Thomson CSF v Schlumberger Holdings Limited - [2001] APO 11

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 18832/97 in the name of Thomson CSF

Title: Method for controlling the navigation of a towed linear acoustic antenna, and devices therefore.

Action: Application under Section 36(1) by Schlumberger Holdings Limited for a declaration regarding entitlement to an invention disclosed.

Decision: Issued .
Abstract

In the unusual circumstances of this case the Section 36 applicant was seeking a finding on the facts that would exclude the present application from the prior art base for the purpose of its own application 53305/98. That is, the intention was to enliven the provisions of Section 24(1)(b) on the basis of a disclosure in the present application of confidential information.

Found that a determination in relation to Section 24 was not appropriate in the present circumstances but that the finding on the facts in this matter may be relevant in some degree to the Section 24 issue which may arise ex parte during examination of 53305/98. Nevertheless under Section 36 Schlumberger Holdings Limited was found to be jointly entitled to the invention disclosed. The information passed to the patent applicant, while further developed and leading to a somewhat different implementation, nevertheless was a material contribution to the invention. Costa v GR & IE Daking Pty Ltd (1994) 29 IPR 241 applied.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 18832/97 by Thomson CSF and an application under Section 36(1) by Schlumberger Holdings Limited for a declaration regarding entitlement to an invention disclosed.

BACKGROUND

This Section 36 action arises in somewhat unusual circumstances.

Thomson CSF (Thomson) filed an International Application under the PCT (PCT/FR97/00263) on 11 February 1997 with a priority date of 11 February 1996. This application designated Australia but did not enter the national phase in this country although it was pursued elsewhere including the United States (see US 6144342). The situation in Australia however is that by virtue of Section 88 a PCT application designating Australia must be treated as a complete application under the Act. Consequently the application became a complete application in Australia, was allocated the Australian application number 18832/97, but subsequently lapsed because of the failure to enter the national phase. More importantly in this case is that the application, or rather the published specification filed in respect of it, became part of the prior art base for the determination of novelty as defined at paragraph (b)(ii) of the definition in Schedule 1. This component is relevant to what is known as a "whole of contents" novelty consideration where a invention defined can be found to lack novelty over the specification of an Australian Patent specification that, while published later, has an earlier priority date.

Schlumberger Holdings Limited (SHL) filed its application 53305/98 on 19 December 1997 as PCT/GB97/03507. That application is titled "Control devices for controlling the position of a marine seismic streamer" and claims a priority date of 20 December 1996. The application…

Grounds of appeal

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

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

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

Consideration

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

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

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Details

Case: [2001] APO 11
Decision Date: 5 March 2001

CaseChat Overview and Summary

Schlumberger Holdings Limited (SHL) applied for a declaration under Section 36 of the Patents Act 1990, seeking to establish that Thomson CSF (Thomson) was not the rightful owner of an invention disclosed in patent application 18832/97. The dispute arose from a confidentiality agreement between Thomson Sintra Activités Sous-Marines, a subsidiary of Thomson, and Geco A.S., a company within SHL's group. Geco had shared a feasibility study on streamer control devices with Thomson Sintra Activités Sous-Marines, which was later used as the basis for Thomson's patent application. SHL argued that the information shared breached the confidentiality agreement and that they should be recognised as joint owners of the invention.

The legal issues before the court were whether SHL could be declared an eligible person for the invention in question and if so, whether they were entitled to sole or joint ownership. The court considered the contributions made by both parties to the development of the invention and whether these contributions were material. The analysis required understanding the nature of the collaboration and the extent to which each party's work influenced the final invention.

The court found that SHL made a material contribution to the invention disclosed in application 18832/97. The feasibility study provided by Geco to Thomson Sintra Activités Sous-Marines contained key concepts that were further developed by Thomson Sintra Activités Sous-Marines, leading to the final invention. The court applied the principle that a person is entitled to an invention if their contribution, either alone or jointly with others, had a material effect on the invention. In this case, SHL's initial concept and development work were integral to the invention's final form. Consequently, SHL was declared jointly entitled to the invention. However, the court found it difficult to conclude that SHL was solely entitled to the invention as defined in claim 1 of the application, given that Thomson Sintra Activités Sous-Marines made significant additional contributions.

The court did not address the potential implications of its findings on SHL's application 53305/98, which was the primary concern for SHL. The court noted that any determination regarding the novelty or inventive step of SHL's application should be made by the Commissioner during the examination of that application, where SHL could raise the issues of consent and confidentiality breach more appropriately. The court did, however, allow SHL 60 days to file a proposed declaration of entitlement, subject to Thomson's response and any further hearing if necessary. Costs were awarded to SHL as Thomson had contested the claims vigorously.

Orders