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 explains that air ducts for exhaust air that are installed in wall and ceiling spaces of buildings are typically made of sheet steel. However steel ducts suffer from the problems that they are acoustically poor tending to resonate readily and also their high thermal conductivity can lead to condensation. The specification further states that joints between ducts need to be taped or otherwise sealed.
The invention overcomes these problems by providing a moulded air duct that has an elongated cross-section so that it is capable of being installed in a wall or ceiling space and contains an effective amount of flame retardant. The duct also has complementary male/female joins at the opposite ends and this enables two ducts to be joined together by inserting the male join of one duct into the female join of an adjoining duct.
The duct also has at least one joint site of enlarged cross-section intermediate the ends which can be parted transversely to create complementary male and female joins in the two shorter ducts thus created. The enlarged cross-section is also said to stiffen the duct.
Tubular supports extending between opposite internal walls of the duct can be provided to further stiffen the ducts.
The specification also broadly discloses a method of making the duct by initially blow moulding a parison to form a duct that is closed at both ends with an enlarged join site at one end and has at least one enlarged joint site intermediate the ends. The ends of the parison are then removed to create the final duct with a male join at one end and a female join at the enlarged end.
The specification as accepted ends with sixteen claims. The applicant filed under section 104 an amended set of claims on 21 March 2011 which was yet to be allowed at the date of the Hearing after being advertised on 30 June 2011. At the hearing both parties agreed for me to base my decision on the basis of the amended claims. These amended claims have since been allowed and advertised on 20 October 2011. The amended claims are as follows:
1.A moulded air duct of elongated cross-section capable of installation in a wall or ceiling space which contains an effective quantity of flame retardant, having male/female joins at the ends and at least one joint site of enlarged cross-section intermediate the ends which when parted transversely creates a male and female join.
2.A moulded air duct as claimed in Claim 1, wherein the joins overlap with a clearance which allows sealant to occupy the clearance.
3. A moulded air duct as claimed in Claim 1 or 2, wherein the sides of the duct are of curved section joined by parallel walls.
4. A moulded air duct as claimed in anyone of Claims 1-3, wherein the opposite parallel walls of the duct are joined by integrally moulded struts.
5. A moulded air duct as claimed in Claim 4, wherein struts are located between the joint site and the end of the duct.
6.A moulded air duct as claimed in Claim 4 or 5, wherein the struts are located between joint sites and between the endmost site and the adjacent end.
7.        A moulded air duct as claimed in Claim 4 or 5, wherein the strut is waisted.
8.        A moulded air duct as claimed in anyone of Claims 1-7, wherein the wall thickness is
           2-3mm.
9. A moulded air duct as claimed in anyone of Claims 1-8, wherein the moulding mix contains 6-10% by weight of flame retardant.
10. A moulded air duct as claimed in Claim 9, wherein the flame retardant is a polyhalo acrylate.
11. A moulded air duct as claimed in anyone of the preceding claims, wherein the duct walls are curved in order to tum the flow path through 45 or 90°.
12. A moulded air duct as claimed in anyone of the preceding claims when made by excising the ends from a blow moulded precursor.
13.A moulded air duct or precursor thereof substantially as herein described with reference to and as illustrated in Figures 1, 2 and 6 and as modified by Figure 3.
14.A method of making a duct of elongated cross section by blow moulding a parison to form a duct which is closed at both ends with a joint site of enlarged circumferential cross section at one end and at least one other joint site of enlarged circumferential cross section intermediate the ends and excising both ends to create a male join at one end and a female join at the opposite end.
15. A method as claimed in Claim 14, including connecting the internal faces of the duct with a tubular support in the central area of the duct.
16. An air duct system comprising multiple ducts as claimed in Claim 1, joined end to end arranged to conduct air from a heating or cooling appliance in one part of a building to outlets in rooms in another part of the building with adaptors at the inlet for connecting the duct to hoses of circular section.
EVIDENCE
Evidence in support was completed on 18 October 2010, consisting of statutory declarations by:

Royston Douglas Bull (Bull) dated 8 July 2010 with exhibits RDB1 to RDB14
Terence William Green (Green) dated 14 October 2010 with exhibit TWG1

Evidence in answer was completed on 18 March 2011, consisting of statutory declarations by:

John Gerard Weir (Weir) dated 17 March 11 with exhibits JGW-1 to JGW-18
John Gerard Weir dated 17 March 11 with exhibits JGW-19 to JGW-22
Martyn Laurence Scott (Marty) dated 18 March 2011
Gregory Wayne Scott (Greg) dated 18 March 2011

Icon did not file any evidence in reply.
The Bull declaration
Bull has been the General Manager (Engineering – Product Development and Technical Services) of Icon from July 2004. Icon is a well known designer, manufacturer and supplier of proprietary and custom plastic products for the Australian and international markets. Their products include extruded, blow moulded and injection moulded plastic products. Bull in his capacity as General Manager was responsible for designing and developing proprietary products for Icon’s customers. He is also named as an inventor of a variety of patent applications and design rights.
In late 2004, Greg Scott the named inventor of the present application approached Philip Stone (Stone), an employee of Icon at that time for a quotation for supplying extruded fire rated oval rigid PVC ducting and fittings. Icon was also provided with a length of extruded PVC duct to quote on providing an equivalent product.
Bull says he realised that the oval ducting could also be produced by blow moulding in addition to being extruded and therefore requested the relevant department in Icon to prepare a quote for both extrusion and blow moulding.
In February or March 2005 a meeting was held in the office of Icon, the attendees being Bull and Stone from Icon and Marty and Greg from M & L Scott Pty Ltd, the company licensed to exploit the invention of the application in suit.
At this meeting Bull advised Marty and Greg that their product could also be made by blow moulding using high density polyethylene and that the product could be made fire resistant by including a fire resistant additive in the moulding mix.
Bull further sketched conceptual drawings of certain features that could be included in a blow moulded duct. A copy of these drawings is annexed as exhibit RDB8 and shows an enlarged join at one end of the duct which constitutes the female join, a non-enlarged join at the opposite end which constitutes the male join. It further shows enlarged sections intermediate the ends with handwritten text next to it saying “can be cut into smaller bits”, “m/f” (male/female) and “Blow Mld’d with multiple m/f joins”. Some of the sketches also show how opposed walls of an oval duct can be supported via interengaging inwardly directed posts formed from the opposed walls of the duct. Bull asserts that the ideas conveyed in the sketch drawings originated from him and not from Greg and that these were disclosed to Marty and Greg at this meeting. Bull also verbally gave Marty and Greg indicative prices for the manufacture of the ducts.
Marty and Greg did not contact Bull after this meeting and it was Bull’s belief that they may have found the indicative prices too high.
Australian provisional patent application AU 2005902379 from which the application in suit claims priority was filed on 11 May 2005 a few months after the aforesaid meeting took place. Neither this provisional application nor the application in suit names Bull as an inventor.
The Marty Scott declaration
Marty Scott is the General Manager and Director of M & L Scott Pty Ltd, the company licensed to exploit the invention of the application in suit. The company is involved in the business of manufacturing and installing ventilation ducts in buildings and were the sole distributors in Victoria of “Ovalduct” duct systems supplied by O’Dor Out Systems in Queensland. As they had problems with the supply and quality of the products from O’Dor Out Systems, they decided to look to make an alternative product.
They decided to proceed with an alternative duct design which had been developed by Greg Scott independent of the company. This new air duct design was at this stage in advanced prototype form and included joint segments along its length. Marty discussed with Greg manufacturing options including extrusion and blow moulding. As the company did not have in-house expertise in relation to manufacturing, it approached a number of moulders to assist with the manufacturing and one of these was Icon. They were particularly interested in getting advice concerning a manufacturing process which would enable the prototype product to be manufactured in conjunction with a centre support structure. Greg suggested Icon due to previous connections with Bull.
Greg and Marty met with Bull and Stone at Icon on 9 February 2005. At that meeting Marty produced an example of air ducting for the purpose of explaining the manufacturing objective and sought general advice as to an appropriate manufacturing process. The discussion in relation to manufacturing included both extrusion and blow moulding.
Icon advised that although blow moulding would suit the manufacture of the new product, Icon would not be able to meet their requirements of manufacturing the duct which incorporated support structure. Icon would need at least 12 months to get such a product to the marketplace.
The sketch drawings mentioned in Bull’s declaration were sketched by Bull at the meeting but the ideas conveyed in the sketch originated from Greg Scott and not from Bull.
As it was clear that Icon could not assist the company, Marty and Greg left after about 20 minutes of that meeting.
Marty and Greg subsequently continued their discussion with toolmaker Bawden & Crawford and were able to produce an advanced prototype duct which incorporated the centre support. An order was then placed with BMW plastics in May 2005 to start production.
The Greg Scott declaration
Greg is an employee of M & L Scott and the named inventor of the invention of the present application. He was previously employed as National Sales Manager of Modern Plastic Welding and in this capacity acquired a detailed knowledge of the different processes in the plastics manufacturing industry including extrusion and blow moulding.
He asserts that prior to the meeting with Icon, the product design of the duct was basically completed and that the design features included the profile, male/female socket requirements and the centre support structure. Extrusion as the method of manufacture had almost been ruled out prior to the meeting due to the inability to provide the multiple sockets (which I take to be the enlarged intermediate sections) along the length. HDPE was the chosen material for long term use due to the approaching “green” requirements of the building industry. PVC was however a short term alternative.
He had known Bull when Bull was a Technical Manager at Nylex, Mentone. Bull was a client that would use the services of Modern Plastic Welding to resolve product engineering issues. He confirms that he did attend the aforesaid meeting at Icon with Bull and Stone. The belief that Icon could blow mould the product that he had devised was the only reason for the meeting.
In regard to the sketch drawings, Greg confirms that they were drawn by Bull, but submits that Bull drew these as a diagrammatic understanding of the discussion regarding the product requirements. The only original idea that came out of this meeting was the concept of fastening the ducts through the centre supports.
He asserts that many of the design concepts were not discussed at the meeting as it soon became clear that Icon were not able to provide the short term solution that they were after. Although some of the patent concepts were discussed, these were in relation to non-innovative concepts such as pre-existing materials and techniques. All the substantive features of the duct were already designed prior to the meeting.
As Icon could not meet their needs, they engaged another tool maker and the product was introduced into the market in May 2005.
The first Weir declaration
Weir is a Consulting Engineer specialising in energy and sustainability management engineering with over 25 years experience. He was an Engineering Design Lecturer in the Department of Mechanical and Manufacturing Engineering at the University of Melbourne from 1987-2008.
His evidence in the first declaration mainly relates to the common general knowledge in the art. He states that traditionally air ducts in building were made from galvanised sheet metal and were jointed in sections through prefabricated flanges which were bolted or otherwise assembled together. The ductings were usually of rectangular cross-section but flat oval ducts were also known. Some of the problems that engineers dealing with air ducts had to deal with include noise, vibration, pressure drop, impediments to air flow, turbulence and thermal insulation.
He also refers to a number of publications and journals which he asserts were well known and accepted sources of information that a skilled addressee would have regard to at the priority date of the claimed invention. These include various handbooks published by the American Society of Heating, Refrigeration and Airconditioning Engineers (ASHRAE), the relevant Australian Standards, and the Duct Construction Standards published by the US Sheet Metal and Air Conditioning Contractors National Association (SMACNA). Contents pages of some of these handbooks and standards have been annexed as exhibits.
The second Weir declaration
In the second declaration Weir discusses his understanding of the patent specification and how he interprets various features in the claims. Weir also discusses the various prior art documents mentioned in the statement of grounds and particulars and how the claimed invention is distinguished from these documents.
It is his opinion that the feature of the intermediate joint site of enlarged cross-section is a significant improvement and development over the prior art available at the priority date.
ISSUES FOR DETERMINATION
At the hearing Counsel for Icon made it clear that the applicant’s lack of entitlement was the main ground of opposition that they were pursuing although they were not formally abandoning the grounds of novelty, inventive step and lack of clarity. While in my decision I will consider all grounds raised in the opposition, the primary issue to be resolved is whether Bull made any material contribution to the conception of the invention either independently or together with the named inventor and is therefore entitled to be named an inventor, and in this Icon carries the legal burden of proof.
If Bull is found to be an inventor, either solely or jointly, a secondary consideration arises as to whether the applicant has accrued any rights in the invention from Bull.
STATUTORY FRAMEWORK
Section 15(1) provides that 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 personal representative of a deceased person mentioned in paragraph (a), (b), or (c).
Thus section 15(1) contemplates the grant of a patent only to a person who falls into one of the four specified categories. As stated in Vrubel v Upham [1997] APO 51, these categories include the actual inventor as well as persons deriving title from the inventor by way of assignment, an employer-employee relationship, or a collaborative relationship.
ONUS OF PROOF
Icon accepts that it bears the onus of establishing each of the grounds of opposition. The standard of proof that Icon must satisfy is the “higher standard” identified by Justice Emmet in F Hoffman La-Roche AG v New England Biolabs Inc [2000] 99 FCR 56; 50 IPR 305 at [67]:
“The language employed in the cases to which I have referred suggests that it should appear clear to the Court that no patent granted in respect of the specification would be valid. I consider that, before the Court would uphold an opposition to the grant of a patent, the Court should clearly be satisfied that the patent, if granted, would not be valid.”

That 'higher standard' is however, only to be applied to a finding of fact if that finding itself comprises the test for determination from the Patents Act. It does not apply to findings in relation to the underlying primary facts. In Austal Ships Pty Ltd v Stena Rederi Aktiebolag [2005] 66 lPR 420 Justice Bennett J explained this as follows at [12]:
“I can accept that a lower standard may apply to proof of evidence such as whether a document has been published or, indeed, whether a prior art vessel was well-known. I do not accept that it properly applies to the factual question that itself is the test for obviousness or lack of inventive step. Where the factual question is itself the legal test, as set out in s 7(3) of the Act, it seems to me that it should be determined at the higher standard.”
INVENTORSHIP
The law in relation to inventorship and entitlement was recently considered by the Full Court of the Federal Court of Australia in University of Western Australia v Gray [2009] FCAFC 116. The Court accepted that entitlement is assessed by considering three matters:
1) Identify the “inventive concept” of the invention as defined in the claims;
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; and
3) Determine if contractual or fiduciary relationships between the parties at the time of the inventorship give rise to the proprietary rights in the invention.
As noted by French J, the inventive concept marks the boundary between invention and verification. Thus, inventorship ends at the time of conception and is distinct from verification and reduction to practice. He referred to the following principles as established by US appellate courts:
·Conception is the touchstone of inventorship, the completion of the mental part of inventions.
·Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
·An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
·It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
In Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9 the Federal court noted that in determining inventorship ‘what one is normally looking for is “the heart” of the invention. There may be more than one “heart” but each claim is not to be considered as a separate “heart” on its own’ (per Jacob LJ in Markem Corp.v Zipher Ltd [2005] All ER 377).
The inventive concept
The opponent submitted that the inventive concept of the invention as defined in the claims is the feature of the enlarged cross-section portions intermediate the ends of the duct and that this is clearly supported by Weir, the applicant’s expert witness who in paragraph 122 of his second declaration states “in my opinion, the introduction of an intermediate joint site or sites along the length of the duct segment, constituted, as at the priority date, a significant improvement and development over the prior art”.
The applicant did not contest that the feature of the enlarged intermediate joint site was the key inventive feature of the invention, but submitted at the hearing that the inventive concept is not this feature on its own, but this feature in combination with the other features of claim 1.
While the claim is a combination claim in which all the features interact and work together, the inventive concept of the claimed invention generally lies in those features that constitute the improvement over what was known from the prior art.
It is clear from the Weir declarations that the other features of the claimed invention including blow moulding and the use of an effective amount of flame retardant were common general knowledge in the art. Weir does not explicitly state that the use of male and female ends to join lengths of pipes was common general knowledge in the art, however it is my view from my own knowledge that this feature is well known in the art of joining pipes to form a pipeline. I find some support for this from one of the prior art cited in the International Search Report of the application in suit which clearly discloses the use of male and female ends to join pipes.
That leaves the feature of the enlarged intermediate joint sites. As discussed earlier, these joint sites permit the duct to be cut into shorter lengths by cutting across the joint site to create two shorter ducts having complementary male and female joins at their ends. The opponent has not provided any evidence to establish that this feature was disclosed in any prior art or was common general knowledge in the art. Mr Weir who is an independent witness, on the other hand clearly submits that in his opinion, this feature is novel and inventive and constitutes a significant improvement over the prior art. In addition to paragraph 122 that the opponent alluded to, Weir also makes similar comments in paragraphs 108-111 and 153 of his second declaration.
Therefore based on the evidence presented I am convinced that the inventive concept of the claimed invention lies in the incorporation of the enlarged cross-section joint portions intermediate the ends.
Who was responsible for the inventive concept?
Both Bull and Greg Scott claim that the incorporation of the enlarged cross-section joint site intermediate the ends of the duct was their idea. There are no minutes or other written record of what was discussed at this twenty minute meeting.
Greg’s version of the meeting and how he had arrived at the design of the new duct prior to the meeting is corroborated by Marty Scott. However Marty is not an independent witness being the brother of Greg and also the General Manager of M & L Scott.
Icon submitted that Stone was no longer working for Icon and could not be contacted to corroborate Bull’s version of events, but in any case even if Stone had corroborated Bull’s version, his version would also carry only the same weight as that of Marty being an employee of Icon at the time of the meeting.
Either version of who suggested the concept of the enlarged intermediate joint sites might conceivably be an accurate depiction of actual events, but as they are diametrically opposed I must in the absence of any direct evidence on the matter determine which version of events is to be accepted on the basis of inferences drawn from the surrounding circumstances and the witnesses' credibility, bearing in mind the onus which Icon must satisfy.
In making this determination I think it will be useful to first summarise the facts that are not in dispute and those that are in dispute.
Facts not in dispute or contested
·M & L Scott were distributors in Victoria of the “Ovalduct” duct systems supplied by O’Dor Out Systems. These ducts and fitting were made from fire rated rigid PVC, with the ducts being made by extrusion and the joiners being made by injection moulding.
·Marty Scott made enquiry with Philip Stone of Icon in December 2004 for supply of a 338x60mm air duct which had to mate with an injection moulded joiner and be made from rigid PVC. This is supported by an Icon internal document dated 20 December 2004. The dimensions are almost the same as the “Ovalduct” product.
·The meeting between Marty, Greg, Bull and Stone took place on 9 February 2005 in the offices of Icon.
·At the meeting Marty provided Bull with a length of extruded rigid PVC duct, a joiner and an oval to circular transition fitting. Photographs of these products have been provided by Icon. The fittings in these photographs look very similar in design to the fittings shown in the “Ovalduct” product brochure.
·At the meeting manufacturing techniques and some design concepts for the duct were discussed and these included blow moulding, incorporation of the centre supports and use of fasteners through the central supports to hold the ducts to a support structure.
·During the meeting Bull sketched conceptual drawings of certain features that could be included in a blow moulded duct. These sketches and the text written on them clearly show an enlarged join at one end of the duct which constitutes the female join, a non-enlarged join at the opposite end which constitutes the male join. It further shows enlarged sections intermediate the ends with handwritten text next to it saying “can be cut into smaller bits” and “Blow Mld’d with multiple m/f joins”. Some of the sketches also show how opposed walls of an oval duct can be supported via interengaging inwardly directed posts formed from the opposed walls of the duct.
·The only drawings/photographs of an air duct filed in evidence that predate the drawings of the provisional application and which shows the enlarged intermediate joint site are those sketched by Bull.
·On 11 February 2005, two days after the meeting Stone sent an email to Bull advising that Marty has given the price they are currently paying for the PVC extruded duct.
·There was no further contact between the Scotts and Bull after the meeting on 9 February.
Facts in dispute
The main facts that are in dispute are
·Why were the product samples provided to Icon
·Who came up with the concept of the enlarged intermediate joint sites and use of blow moulding as the manufacturing possibility as shown in the sketches drawn by Bull.
Submissions from the parties
Icon put up a number of submissions which they say support their case that it was Bull who came up with the inventive concept.
·Firstly the only drawings of the inventive air duct that have been filed in evidence by both parties and which predate the drawings of the provisional patent application are those sketched by Bull. If Greg had indeed come up with the concept and the design was in an advanced stage prior to the meeting as he claims, why were there no drawings of this new design?
·If there were drawings why did the Scotts not bring these drawings to the meeting to explain to Icon what they were after rather than relying on verbal communication to explain the design.
·Marty Scott states that the new air duct was in advanced prototype form prior to the meeting whereas Greg Scott states that the product design had been completed and was in advanced concept form as opposed to prototype form.
·If Marty and Greg realised during the meeting that Icon could not blow mould the product in the short term why did they leave a sample duct with Icon. Also the sample duct that they left with Icon does not feature the enlarged intermediate portions.
·If the design of the new product had been completed prior to the meeting why did neither Marty or Greg raise the issue of confidentiality when they disclosed this new design to Bull and Stone during the meeting, especially if they were considering filing a patent application shortly thereafter to protect this new design.
The applicant provided the following submissions to counter those put up by Icon
·Icon’s failure to file evidence in reply to refute the declarations of Marty and Greg Scott both of whom stated that the inventive design had already been conceived prior to the meeting, and also to file evidence from Stone corroborating Bull’s version of the meeting supports the Scotts’ version of what transpired at the meeting and that this should therefore be accepted.
·The drawings filed with the provisional application were those of the applicant and these clearly show all the features of the claimed invention.
·In relation to the product samples this was given to Icon to explain the manufacturing objective and to seek general advice as to an appropriate manufacturing process.
·Marty or Greg did not specifically raise the issue of confidentiality as this was implied.
Is Bull an Inventor?
The declarations from Marty and Greg Scott are very sketchy in relation to the features of the new product and especially the feature of the enlarged cross-section site intermediate the ends which I have earlier decided is the inventive concept or the heart of the invention. Greg Scott the stated inventor has made a number of statements in his declaration to support his claim to be the inventor of the subject matter of the claimed invention.
“prior to attending the meeting at Icon Plastics the product design was basically completed. The design features included profile, male/female socket requirement and a need for structure in the centre of the part…..design of a 45 degree bend that allowed it to cut in half for flexibility and still retain male/female ends” (paragraph 7).
“When I attended that meeting, the idea for the ventilation ducting as described in the Patent Application, especially the claim to a method as appears in claim 14, was already formed in my mind” (paragraph 14) and
“I had designed the substantive features of the product, which was at an advanced concept form, when Martyn and I attended at that meeting” (paragraph 23).
However nowhere does Greg explicitly mention the feature of the enlarged intermediate joint site. The closest reference to such a feature is the reference to “45 degree bend that allowed it to cut in half for flexibility and still retain male/female ends”. While it does not explicitly state that it has an intermediate joint site of enlarged cross-section, the fact that the cut parts would need to still retain male and female ends could be taken to imply this feature. Figure 3 of the patent application shows a corner component 20 with an enlarged section close to the male join 4.
Other than the above statements, the declaration from Greg Scott lacks detail as to when or how he came up with the concept of the intermediate joint site and whether he ever made any technical drawings or sketches of the new air duct design including the intermediate joint site.
It is indeed surprising that M & L did not make their own drawing or sketch of the inventive product to take to the meeting with Icon the primary purpose of which they submit was to seek manufacturing options for this new air duct design. When trying to explain engineering designs it is needless to say that a picture is worth a thousand words.
The inconsistency in the statements from Greg who states that the design was in an advanced concept stage and from Marty who states that it was in an advanced prototype stage further makes it unclear whether any sample had been made prior to the meeting. No drawing or photograph of any prototype sample has been adduced in evidence.
In relation to the product samples Marty Scott submits that this was given to Icon to explain the manufacturing objective and to seek general advice as to an appropriate manufacturing process. However it is clear from the photographs provided by Icon that these samples do not include the inventive concept of the enlarged intermediate cross-section or even the male and female joins at opposite ends.
If the purpose of the meeting was to come up with manufacturing options for the new prototype design they had allegedly come up with, why would they provide Icon with a product sample that has very little resemblance to their new design which is the subject matter of the claimed invention. Their evidence does not answer this question. Even at the hearing counsel did not address this issue.
Icon’s evidence clearly shows that the products left with Icon appear very similar to the “Ovalduct” products that M&L Scott were currently sourcing from O’Dor Out Systems. Marty admits that they were having supply and quality issues with the product from O’Dor Out and they have not disputed Icon’s evidence that they had sought quotes from Icon for a similar product two months prior to the meeting. The email from Stone to Bull dated 11 February 2005 also suggests that Marty had contacted Stone around the time of the meeting or soon thereafter to give him the prices they are currently paying for a similar product.
The evidence that I have been presented strongly suggests that the product samples given to Icon were for the purpose of providing a quote for a similar product. Therefore while the meeting did discuss manufacturing options, I conclude that the product samples given to Icon were for the purposes of providing a quote for an existing product and not for explaining the manufacturing objectives for any new design.
The failure to take any technical drawings to the important meeting to discuss manufacturing options and then leaving with Icon sample products that bear little similarity to the claimed invention casts serious doubts on the veracity of the statements of Marty and Greg. The only drawings of the product showing the enlarged intermediate join site and which predate the filing date of the provisional application are those sketched by Bull at the meeting. Internal documents produced by Icon clearly establish that they had prepared quotations for supply of ducts similar to the Ovalduct design which the applicant was having trouble sourcing. The submission that Marty or Greg regarded the confidentiality issue as implied presents an extremely naive position of Marty or Greg, if that is correct. The fact that confidentiality was not raised seems more likely to be because the Scotts had little if anything to contribute in relation to the enlarged intermediate join site.
When I consider all of the above, the only inference that I can possibly come to is that Bull’s version of what transpired at that meeting is to be preferred over those of Marty and Greg Scott. It therefore follows that it was Bull who came up with and suggested the concept of the enlarged intermediate joint sites and sketched it at the meeting to explain to Marty and Greg Scott how it could be incorporated into their air duct. As I have already found that the inventive concept lies in the incorporation of the enlarged intermediate joint site in the air duct, it follows that Bull is an inventor of the claimed invention.
Is Greg a joint inventor?
I now need to determine whether Bull is the sole inventor or is Greg Scott also an inventor of the claimed invention. The conception of the invention was basically complete when Bull sketched it and showed it the Scotts, as the sketches clearly show the feature of the male and female ends, the enlarged intermediate join site and the concept of blow moulding the air duct. The subsequent work involved in manufacturing the product falls under “verification” or “reduction to practice”.
The Full Court in University of Western Australia stated the following in relation to reduction to practice (at [248]):
“remains that a putative inventor or putative joint inventor must have made a material contribution to the invention. What [Polwood] illustrates is that the reduction to practice of an inventive concept may or may not require an invention or inventive step. If not, reduction to practice does not demonstrate inventorship.”
Bull does not make any claims to have any involvement in reduction to practice of the claimed invention.
Did Greg Scott make any inventive contribution to the reduction in practice? Marty Scott in paragraph 27 of his declaration states that as Icon was not in a position to assist in the manufacturing process, they decided to continue their discussion with toolmaker Bawden & Cramond and as a result the Company was able to achieve production of the formally advanced prototype by blow moulding. Similar statements are made by Greg Scott in paragraph 24 of his declaration.

Apart from these statements, there is nothing in evidence to establish that Greg Scott made any material contribution to the reduction to practice and even if he did that his contribution involved an inventive step. Therefore I am unable to find Greg Scott as a joint inventor of the claimed invention. Bull is therefore the sole inventor.
Is Laurence Clifford Scott entitled to the invention?
Having found that Bull is the sole inventor, is Laurence Clifford Scott the patent applicant entitled to the grant of the patent for the patent application in suit? Is he an eligible person who falls into one of the four specified categories in section 15(1). I have been provided with no evidence from either party to suggest, let alone establish, that there was any assignment, employer-employee relationship or a collaborative relationship between Bull and Laurence Clifford Scott. I therefore find that the applicant Laurence Clifford Scott is not entitled to the grant of a patent on the application in suit.
Is Icon entitled to the invention?
It is clear from the evidence filed by Icon that Icon was the employer of Bull at the time he conceived the invention. Icon have further submitted that if Bull is found to be an inventor, that Icon as his employer would be entitled to the grant of the patent. I have not been presented with any evidence that would suggest otherwise. As Bull has been found to be the sole inventor, I also find that Icon is an eligible person entitled to the invention.
NOVELTY AND INVENTIVE STEP
At the hearing Icon stated that they do not wish to press the grounds of novelty and inventive step. Despite this I have considered the documents that they relied on in their Statement of Grounds and Particulars and I could not find any disclosure in these cited prior art that would make the claimed invention not novel or lacking an inventive step. Therefore I find that the claimed invention is both novel and inventive over the documents raised in the Statement of Grounds and Particulars.

While not raised by either party, it is clear from the evidence that the Bull sketches were produced before the priority date of the claimed invention and they disclose all the features of claim 1 except that of the inclusion of the flame retardant. Do these sketches therefore constitute prior art information that can be used to anticipate the claimed invention?

For the sketches to be prior art information, they need to have been publicly available before the priority date. The meeting at which Bull made these sketches clearly took place in the context of a commercial relationship between Icon and M & L Scott where various manufacturing options were discussed. I have been presented with no evidence to suggest that the sketches were made for any other purpose or that they were disclosed to any persons other than those present at that meeting. Also they are clearly not documents that the public could have acquired by consulting some source open to it. Hence it is my view that the Bull sketches are not documents that would constitute relevant prior art information as defined in Schedule 1 of the patents act and therefore there is no need for me to decide whether the sketches anticipate the claimed invention.
LACK OF CLARITY
While the Statement of Grounds and Particulars and the declaration of Mr Bull identified a number of clarity issues, at the hearing Icon only made submissions in relation to the following issues:
Claim 1- “effective amount of flame retardant”
Icon submitted that the above phrase in claim 1 lacks clarity as the specification does not explain what is meant by the term “effective”. They also referred me to claim 9 which requires that the moulding mix contain 6-10% by weight of flame retardant. It was therefore their view that a notional skilled addressee could not know whether the amount of flame retardant that they chose to incorporate was at a level that would or would not be within the scope of the claim.
Mr Weir for the applicant submits that a skilled addressee would be aware that moulded air ducting is required by statutorily enforceable standards to satisfy strict criteria regarding flammability in fire conditions and that the skilled addressee would interpret the phrase “effective quantity of flame retardant” as meaning a quantity of flame retardant sufficient to ensure compliance with the requirements of the governing standards.
I fully agree with Mr Weir. It is not uncommon to find phrases such as “effective amount” or “effective quantity” within claims to define the quantity of a particular constituent and a person skilled in the art would be able to arrive at the effective amount or quantity of the constituent for the particular purpose it is being used for either through their common general knowledge or through routine trial and error. I see the present instance of such a term in claim 1 as being no different. This phrase in claim 1 is therefore clear.
Claim 1 – “at least one joint site of enlarged cross-section intermediate the ends which when parted transversely creates a male and female join”
Icon submitted that the specification is silent as to what feature must be present in the moulded product to facilitate a transverse parting thereby creating a male and female joint. While they admit that it is possible as suggested by Mr Weir in his declaration to cut the enlarged cross-section at one extremity in order to obliterate the transition in cross-section at that terminus, they argued that the claim does not include any such limitation as to where the transverse parting should occur and therefore it lacks clarity.
I do not see a lack of such a limitation in claim 1 as detracting from the clarity of the claim. As submitted by Mr Weir a skilled addressee would understand that it is possible to transversely part the enlarged cross-section in such a manner as to create a male join and a female join. This phrase in claim 1 is therefore clear.
In relation to the other lack of clarity issues raised in the statement of grounds and particulars and not pressed at the hearing, Mr Weir submits that these would be clear to a skilled addressee and I agree. I did not find any clarity issues that could not be readily resolved by a skilled addressee. I therefore find all the claims are clear.
CONCLUSION
Royston Douglas Bull came up with the concept of the enlarged intermediate joint site and is the sole inventor of the invention.
Greg Scott is not an inventor and Laurence Clifford Scott is not entitled to the grant of a patent for the invention.
Icon is a person who would be entitled to the grant of a patent for the claimed invention.
Section 33(1) of the patents act provides as follows:
1) Opposition to standard patent if a person other than nominated person eligible for grant of patent
If:
(a) an application has been made for a standard patent; and
(b) the grant of the standard patent is opposed under section 59 by one or more persons; and
(c) the Commissioner decides, under section 60, that:
(i)one or more opponents are eligible persons in relation to the invention, so far as claimed in any claim of the opposed patent application (the original claim); and
(ii) the nominated person in respect of the application is not an eligible person in relation to the invention; and
(iii) there is no other reason that a patent should not be granted; and
(d) a complete application is made under section 29 by one or more of the eligible persons for a patent in relation to the invention;
the Commissioner may grant those eligible persons a patent jointly for the invention, so far as so claimed.
Consequently, it is it is now open to Icon to invoke the provisions of sec 33(1) and file a new application under sec 29. It is also essential that the new application does not claim new matter or include claims falling outside the scope of the claims of the present application. In accordance with regulation 3.8, I allow Icon 3 months from the date of this decision to file a new application to my satisfaction.
COSTS
Costs generally follow the event. The opposition has been successful on the ground of lack of entitlement. Accordingly I award costs according to Schedule 8 against the applicant Laurence Clifford Scott.
Ranganath Subbarayan
Delegate of the Commissioner of Patents