v Laurence Clifford Scott - [2011] APO 84

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Icon Plastics Pty Ltd v Laurence Clifford Scott [2011] APO 84

Patent Application: AU 2006246325

Title:Air Duct

Patent Applicant:  Laurence Clifford Scott
Opponent:  Icon Plastics Pty Ltd
Delegate:  Ranganath Subbarayan
Decision Date:  3 November 2011
Hearing Date:  10 August 2011, in Canberra
Catchwords:  PATENTS - opposition to the grant of a patent under section 59 –
entitlement to grant of patent – novelty – inventive step – clarity - opposition succeeds on grounds of lack of entitlement only

Representation: Patent applicant: Mr Richard McCormack of Counsel instructed by Sandercock & Cowie
Opponent:Mr Craig Smith of Counsel instructed by Robert Wood & Associates

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: AU 2006246325

Title:Air Duct

Patent Applicant: Laurence Clifford Scott
Date of Decision: 3 November 2011
DECISION

Royston Douglas Bull is the sole inventor of patent application 2006246325. The opponent, Icon Plastics Pty Ltd, is an eligible person entitled to the grant of the patent on the claimed invention. I allow Icon Plastics Pty Ltd 3 months from the date of this decision to file a new application under section 29.
REASONS FOR DECISION
BACKGROUND
Patent application 2006246325 in the name of Laurence Clifford Scott was filed on 11 May 2006 under the provisions of the PCT, and became open for public inspection in Australia on 16 November 2006. It claims priority from Australian provisional application AU 2005902379 filed on 11 May 2005. Examination was requested on 10 September 2008 and acceptance advertised on 29 October 2009.

On 28 January 2010, Icon Plastics Pty Ltd (Icon) served a notice of opposition to grant of a patent under section 59 of the Patents Act 1990, followed by a statement of grounds and particulars on 19 April 2010.

Evidence in support was completed on 18 October 2010 and evidence in answer was completed on 18 March 2011. Icon did not file any evidence in reply.

The matter was heard in Canberra on 10 August 2011. The applicant was represented by Mr Richard McCormack of Counsel and the opponent was represented by Mr Craig Smith of Counsel.

GROUNDS OF OPPOSITION

The grounds for opposing the grant of a patent under section 59 as identified in the statement of grounds and particulars are the following:

1. Section 59(a)(i) and (ii)
The nominated person is not entitled to a grant of a patent for the invention defined in the patent application claims as the application does not fully or correctly identify the inventors nor establish a proper chain of title to the nominated person from all of the inventors.
2. Section 59(c)
The specification filed in respect of the complete application does not comply with section 40(3).
3. Section 59(b)
The invention defined in the claims of the patent application is not a patentable invention because it does not comply with subsection 18(1)(a) and subsections 18(1)(b)(i) or 18(1 )(b)(ii).
SPECIFICATION

The specification is entitled “Air duct” and relates to a moulded air duct and a method of making the same. It…

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: [2011] APO 84
Decision Date: 3 November 2011

CaseChat Overview and Summary

Icon Plastics Pty Ltd (Icon) opposed the grant of a patent to Laurence Clifford Scott (Scott) on the basis that Scott was not entitled to the grant of a patent for the invention. Icon claimed that the inventor of the invention was Royston Douglas Bull (Bull), an employee of Icon, and that Scott was not entitled to the grant of a patent. The primary issue for determination was whether Bull made any material contribution to the conception of the invention and was therefore entitled to be named as an inventor. If Bull was found to be an inventor, the secondary consideration was whether Scott had accrued any rights in the invention from Bull. The court held that Bull was the sole inventor and Scott was not entitled to the grant of a patent for the invention. Icon was entitled to the grant of a patent for the invention. The court allowed Icon 3 months from the date of this decision to file a new application for a patent. The opposition was successful on the ground of lack of entitlement and the applicant was ordered to pay the costs of the proceeding.

Orders