The Commonwealth of Australia v John Murray Charlesworth

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2003248295 in the name of Dr John Murray Charlesworth

Title: Apparatus for Measuring Water Concentration in Multi–Component Solutions

Action: Section 32 and 36 application by The Commonwealth of Australia, c/– Minister for Defence, Canberra

Decision: Issued 03 June 2008.
Abstract

The Commonwealth of Australia, c/– Minister for Defence is wholly entitled to any patent granted in relation to the invention under Sections 32 and 36 of the Patents Act.
When trying to decide what the invention is, if the applicant has clearly stated in the specification what they believe their invention to be (possibly in a consistory statement or clause), and that invention is different to the prior art that is described in the specification, then it is reasonable to proceed on the basis that the invention is what the applicant says it is. To do otherwise would be to ignore the disclosure of the specification.
On that basis, the invention was a water concentration measuring device for use in aqueous solutions containing one or more non–volatile solutes having:
(i)a water vapor, humidity or relative humidity sensor;
(ii)a chemically and thermally resistant probe body;
(iii)a membrane at one end of the probe body which allows water vapor to rapidly permeate through it while providing a barrier to aqueous liquids;
(iv)a cavity within the probe body which contains a water vapor sensitive element, with the cavity being isolated by the membrane; and
(v)a temperature sensor located in close proximity to the water vapor sensor.

The evidence showed that this device was conceived of, at least, by Dr John Murray Charlesworth while employed by Defence Science and Technology Organisation (DSTO).
Costs under Schedule 8 awarded against Dr Charlesworth.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2003248295 by Dr John Murray Charlesworth and an application under Section 32 and 36 by The Commonwealth of Australia, c/– Minister for Defence, Canberra

BACKGROUND

Australian Patent Application 2003248295 entitled “Apparatus for Measuring Water Concentration in Multi–Component Solutions” was filed on 24 September 2003 in the name of Dr John Murray Charlesworth (“Dr Charlesworth”). On 16 July 2006, the Commonwealth of Australia, c\– Minister for Defence (“the Commonwealth”) filed requests under sections 32 and 36 of the Patents Act for the application to proceed in their name.
Dr Charlesworth indicated that he would defend his entitlement to the invention and both parties filed evidence in support and evidence in response. The Commonwealth indicated that some of its evidence was confidential and requested that parts not be made open to public inspection. A Notice requiring the production of documents was served on Dr Charlesworth in May 2007 and he provided the document on 27 June 2007. Further evidence was filed by Dr Charlesworth and the Commonwealth.
After disagreement over the date of the hearing, the hearing was set for 12 March 2008. On 27 February 2008, the Commonwealth requested that the Commissioner issue a summons on Dr Charlesworth so that he could be cross‑examined at the hearing. The summons was issued and was served on Dr Charlesworth by facsimile on 4 March 2008. Dr Charlesworth also indicated that it was received by him on 6 March 2008. Dr Charlesworth did not attend the hearing. He filed written submissions. The Commonwealth was represented by Edward Heerey of counsel. Timothy Creek of Blake Dawson and Hans Lentfert of the Commonwealth were in attendance. Richard Smoorenburg, patent attorney of Smoorenburg Patent and Trade Mark Attorneys also attended. Mr Smoorenburg is the patent attorney who is prosecuting a patent application for similar technology which belongs to the Commonwealth and he would, if the Commonwealth was wholly successful in this action, be the patent attorney who would be responsible for prosecuting this patent application.
Employment history
As it arises occasionally, I note that Dr Charlesworth was employed for approximately 20 years with Defence Science and Technology Organisation (“DSTO”). He accepted a voluntary redundancy and ceased employment on 20 June 2001.
Summons
The first issue that needs to be addressed is the non–attendance of Dr Charlesworth at the hearing despite being summonsed to be present for cross–examination.
By letter dated 7 March 2008, Dr Charlesworth, while indicating that he had received the summons “on the evening of 6^th March”, also stated that he would not be complying with the summons because he had lawful excuse. He set out two grounds of lawful excuse:
(i)he was a party that had an involvement in the action and, according to section 3.3.2.1 of the Patent Manual of Practice and Procedure, could not be served with a summons; and
(ii)he had received the summons with only 3 clear working days before the hearing, which did not give him enough time to arrange adequate legal counsel to advise him during cross–examination.
Neither of the grounds establishes a lawful excuse.
With regard to (i), section 3.3.2.1 includes a passage that reads:
“Where the Commissioner is asked to (or proposes to) issue a summons, the person on whom the summons is to be served has no involvement (including a right to be heard) until served with the summons. Any objections they might have with the summons are to be argued as a lawful excuse for not complying with the summons”
Dr Charlesworth had read this as meaning that any person who had involvement in an action before the Commissioner could not be issued with a summons. This understanding is incorrect. What this statement establishes was that the person being summonsed has no involvement in the process of requesting, preparing and serving the summons. The fact that the person summonsed may be the applicant, opponent, requestor, etc does not mean they cannot be served with a summons.
With regard to (ii), it is true that the summons must be served on a person in sufficient time to enable them to reasonably make arrangements to attend the hearing. However, witnesses are not required to have legal counsel to advise them during cross–examination. As such, having insufficient time to arrange for counsel did not affect Dr Charlesworth as a witness and did not lead to lawful excuse.
A letter was written to Dr Charlesworth on the same day (i.e. 7 March 2008) setting out that he did not have lawful excuse for the reasons given above and reiterating that he was still required to attend the hearing. The letter was sent to him via normal post. It was also sent to the facsimile number and e–mail address that Dr Charlesworth had provided for electronic communications. Unfortunately, despite repeated efforts over the next few days, attempts to fax or e–mail the letter were unsuccessful. Each time it was attempted, messages were received indicating that the fax machine was busy or not online and the e–mail inbox was full. Attempts to contact Dr Charlesworth by phone at his company (Electrosense Technologies Pty Ltd) during the same period were also unsuccessful. Messages could only be left on the answering machine. The situation remained the same until after the hearing. On 14 March 2008 Dr Charlesworth indicated that he would be making further submissions once he had received legal advice. A declaration was received on 28 May 2008. In the declaration Dr Charlesworth set out the circumstances that lead him to decide not to comply with the summons.
While this was occurring, on 7 March 2008 the Commonwealth, having received a copy of Dr Charlesworth’s submissions for the hearing and the letter from the Commissioner indicating that he did not have lawful excuse, stated that they were content to proceed with the hearing on 12 March 2008 without the need for Dr Charlesworth to attend.
At the hearing I raised the issue with the Commonwealth. They confirmed that they did not require Dr Charlesworth for cross–examination. While one may wonder why, if they could continue without him, the Commonwealth needed to summons him in the first place, I did not think that the hearing needed to be adjourned until such time as Dr Charlesworth was available. Dr Charlesworth had made his submissions in writing, and the Commonwealth did not need his cross–examination to complete theirs. There was no need for another hearing.
While the decision by Dr Charlesworth not to attend the hearing in spite of the summons may or may not be grounds for charging him with an offence under the Patents Act (specifically section 179), that is an irrelevant consideration for this decision.
DECISION
The Law
Section 32 of the Patents Act 1990 reads:
“32.If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.”
Section 36(1) of the Patents Act 1990 reads:
“(1) If:
(a)a patent application has been made ... 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, 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 so disclosed.”
In deciding a matter such as this the Commissioner is entitled to act on any material which is “logically probative” of the issues under consideration. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holdings Ltd's Application, (1979) RPC 523).
The present case is unusual in that, unlike other actions under sections 32 and 36, there is no dispute that Dr Charlesworth is the inventor, or at least one of the inventors, of the invention. What is critical in this case is the point in time when he conceived of the invention. The Commonwealth states that, if Dr Charlesworth completed the process of inventing the apparatus while employed with DSTO, then, by virtue of section 15(1)(b) of the Patents Act, the Commonwealth was a person who would be entitled to have the patent assigned to it. This does not seem to be disputed by Dr Charlesworth. In his evidence he states:
“It is not disputed that any intellectual property produced as a result of original developments belonged to the Commonwealth” (paragraph 3 of Dr Charlesworth’s first declaration)
Dr Charlesworth’s contention, of course, is that he did not conceive of the invention until he left DSTO.
In University of Western Australia v Gray (No 20) [2008] FCA 498, it was alleged by the University of Western Australia (“UWA”) that Dr Gray, a former employee of UWA, had invented certain devices while employed with UWA. After leaving UWA, Dr Gray had applied for several patents and UWA claimed that it was entitled to be assigned rights to the patents since the devices had been invented while Dr Gray was employed by them. Of importance was a determination of when invention had occurred.
When looking to determine when the inventive process by Dr Gray was complete and, therefore, whether to assign the rights to the University, it was argued by one party (Sirtex Medical Limited) that the appropriate steps should be:
“1.Identify the "inventive concept" of each relevant invention as defined by the claims in the relevant Patent Cooperation Treaty.
2.Determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice.
3.Determine how many contractual or fiduciary relationships between UWA and the inventors at the time of the inventorship gave rise to the proprietary rights claimed by UWA.”
The court accepted these steps.
I will point out again that there is no dispute that Dr Charlesworth is the inventor, or at least one of the inventors, of the invention. So the step of determining who the person responsible for the inventive concept was is not at issue here.
Point 3 – Entitlement
In the present case, point 3 listed above does not have to be decided by me since it is accepted by both sides that the Commonwealth is entitled to the patent if Dr Charlesworth invented the apparatus while employed by DSTO.
Point 2 – Conception of an Invention vs. Reduction to Practice
What is important to note, as set out in point 2 above, is that inventorship ends at the “time of conception” and is distinct from its “verification and reduction to practice”.
A critical question, then, is when is an invention conceived? As pointed out in UWA (supra) an inventor:
“is not the person who comes up with a vague idea or pipe dream saying “wouldn’t it be nice if we could do such and such” – but without any idea as to whether “such and such” can in fact be done or how it might be done”
Floyd QC in Stanelco Fibre Optics Ltd’s Application (No 2) [2005] RPC 16 said:
“... It is never going to be enough for an antecedent worker to rely solely on an initial prompt of the vague kind [counsel] refers to: a “but for” approach would lead to all sorts of people being treated as inventors. But where the antecedent worker comes up with and communicates an idea consisting of all the elements in the claim, even though it is just an idea at that stage, it seems to me that he or she will normally, at the very least, be an inventor of the claim. What US patent law calls "reduction to practice" is not, it seems to me, a necessary component of a valid claim to any entitlement.”
Along similar lines, UWA (supra) said:
“Another important distinction for present purposes was drawn by Laddie J between devising an invention and formulating an enabling disclosure. In University of Southampton’s Applications [2005] RPC 11 he said (at [46]):
In my view, devising an invention and providing enabling disclosure are two quite different things. Although both may be necessary to secure valid protection ... they relate to different aspects of the law of patents. It is very possible to make a good invention but to lose one’s patent for failure to make an enabling disclosure. The requirement to include an enabling disclosure is concerned with teaching the public how the invention works, not with devising the invention in the first place.”
Furthermore, when discussing Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, it was said in UWA (supra):
“Their Honours referred to the discussion of inventive concept in Gunter v Stream 573 F 2d 77 (1978), where the “conception” of the invention was described as the complete performance of the mental part of the inventive act. That is to say the invention is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice: see also Burroughs Wellcome (1994) 40 F 3d 1223 cited above. What remains belongs in the department of construction. A concept can be complete although experimentation may continue. It is complete when a person of ordinary skill in the art could construct the apparatus without unduly extensive research of (sic) experimentation. Their Honours referred also to Mueller Brass Co v Reading Industries Inc 352 F Supp 1357 (1972) at [16], [17] for the proposition that inventorship is a role in the final conception of that which is sought to be patented (at [46]):
It is clear that, in working out the inventive concept in a patent, each patent will be different and it will be necessary to ascertain the inventive concept from the whole of the specification. Contribution after the invention was fully conceived where that contribution was under the direction of the inventor does not give rise to entitlement to the invention. A person must be able to say that without his or her contribution to the final conception it would have been less.
Their Honours described that philosophy as “apt”. For joint inventorship, each inventor had generally to contribute to the conception of the invention.”
Clearly in the present case, it is on the Commonwealth to show that Dr Charlesworth had gone beyond saying “Wouldn’t it be good if we could measure water concentration in multi–component solutions?” at DSTO. Rather what they have to show is that Dr Charlesworth had at least conceived of a device that might achieve that result.
Point 1 – Inventive concept
What is the inventive concept?
In their submissions the Commonwealth relied upon a passage of Lord Hoffman in Yeda Research and Development Company Limited v Rhone–Poulenc Rorer International Holdings Inc and others [2007] UKHL 43 where he said:
“Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it. In some cases this may be quite complex because the inventive concept is a relationship of discontinuity between the claimed invention and the prior art. Inventors themselves will often not know exactly where it lies”
The Commonwealth emphasized the “discontinuity between the claimed invention and the prior art” and submitted that identification of the invention required an objective analysis of what was disclosed in the patent application and the prior art.
I raised the point at the hearing that I was concerned that the Commonwealth seemed to be submitting that an invention had to be identified with reference to the “prior art”. This suggested that a search needed to be done before a person could determine what the invention was. I pointed out that a specification may describe and/or claim an “invention” that was clearly not novel in light of documents found in a search of the prior art base, but that did not mean there is no “invention” in the sense of something that a person was entitled to under section 15 of the Patents Act.
I said that if a specification describes certain devices, methods, documents, etc as embodying the “prior art” then, in my opinion, it is useful to proceed on the basis that, by these references, the applicant (or inventor) is pointing out what their invention is not.
To me, when trying to decide what the invention is, if the applicant has clearly stated in the specification what they believe their invention to be (possibly in a consistory statement or clause), and that invention is different to the prior art that is described in the specification, then it is reasonable to proceed on the basis that the invention is what the applicant says it is. To do otherwise would be to ignore the disclosure of the specification.
The Commonwealth agreed with this position. It is also clear from Dr Charlesworth’s written submission that he agrees that the starting point is the specification. This is also consistent with UWA (supra) where it was said:
“the invention … is generally to be found described in the relevant specification”
Turning to the specification, it states that the invention provides a water concentration measuring device for use in aqueous solutions containing one or more non–volatile solutes. Under the heading “Summary of the Invention”, it gives the following combination of features that are said to be “this invention”:
(i)a water vapor, humidity or relative humidity sensor;
(ii)a chemically and thermally resistant probe body;
(iii)a membrane at one end of the probe body which allows water vapor to rapidly permeate through it while providing a barrier to aqueous liquids;
(iv)a cavity within the probe body which contains a water vapor sensitive element, with the cavity being isolated by the membrane; and
(v)a temperature sensor located in close proximity to the water vapor sensor.

None of the individual pieces of prior art mentioned in the specification has this combination of features.
Various other features are listed in the description, but they are prefaced by an indication that they are “Non–limiting but preferred features”.
In UWA (supra) it was said:
“The distinction between inventive concept and verification of an invention was drawn by Jacob J in Henry Bros (Magherafelt) Ltd v Ministry of Defence and the Northern Ireland Office [1997] RPC 693. In identifying the inventor Jacob J rejected the submission that an invention could be divided into contributed elements and patents awarded accordingly. He said (at 706):
I do not think it is right to divide up the claim for an invention which consists of a combination of elements and then to seek to identify who contributed which element. I think the inquiry is more fundamental than that. One must seek to identify who in substance made the combination. Who was responsible for the inventive concept, namely the combination?
In the Court of Appeal which dismissed an appeal from the decision of Jacob J, Robert Walker LJ, delivering the judgment of the Court, defined what he called "two antecedent questions" in the case:
1.What was the inventive concept underlying the relevant claim in the specification of the patent in suit?
2.Who devised that inventive concept, one or other of the two claimants or the two of them together?”
I note that claim 1 of the present application includes a further feature of:
“methods for measuring the electrical response of the sensing elements and for deducing the water activity/concentration of the solution in contact with the probe”
Looking at point 1 that is given in paragraph 20 above, it could be argued that the invention must be that defined in the claims and, therefore, this feature must be part of the invention. However, this point needs to be balanced with the quote from Robert Walker LJ in paragraph 39 above that these cases require an identification of the inventive concept underlying the relevant claim.
It is clear from the language used in the specification that the inventive concept underlying all the claims is a device for use in aqueous solutions containing one or more non–volatile solutes having features (i)–(v) listed above. To decide otherwise ignores what Dr Charlesworth has said in his own specification.
Both the Commonwealth and Dr Charlesworth presented different inventions.
The Commonwealth focused on a passage on page 8 of the specification which started with the sentence:
“Basic embodiments of the invention are explained by referring to Figures 1 and 2 appended.”
This was followed by a set of features that matched (i)–(v) given above and included further features of the membrane regarding its composition , thickness, porosity and pore sizes, etc. This submission was based upon the Commonwealth’s position on two things:
a)the principle that the inventive concept is the discontinuity between the prior art and the claimed invention; and
b)their belief that features (i)–(v) were disclosed in JP 06–027011 which, while not given as prior art in the specification, was given by Dr Charlesworth in his evidence as an example of another embodiment of what he was working on while at DSTO.
The Commonwealth concluded that, since features (i)–(v) were disclosed in JP 06‑027011, there was no discontinuity and, therefore, the inventive concept must be more than (i)–(v).
Such a conclusion is erroneous because all of the features (i)–(v) are not found in JP 06‑027011. In particular, there is no disclosure of a probe body having a cavity that houses a water vapor sensitive element.
A machine translation of paragraph 10 of the description of JP 06–027011 states:
“As shown in drawing 2, the humidity sensor 11 and the diode D1 are carried in the same alumina substrate 1a, and the resin molding of the specific gravity sensor 1 is carried out. The wedge electrode 11b of the couple by which the humidity sensor 11 was allocated on the alumina substrate 11a, It has 11c, and the coat of this wedge electrode 11b and the moisture–sensitive film 11d made from special heat–curing resin on 11c is carried out, and also a water–vapor–permeation film (not shown) is formed in the moisture–sensitive film 11d surface in the shape of a window, and it leaves the window of this water–vapor–permeation film, a resin molding is carried out, and it is produced. The resin molding is carried out by this resin molding also on the diode D1 on the substrate 1a. 1b is an electrode versus a pad, respectively, and the unillustrated signal cable is soldered, respectively.”
This would appear to be as close as JP 06–027011 gets to the inventive concept. There is nothing here that clearly discloses a cavity. The sensors are mounted on an aluminium substrate. The reference to a window does not seem to disclose an opening (i.e. a cavity) in a body that has a window covered by the “water–vapor–permeation film”.
Dr Charlesworth submitted that his application related to extension of the previous work he had done for DSTO. He identified several novel developments which he stated resulted from work perceived and paid for by his company. These were:
1.a composite polypropylene/polytetrafluorethylene water vapor permeable membrane of specific thickness and porosity;
2.a chemically modified inner membrane surface;
3.application of solution humidity sensing to measurement of water in multi‑component solutions;
4.application of solution humidity sensing to metallurgical aqueous solutions;
5.use of humidity isotherms incorporated into microprocessor memory
6.a Teflon–lined humidity sensor chamber
7.a protective perforated cap
However, as the Commonwealth submitted (correctly in my opinion), this type of identification omits the first step of identifying the underlying inventive concept from the specification. The language of the specification is clear. Features 1–7 listed above are not at the heart of the invention. They are clearly preferred features. One must distinguish between those features that are necessary for the invention to work, and those features that make the invention work “better”. As was said by Laddie J in University of Southampton’s Applications [2006] RPC 21:
“In the context of entitlement to a patent a mere, non–enabling idea, is probably not enough to give the patent for it to solely the devisor. Those who contribute enough information by way of necessary enablement to make the idea patentable would count as "actual devisors", having turned what was "airy–fairy" into that which is practical.”
This was followed in UWA (supra).
There is nothing in the specification which suggests that the invention needs more than features (i)–(v) given above to be practical.
In any event, as pointed out by the Commonwealth, Dr Charlesworth provided no evidence of the work carried out after he left DSTO. Therefore, it is impossible to decide what work actually did occur.
In my opinion, features (i)–(v) given above set out the inventive concept of this application.
When was the invention conceived?
It should be noted that conception of an invention does not necessarily mean that the device was actually produced. That goes to reduction to practice, or validation, of the invention. As stated in UWA (supra):
“The time at which the invention was developed and the person by which it was developed is to be ascertained by reference to the inventive concept of the invention so described. The time of invention, and the identity of the inventor will not be affected by the subsequent process of reduction to practice some elements of which may have found their way into the claims in the application.”
As noted above it is the Commonwealth which bears the onus of showing that Dr Charlesworth had conceived of the invention which comprised features (i)–(v) listed above.
In my opinion the evidence clearly shows that the invention was at least conceived and most likely built by Dr Charlesworth while he was employed by DSTO. Notwithstanding the Commonwealth’s burden, a lot of the evidence comes from Dr Charlesworth himself.
In his evidence, Dr Charlesworth clearly admits that, while working at DSTO, he produced a device, which he labels as the “Invention”, that measured the humidity/vapor pressure of a water–sulfuric acid mixture. He also states that a large part of his work was concerned with the application of known principles and copying of designs from available sources, including patents.
Dr Charlesworth states that the “Invention” he conceived of while at DSTO was merely a copy of a device that was disclosed in a published Japanese patent application, JP 05–152008. JP 05–152008 discloses a device that is comprised of an acid–proof body that has a cavity which holds a humidity sensor. The cavity has an aperture which is sealed with a Gore–Tex membrane adhered to the body by silicone rubber. The Gore–Tex membrane was permeable to water vapor. This device, which is for use in aqueous solutions containing one or more non–volatile solutes, has features (i)–(iv).
Furthermore, Dr Charlesworth also states in his declaration that while working on the “Invention” it was necessary for him to have the “Invention” certified by the Safety in Mines Testing and Research Station (SIMTARS) to enable him to conduct experiments using the “Invention” on the Collins Class submarines. The material that was sent by Dr Charlesworth to SIMTARS included blueprints, circuit diagrams, illustrations and specifications of the “Invention” (see paragraph 15 of his second declaration). The Commonwealth produced as evidence a letter to SIMTARS dated 11 December 1997 in which Dr Charlesworth states that the device he wants them to certify includes a tubular plastic electrode containing a water vapor sensor inside the tube and a digital thermometer inside the tube.
Moreover, the Commonwealth presented evidence of materials that had been retrieved from Dr Charlesworth’s laboratory after he had left DSTO. The materials consisted of:
a)a capacitive humidity sensor in a clear tube which had an end terminated with a mesh backed PTFE membrane;
b)further humidity sensors, including one which had an on–board temperature sensing element; and
c)glass tubes which had a cavity created at one end by a separator, the separator having small pin holes whose spacing matched the terminal spacing of the humidity sensors.
Responding to this evidence, Dr Charlesworth stated (paragraph 17 of his second declaration):
“There is no dispute that these tubes were used, or intended to be used, to encase the humidity and temperature sensors. The GORETEX membrane was fixed on the aperture of the tubular case using silicone rubber for adhesion and seal, and immersion in the sulfuric acid in the cells of a lead acid battery. JP 05–152008 clearly covers all these features.”
From all of this, the conclusion that must be reached is that Dr Charlesworth had conceived, and very likely built prototypes, of a device for use in aqueous solutions containing one or more non–volatile solutes having:
(i)a water vapor, humidity or relative humidity sensor;
(ii)a chemically and thermally resistant probe body;
(iii)a membrane at one end of the probe body which allows water vapor to rapidly permeate through it while providing a barrier to aqueous liquids;
(iv)a cavity within the probe body which contains a water vapor sensitive element, with the cavity being isolated by the membrane; and
(v)a temperature sensor located in close proximity to the water vapor sensor,
while employed by DSTO.
For completeness I note that, if I am wrong and the feature of the measuring methods set out in paragraph 40 above is part of the invention, that feature is disclosed in JP 05–152008 at least. In other words, my conclusion would not be different.
Consequently, the inevitable point that is reached is that the Commonwealth is entitled to the patent application under section 15(1)(b) of the Patents Act.
CONCLUSION
For the reasons given above, I find that the Commonwealth of Australia, c/– Minister for Defence is wholly entitled to any patent granted in relation to the invention under Section 32 of the Act. I direct that the application proceed to grant in the name of the Commonwealth of Australia, c/– Minister for Defence, preferably with associated amendments to the patent request and notice of entitlement.
Given that decisions under section 32 are reviewable by the Administrative Appeals Tribunal (“AAT”), I state that this direction will not come into effect until the time period for seeking review before the AAT has expired and no application for review of this decision has been made.
In addition, pursuant to section 36(1), I declare that the Commonwealth of Australia, c/– Minister for Defence is the eligible persons in relation to the invention. Furthermore, although it may not be necessary in this case, I also draw the parties’ attention to section 36(4), whereby a new complete application can be made by declared persons within 3 months (see regulation 3.8).
I note that decisions under section 36 are appealable to the Federal Court under section 36(5). The effect of any appeal under section 36(5) would be to stay any action that the Commonwealth might take under section 36(4) until the appeal is determined.
COSTS
The usual practice for section 32 and 36 matters is that costs are awarded according to schedule 8 unless there are circumstances justifying a variation. I see no reason (and none was advanced by either party) to vary the costs. As to whom to award costs against, the usual practice is that costs follow the event. I see no reason to vary this practice. In this matter Dr Charlesworth has not been successful. I award costs under Schedule 8 against Dr Charlesworth.
GREG POWELL
Delegate of the Commissioner of Patents
03 June 2008
Patent attorneys for the applicant : The applicant was not represented
Patent attorneys for the opponent : Blake Dawson, Melbourne

[2008] APO 16

3 June 2008

Key Legal Topics

Areas of Law

Intellectual Property Law

Legal Concepts

Patent Law

Eligibility for Patent

Inventorship

Standard of Proof