mr Hopkins to complete to assist in the preparation of a provisional application.
Mr Hopkins stated that:
“Ray from Griffith Hack provided the questionnaire to help me describe my invention in detail. It is important to note that this document is not an official document but merely a questionnaire intended to help prepare notes for my patent application process.
Mr Allen initially sent me a copy of this questionnaire with himself prefilled as an inventor. When I questioned him about this by email, he responded,
‘Oh, I thought that document meant something else, yes that's a mistake.’
It was events and communication such as this that made me realize Mr Allen had intention to steal my invention and other IP. As mentioned above in this disclosure.”[43] (italics in original)
[43] Ibid at [162]-[163]
Mr Allen stated that Mr Hopkins returned the questionnaire to him. If the questionnaire was for Mr Hopkins’ patent application process, receiving the questionnaire from Mr Allen and returning it to Mr Allen is a curious route to take if Mr Allen was not to be involved in the provisional application at all.
As such, on balance, whatever motives Mr Hopkins might be ascribing to Mr Allen as to recorded inventorship, and which may simply have arisen because of a misunderstanding by Mr Allen of what inventorship means, the actions of Mr Hopkins are of a person who was acting on the basis that any patent for an invention was to be held by the requestor. The work by the personnel at Abra (including Mr Hopkins) and the lack of any protest by Mr Hopkins are all consistent with the requirement that are set out in the JV. These actions demonstrate a tacit agreement by the parties to be bound.
Consequently, I conclude that there was an implied contract in existence and Mr Hopkins was bound by it. While Mr Hopkins submitted that:
“Silent Shade's Purpose Limited to Widescreen: Even Mr Allen's own declarations (Allen 2 at [27], [34], and [35]) confirm that Silent Shade Pty Ltd was established solely to commercialise the Widescreen product. There is no evidence that the company was ever intended to own or control my broader inventive work”,[44]
it seems to clear to me that, upon conceiving of the invention in the provisional applications, he proceeded to act on the basis of an understanding that Mr Allen would, in accordance with the words of the “JV WITH TONY / SILENT SHADE” part of the document, perform his commitment to provide design and drawing assistance, finance development, facilitate manufacturing of components, purchase materials, pay for promotion, and so on. It also is clear to me that Mr Hopkins disclosed the invention in a manner that was not inconsistent with the obligation in the JV document that he “[p]rovide all existing and future product development of products to the JV Company”.
[44] AS at page 12
I also observe that nothing in the JV limited it to Widescreen products. However, even if it is accepted that the JV was limited to Widescreen products, I note that Mr Hopkins associated the Auto Glide with Widescreen. In this regard I note the following:
(a)Mr Hopkins’ email sending the video of the invention to Mr Allen, his son and others (see [66] above) refers to it as “the new Widescreen AutoGlide”
(b)the draft text to Griffth Hack announcing a blind that would be displayed at an upcoming exhibition (see [77] above) says that “Widescreen is excited to announce the release of its newest product, the Auto Glide” and that “Widescreen is confident that the Auto Glide will be well-received”.
On balance, I conclude that Mr Hopkins saw the Auto Glide as a Widescreen product. Consequently, regardless of whether I follow the requestor’s narrative or Mr Hopkins’ narrative, the JV applied to the Auto Glide invention. As such, the conditions of the implied contract make it clear that Mr Hopkins was required to “[p]rovide all existing and future product development of products to the JV Company”.
Fiducial duty
Having concluded the existence of a contract, the next question is to what duty was owed by Mr Hopkins.
The requestor was created in accordance with the implied contract, for the purpose of holding patents for the invention. Mr Hopkins is a director of the requestor. As a director of the requestor, Mr Hopkins had a duty of care and was required to act in the best interests of the company[45].
[45] See, for example, Corporations Act 2001, ss180 and 181
As a counter to this, it may be said that the joint venture was a single-issue venture that did not apply to the invention for this matter, which might be said to be a different “issue”. It that were the case, then it could be said that the applicant owed no duty of care as the invention was a matter unrelated to the company. However, the evidence makes it clear that:
(i)the single issue was Widescreen products (see, for example, Mr Hopkins’ evidence at [93] above); and
(ii)the Auto Glide was a Widescreen product (see [94]–[95] above.
As such, the invention was not unrelated to the company and a duty of care was owed. Given that duty, it would be strange for a company to be set up to hold an invention just for a director to try to ensure that this did not happen, by ensuring that the invention remained with themselves. Such actions would prioritise their own personal interests over the company’s interests and would not be the company’s best interest.
In my opinion, these circumstances are such that I find that Mr Hopkins owed a duty to the requestor and was required to assign his invention to the requestor.
Conclusion
I have found that there was an implied contract in existence and that Mr Hopkins was bound by it. That contract required Mr Hopkins to assign to the requestor any rights in invention(s) that were relevant to the business of the parties. I have also found that the requestor was established to hold the patents for any inventions developed. Mr Hopkins, as a director of the requestor, had a duty to act in the best interests of the company, which interests were the holding of relevant patents. This duty required Mr Hopkins to assign his invention to the requestor. Mr Hopkins would breach this duty if he claimed that the invention should belong to him. I am satisfied that the requestor is the eligible person with respect to the provisional applications.
Consequently, I will declare that the requestor, Silent Shade Pty Ltd, is the eligible person in relation to provisional applications 2023900674 and 2023901115.
Costs
The Commissioner has the power under s210 of the Act to award costs in proceeding before him. Costs are generally awarded in accordance with those elements of parts 1 and 2 of Schedule 8 of the Regulations that are applicable.
Neither party made submissions as to costs. The normal approach is that costs should follow the event. I see no sufficient reason to depart from this approach. The requestor has been successful. Therefore, I award costs in accordance with Schedule 8 against the applicant, Tony Hopkins.
Greg Powell
Delegate of the Commissioner of Patents
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