Ultralite International Pty Ltd v Gin Pang So
[1996] APO 60
•5 December 1996
official notice
decision of a delegate of the commissioner of patents
Application: No. 651368 in the name of Ultralite International Pty Ltd
Title:Improvements in Electronic Ballasts
Action:Opposition by Gin Pang So
Decision:Issued .
Abstract
Opposition successful. On the evidence provided, Ultralite International Pty Ltd is not entitled to the grant of a patent for the invention claimed. The invention claimed is also not novel in light of Australian patent specification 555355.
In relation to the question of entitlement, the evidence indicates that the opponent was the inventor of an invention falling within the ambit of the claims and that this invention was obtained from his employer Ultralite Ltd (Hong Kong). Space‑Cell Systems (Aust.) Pty. Ltd. v. E.P.M. Concrete Pty. Ltd. (1979) 49 AOJP 2018 applied.
Application refused.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 651368 in the name of Ultralite International Pty Ltd and opposition by Gin Pang So
background
Siew Ean Wong (Wong) filed complete patent application 83492/91 on 29 August 1991 claiming priority from provisional application PK2084 filed on 31 August 1990. On 8 July 1994 the applicant filed a divisional application 67333/94 which was advertised accepted on 29 August 1996. The present application 83492/91 (651368) was advertised accepted as on 21 July 1994. Based on an assignment of the invention dated 22 July 1994, the application was then transferred from Wong to Ultralite International Pty Ltd (ULIPL). The declaration filed in support of the application indicates that Thien Siung Yang (Yang) is a joint inventor of the invention and that he assigned his right to the invention to Ms Wong.
Mr Gin Pang So (So) filed a notice of opposition on 29 September 1994 and served a statement of grounds and particulars on 29 December 1994. Evidence in support was served on 29 July 1995.
The applicant did not file evidence in answer and the matter came to hearing in Canberra on 16 October 1996. Mr R Walton, patent attorney, and Mr C Schieber, of Griffith Hack & Co, Sydney represented the opponent. The applicant did not appear.
The grounds of opposition are those listed in section 59 paragraphs (a), (b) and (c). Of these the issues argued in substance at the hearing were that:
the nominated person was not entitled to the grant of a patent for the invention;
the claimed invention was not novel and lacked an inventive step when compared with the prior art base; and
iii. the complete specification did not describe the invention fully, including the best method known to the applicant of performing the invention.
evidence
The evidence in support comprises:
A statutory declaration made by Mr So with exhibits GPS1 - GPS11 addressing the issue of the applicant’s entitlement. The exhibits are:
GPS1 - a copy of the present specification;
GPS2 to GPS4 - circuit diagrams used by So to illustrate his claim to be the inventor of the invention of the present application;
GPS5 to 10 - letters written by So and Yang in relation to their business dealings (in Chinese with certified translations); and
GPS11 - a copy of a transcript of a deposition made under oath by Yang before a Notary Public in the Commonwealth of Massachusetts on 23-24 January 1995. This deposition contains a direct examination of Yang on the facts surrounding the issue of inventorship in relation the present invention.
A statutory declaration made by Mr Selwyn Yuen, president of Ultra Canada Ltd., supporting So’s claim to inventorship.
A statutory declaration made by Koichi Hayashi, electronics engineer, including statements relating to the issues of novelty, inventive step and compliance with section 40. The exhibits are:
KH1 - a copy of the present specification;
KH2 and KH4 - Hayashi’s redrawing of figure 3 of the specification;
KH3 - a copy of Australian patent specification 555255 (AU-B-15523/83) published on 18 September 1986; and
KH5 - a redrawing of figures 15 to 18 of that specification to emphasise the similarities with the present invention.
I will refer to relevant parts of the evidence where appropriate in my decision.
specification
The specification begins by stating that the invention relates to compact ballast circuits for fluorescent lamps. It goes on to refer to the problem of existing ballasts having very high current harmonic distortion and a low power factor between 0.45 and 0.6.
These disadvantages are said to be ameliorated by a ballast circuit as defined in the claims. In particular the specification refers to a diode connected between the rectifier bridge and smoothing capacitors to force the lamp to draw current directly from the rectifier in those portions of the half cycle where the supply voltage is less than the voltage across the smoothing capacitors.
The claims are:
“1. A ballast circuit for a fluorescent lamp, said circuit including a rectifier bridge coupled to an AC source and providing a pulsating DC supply voltage, a mylar capacitor connected across the output of the rectifier bridge, a lamp drive capacitor connecting a junction of the mylar capacitor and the rectifier bridge with a first terminal of the fluorescent lamp load, a diode and smoothing capacitor means serially connected across the rectifier bridge whereby in operation of the circuit said mylar capacitor charges said smoothing capacitor means, an oscillator circuit coupled to the output of the rectifier bridge and an inductance connected between the output of the oscillator circuit and a second terminal of the fluorescent lamp load wherein said diode is polarised so that during half cycles of the supply voltage when the supply voltage is less than the voltage on the smoothing capacitor means said diode blocks current from flowing from the smoothing capacitor means through the lamp drive capacitor to the fluorescent lamp load so that said fluorescent lamp load draws current directly from the rectifier bridge to thereby improve the power factor and reduce harmonic distortion of the ballast circuit.
2. The ballast circuit as claimed in claim 1 where said diode is a high speed switching diode.
3. The ballast circuit as claimed in claimed 2 wherein the power factor is improved to better than .9.
4. The ballast circuit as claimed in claim 3 wherein the smoothing capacitor means comprises two capacitors to reduce the physical size of the circuit.”
DECISION
Entitlement
In the present case the issues pertinent to deciding the entitlement of the nominated person ULIPL to the grant of a patent are the same as for the ground of “obtaining” under the Patents Act 1952. To prove obtaining under the 1952 Act, it was necessary to establish:
a)What is the invention that has allegedly been obtained;
b)Whose invention it was when the alleged obtaining occurred;
c)That the claim defines, or includes within its ambit, the invention allegedly obtained;
d)That the applicant actually obtained the invention from the opponent, or from a person of whom the opponent is the legal representative, assignee, agent or attorney, prior to the priority date of the claim.
Space‑Cell Systems (Aust.) Pty. Ltd. v. E.P.M. Concrete Pty. Ltd. (1979) 49 AOJP 2018.
a)What is the invention that has allegedly been obtained;
The answer to this question is found in paragraphs 9 to 19 of So’s declaration. He begins by discussing a circuit he designed in 1988 while working as senior R&D engineer for Ultralite Ltd (Hong Kong) (ULHK). This he says is represented in the diagram GPS-2 which is substantially identical to figure 1 of the present specification. In paragraph 14 So states that in April to June 1990 he and other engineers at ULHK searched for a way to improve the power factor of the GPS-2 circuit.
In April and early May So had discussions with Yang about the problem and indicates that Yang stated “what would be immediately apparent to and understood by any electronics engineer, that the power factor would be improved by widening or spreading the peaked narrow wave form of the mains supply current during each half-cycle in the main supply voltage. However, he did not suggest how this could be achieved.”
At paragraph 17 So explains the solution that he developed including changes to the inductor, rectifier and placement of a diode between the rectifier and smoothing capacitor to widen the current peak producing higher power factor with low harmonic distortion. GPS-4 is a copy of a diagram made on 6 July 1990 which So says incorporates his idea although So says at paragraph 18 that the configuration was devised prior to “late May” when he gave details about it to Yang. GPS-4 has many similarities with figure 3 of the present application although some details of the oscillator circuit are different. So indicates that he continued to work on the circuit after leaving ULHK for a newly formed company, Levin Electronics.
Thus the invention alleged to have been obtained is the modification of the GPS-2 circuit including a diode between the rectifier and smoothing capacitor as shown in GPS-4 so as to improve the power factor and harmonic distortion.
b)Whose invention it was when the alleged obtaining occurred;
So’s evidence that he was an employee of ULHK at the time he says he made the invention is supported by Yang’s deposition (GPS-11) at pages 160 and 161. Although So may have had a financial interest in other companies including possibly ULIPL, there is nothing in the evidence to suggest that as a R&D engineer any invention produced by him in his normal duties would not have belonged to his employer ULHK. There was obviously a close working relationship between ULIPL and ULHK not the least because of Yang’s involvement as a director in both companies, however Yang’s deposition indicates that there was no agreement between the companies relating to developments made by ULHK. In fact ULHK was set up to commercialise products developed by ULIPL (pg 14) but even this did not appear to be covered by a formal agreement apart from an “understanding” that ULHK would be given first refusal on products developed by ULIPL (pg 150-151).
So also says at paragraph 4 of his declaration that he did not assign his rights as inventor to Yang, Wong or ULIPL, although as I have indicated above, by virtue of his employment I do not believe he had rights which he was entitled to assign. Thus it appears that the invention made by So was owned by ULHK at the time the alleged obtaining occurred. To whom the rights may have passed when the company dissolved early in 1991 is not apparent from the evidence at hand however because of the other players involved it appears unlikely that the assets of the company flowed directly to ULIPL, Yang, Wong or So.
c)That the claim defines, or includes within its ambit, the invention allegedly obtained;
Claims 1 to 4 all clearly include within their ambit the invention allegedly obtained and described by So in relation to exhibit GPS-4.
d)That the applicant actually obtained the invention from the opponent, or from a person of whom the opponent is the legal representative, assignee, agent or attorney, prior to the priority date of the claim.
I am satisfied that the invention claimed was obtained by Yang, or Yang and Wong, from ULHK and subsequently assigned to ULIPL. In coming to this conclusion I have taken into account the following factors apparent from the opponent’s evidence:
The letter written by Yang to So dated 2 December 1990 (GPS-7 & 8) is consistent with So’s account. In particular I note the passage:
“We seek a third person to register for the patent of the Hi Power Factor Lamp because I want to protect all of us from getting trouble from Ultralite. The patent, of course, belongs to all of us, it should be shared by all of us. I hope you will not regard it as your own achievement. Yes, I agree that the product is designed mainly by you; but the design was done during the time you worked for Ultralite as an employee (or as the effort working as the shareholder of King Chong) It is the crystallisation of many people’s ideas, experiences and efforts. Even some people who never entered the laboratory performed the blocking functions, faced and dealt with troubles so that you could devote all your efforts in designing the product. Some other people put forward their valuable ideas. Do you remember once I argued with you on the subject of harmonics? At that time I insisted that the harmonic problem be solved by converting the electric current from [waveform diagram] to [waveform diagram], simply by suppressing the peak and spreading it evenly to two sides”
Yang’s deposition is unconvincing particularly on the issue of inventorship and is consistent with the view that Yang’s only contribution, if you could call it that, was a broad statement of the problem, ie “spreading the peaked narrow wave form of the mains supply current”. It also supports the view that Wong was not a co-inventor by indicating that Wong had no technical qualifications and did not contribute technically to the solution. In this regard there is nothing in the evidence to suggest the invention would not have occurred without Yang or Wong’s involvement (Harris v. CSIRO 26 IPR 469) or that their contributions were “material” (Tribe v. Ranken 1 IPR 561).
In the deposition at page 123 Yang states that the “breakthrough” came in “May, June or possibly July” of 1990. However in Yang’s faxed letter to Selwyn Yuen dated 20 July 1990 (GPS-10) he indicates that “in the months of May, June and July, I was not allowed to do nay [sic] R & D work. Instead, I had to devote all my time in preparing English documentation of all the current available Products.”
The naming of Wong as the applicant until after acceptance, and as an inventor, is consistent with an attempt to hide the patent from ULHK and perhaps initially from ULIPL, particularly given the doubts about her contribution to the invention and the fact that she was not employed by ULHK or ULIPL. It is also supported by GPS-10 which suggests that Yang was prepared to work behind the back of others at ULIPL to benefit his manufacturing interests with So, presumably at that stage involved in setting up Levin Electronics.
The opponent’s evidence is uncontested, plausible, consistent and supported by contemporary documents.
On this basis I find that the ground of opposition in relation to the entitlement of the nominated person has been made out and consequently I must refuse the application.
Novelty
While my finding above decides the opposition I will comment briefly on the other main ground, that is, that the claims lack novelty in light of Australian patent 555355 (AU-B-15223/83) published on 18 September 1986.
In considering this issue I have no reason to doubt that the evidence provided by Koichi Hayashi is technically credible and reliable, being both independent and unchallenged. Consequently I accept Mr Hayashi’s interpretation of the present specification and citation and also his conclusion that the circuit of figures 15 to 18 of the citation is substantially identical to the circuit defined in claim 1 and operates to achieve exactly the result defined. I agree that it is the capacitive effect that is significant rather than the arrangement or type of capacitive elements used to achieve that effect.
In this light it is reasonable to interpret the connection of the a drive capacitor specified in the claim and the requirement for a mylar capacitor as inessential features of the invention (Catnic Components v Hill and Smith Ltd (1982) RPC 183). Therefore the invention claimed in claim 1 is not novel in that all the essential features are disclosed in the citation (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228, Nicaro Holdings v Martin Engineering 16 IPR 545).
The remaining claims all add features of mere design choice that are also clearly inessential. Accordingly I find that all the claims are anticipated by Australian patent 555355.
conclusion
I have found that Ultralite International Pty Ltd is not entitled to the grant of a patent on the present application and that claims 1 to 4 lack novelty.
Consequently I refuse the application.
In relation to the divisional application 67333/94 I note that a notice of opposition has now been filed. While that opposition must proceed independently before the Commissioner it is evident that my findings in this case may provide a basis for any findings involving similar considerations.
Costs
I award costs against the applicant Ultralite International Pty Ltd.
P M Spann
Delegate of the Commissioner of Patents
Patent attorneys for the opponent: Griffith Hack & Co, Sydney
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