Vrubel v Upham - [1997] APO 51

official notice

decision of a delegate of the commissioner of patents

Application : No. 664804 in the name of Victor Vrubel and Dan Vrubel

Title: Vaporised Gas Flow Control

Action: Request under section 32 by John Upham concerning inventor and applicant status; Hearing.

Decision: Issued
Abstract

John Upham requested to be included as a co-inventor with Victor and Dan Vrubel for the application, and further requested that he and Ronda Upham be included as co-applicants with Victor and Dan Vrubel for the application. The background to the request is that John and Ronda Upham had approached Victor Vrubel to develop a particular component for a fuel injection system they were developing. After supplying the necessary components a working relationship ensued between the parties. Victor and Dan Vrubel claim they developed the present invention some time after the initial contact but during this working relationship period. Patent application 664804 was filed after the working relationship ended following some disagreement between the parties. John and Ronda Upham had filed various provisional patent applications concerning the system they were developing prior to the filing date of application 664804.

The question of whether some additional material, filed by John Upham shortly before the hearing, should be admitted into the proceedings was also considered. John Upham did not appear and was not represented at the hearing.

The additional material was admitted into the proceedings.

Found that, on the balance of probabilities, Victor Vrubel and Dan Vrubel are the sole joint inventors of the metering and control apparatus being the invention disclosed in the specification of patent application 664804, and that John Upham is neither the sole inventor or a joint inventor for that invention.

Found that, on the balance of probabilities, John and Ronda Upham are not eligible persons in relation to the metering and control apparatus being the invention disclosed in the specification of patent application 664804 and that Victor Vrubel and Dan Vrubel are the sole eligible persons in relation to the invention as so disclosed.

Costs awarded against John Upham and in favour of Victor Vrubel and Dan Vrubel.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Patent Application No. 664804 by VICTOR VRUBEL and DAN VRUBEL and a Request under section 32 by JOHN D UPHAM.

background

On 17 June 1994 Victor and Dan Vrubel (the Vrubels) filed a complete patent application for an invention entitled “Gas Flow Control”, the application being numbered 64822/94. The patent request identified provisional application PM0400 filed on 6 August 1993 as an associated application for the purposes of section 5 of the Patents Act 1990 (the Act). Following examination and amendment actions, the application was advertised accepted on 30 November 1995 and given the serial number 664804. The patent request states that the Vrubels are the inventors and nominated persons for the application.

On 28 March 1996 John D Upham (Upham) filed a belated notice of opposition to the application and requested an extension of…

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: [1997] APO 51
Decision Date: 14 October 1997

CaseChat Overview and Summary

Vrubel v Upham was a decision by a delegate of the Commissioner of Patents concerning a request under section 32 of the Patents Act 1990. John Upham requested to be included as a co-inventor with Victor and Dan Vrubel for the patent application, and further requested that he and Ronda Upham be included as co-applicants with Victor and Dan Vrubel for the application. The application was for a metering and control apparatus for an internal combustion engine. The dispute arose from a working relationship between the parties, and the parties had filed various provisional patent applications concerning the system they were developing. John Upham did not attend the hearing. The court admitted additional material filed by John Upham shortly before the hearing. The court found that, on the balance of probabilities, Victor Vrubel and Dan Vrubel are the sole joint inventors of the invention and that John Upham is neither the sole inventor nor a joint inventor for that invention. The court also found that, on the balance of probabilities, John and Ronda Upham are not eligible persons in relation to the invention and that Victor Vrubel and Dan Vrubel are the sole eligible persons in relation to the invention as so disclosed. Costs were awarded against John Upham and in favour of Victor Vrubel and Dan Vrubel.

Orders