Vrubel v Upham
[1997] APO 51
•14 October 1997
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 time in which to file such notice. A delegate of the Commissioner refused to grant the extension. Upham applied to the Administrative Appeals Tribunal for a review of the Commissioner’s decision but subsequently discontinued that action. On 24 October 1996 Upham filed a request under section 32 of the Act.
By advice dated 5 December 1996 the Commissioner informed the parties of the procedure to deal with the section 32 matter. In particular a time period was set for Upham to file his evidence in support of his request, and a time period allowed for the Vrubels to file any evidence in response - the matter was then to be set for hearing. Both the Vrubels and Upham indicated they wished to be heard by the Commissioner in the matter (reg 3.6). Upham completed filing his supporting evidence on 2 January 1997 and the Vrubels filed their evidence in response on 12 February 1997. The matter was set for hearing in Canberra on 17 June 1997. On 2 June 1997 Upham filed additional material in this matter which Upham described as “in response to their (the Vrubels) evidence”. I will discuss this additional material later in this decision.
For the hearing on 17 June 1997, the Vrubels were represented by Mr G Halford, a patent attorney of Halford & Co, who appeared by telephone. Upham did not appear.
THE SECTION 32 REQUEST
The request
In his Section 32 request Upham requests the Commissioner to determine:-
the person who may proceed with the application, and
the manner of proceeding with that application.
The facts on which Upham relies are given as follows in the request:
“Notwithstanding that I believe I am the sole inventor of the invention described in application No 664804 and my wife Ronda G Upham and I should be the only applicants as shown in provisional Nos PL8775 PL9698 PL9899 PM0064 PM0767
I would like the Commissioner to determine the dispute under S32 as recommended by the AAT by adding my name John D Upham as a co-inventor with Mr Victor Vrubel and Mr Dan Vrubel and my wife Ronda G Upham and myself John D Upham as co-applicants with Mr Victor Vrubel and Mr Dan Vrubel.”
Within the terms of section 32 of the Act, John and Ronda Upham are each an “interested party”. The legislative provisions enable the Commissioner to make a determination to the effect as indicated in the request. However before making such a determination the Commissioner needs to be satisfied from evidence provided that the claims of the requestor are established and the determination is justified and appropriate.
Evidence by Upham
With his request on 24 October 1996 Upham filed the following:
a copy of a statutory declaration by him dated 28 March 1996* #
a copy of a statutory declaration by him dated 1 April 1996*
a copy of a statutory declaration by him dated 11 June 1996.*
* these were originally filed in respect of the belated notice of opposition action.
# original had what appears to be applicant copies of provisional specifications
PL9899 (sic, PM0064), PL9698 & PL8775 attached.
Upham completed his evidence on 2 January 1997 when he filed:
a copy of a statutory declaration by him dated 2 January 1997 with 13 attached sheets
a copy of provisional specification PM 0064 dated 22 July 1993 (Applicants: John & Ronda Upham - Inventor: John Upham). Upham specifically asked that this specification be included with his evidence.
The Vrubels evidence
The Vrubels filed their evidence on 12 February 1997 which consisted of
a statutory declaration by Victor Vrubel dated 11 February 1997 with 1 attached sheet.
Additional material filed by Upham
On 2 June 1997 Upham filed additional material which consisted of
a statutory declaration by him dated 2 June 1997
a statutory declaration by Vince Metham dated 2 June 1997
a copy of Australian patent specification 581143 (referred to in Upham’s declaration).
In addition a copy of the specification of Provisional patent application No. PL9698 dated
1 July 1993 referred to in his statutory declaration was supplied by Upham on 30 June 1997 to be included in this evidence.
Admissibility of the additional material
At the hearing I indicated that I needed to decide whether to admit the additional material filed by Upham into the proceedings. The Commissioner had established a timetable for filing evidence on 5 December 1996 and this material was filed outside that timetable. I invited Mr Halford to make submissions on the question of admitting this evidence. I indicated to him that if I decided to admit the material I would afford the Vrubels an opportunity to respond to it by submissions and/or evidence.
Mr Halford said that since the application had been accepted in November 1995, there had been considerable delays, firstly due to Upham’s belated opposition action, then the aborted AAT appeal, and now his section 32 action. He said there was nothing from Upham to justify why the additional material should be allowed into the proceedings now, especially as it appeared to include new matter going beyond any “reply” to the Vrubels evidence. He submitted Upham did not justify leniency from the Commissioner in respect of the question of admitting this material. He asked for costs if this material was admitted.
Subsequent to the hearing I wrote to Upham and invited any submissions from him providing reasons to support the admittance of the additional material at this stage of the matter. I indicated that in deciding whether to admit this material I would need to consider matters such as the following:
a)Is the further evidence such that its relevance was not reasonably contemplated at an earlier stage of the matter? Has the party providing the further evidence been diligent in prosecuting the matter?
b)Is the further evidence based on the nature thereof likely to have an important influence on the result of the case, in the sense that it would contribute to a more correct, just, or expeditious result?
c)Would there be any injustice done to the other party if this further evidence were allowed?
d)Would allowing this further evidence cause unnecessary protraction of the action?
Upham replied on 30 June 1997 with submissions directed to the questions in the paragraphs above. In summary he indicated that the additional evidence was necessary to correct inaccuracies in the Vrubels’ evidence “in order for there to be no doubt that they have no legal entitlement to the invention” and explain further some of the points raised by their evidence.
After considering the submissions I decided to admit the additional material filed by Upham. Upham’s reasons for providing the material at the late stage of proceedings are not overly compelling, however his submissions suggest that he would be disadvantaged and denied natural justice if the material was suppressed from the action. Given the nature of the action, which concerns deciding entitlement, I am mindful that any material likely to assist in reaching a more correct and just decision on the matter should, unless there be some compelling reason to the contrary, be available to the Commissioner. In deciding to admit the material I did not consider that the section 32 action would be greatly protracted or the Vrubels necessarily suffer any injustice given its admittance - the Vrubels would have an opportunity to respond to the additional material in a timeframe of their choosing. On balance I considered that the overall delay occasioned by admitting the additional material was offset by the likelihood of a more correct and just decision being possible in the section 32 matter. In my view the Vrubels are entitled to costs in relation to admitting this additional material - I will include this in the costs award later in this decision.
Further submissions
After deciding to admit the additional material I gave the Vrubels an opportunity to respond to it by submissions and/or evidence. They responded on 21 August 1997 by way of written submissions provided by Mr Halford.
THE INVENTION
The invention the subject of application 664804 relates to internal combustion engines and particularly to apparatus to enable such engines to run on Liquefied Petroleum Gas (LPG). The invention is defined in claim 1 as follows:
“An apparatus for enabling an internal combustion engine to operate on a vaporised gaseous fuel supplied to the engine under positive pressure, said apparatus comprising firstly a vaporised gas metering means for connection to a pressurised source of said vaporised gaseous fuel and adapted for fitting into the air intake duct of said engine, the metering means comprising a barrel which is connectable to a vaporised gaseous fuel supply line from said source of vaporised gaseous fuel and which extends from a housing into the air supply duct, the operative end of the barrel including a slot through the wall thereof, and a slotted head rotatable within said barrel by a stepper motor so that the slot in said head aligns with the slot in said barrel in varying degrees to allow a graduated flow of the vaporised gaseous fuel from the barrel into the air intake duct, and secondly a microcontroller which in use of the apparatus produces phase shifted control signals for the vaporised gas metering means whereby said vaporised gas metering means may be operated to selectively control the amount of vaporised gaseous fuel entering said air intake duct in accordance with the signals from the microcontroller.”
Thus the invention, which enables the control of vaporised gaseous fuel to an engine, relates to apparatus which in broad terms has two main components,
a vaporised gas metering means of particular form, specifically having a rotatable slotted (discharge) head driven by a stepper motor allowing varying graduated gaseous fuel flow, and
a microcontroller to produce phase shifted control signals to enable selective control of the gas metering means.
BASIS FOR MR UPHAM’S CLAIM
Mr Upham did not attend the hearing and so the basis for his claim in respect to this application must be gleaned from the materials he has filed. I note that while Upham makes specific reference to 6 of his provisional specifications in his evidence or letters in this matter, he has only formally introduced two of these as part of his supporting evidence, namely PM0064 and PL9698. The provisional applications identified by Upham all lapsed under section 142(1) of the Act and no complete applications are associated with any of them (see Section 38). Consequently none of these specifications have became open to public inspection under section 55 of the Act. However by including copies of PM0064 and PL9698 in evidence, Upham has published his own provisional specifications and I can refer to them in this decision. It is not however open to me to refer to any others not in evidence.
I will now refer to Upham’s evidence.
Upham’s statutory declaration dated 28 March 1996 (“Upham 1”)
Upham states that
“IN 1991 (sic, “Upham 5” states 1990) Mr Victor Vrubel an electronics engineer .... was engaged to develop electronic control equipment for my Automotive Gas Injection System covered in Provisional Specification Nos PL8775, PL9698, PL9899, PM0064 with a view to Mr Vrubel manufacting (sic) the electronic equipment if the invention was successful. On 10/11/92 a confidentiality agreement was signed giving Mr Vrubel sole Australian manufacturing rights to the electronic equipment.”
He then briefly refers to matters around August 1993 involving he and Mr Vrubel - these are also referred to in other declarations and I will refer to them in detail later.
The “confidentiality agreement” referred to by Upham is in evidence and its existence is not denied by the Vrubels. I will refer to it later.
Upham’s statutory declaration dated 1 April 1996 (“Upham 2”)
Upham states he is the inventor of the gas injection system described in application 664804 (AU65822/94) not Victor and Dan Vrubel. He also states:
“When they both started working for me they knew nothing about gas injection or automotive electronic injection.
As well as being given the Australian manufacturing rights to the electronic control equipment as they requested they were paid for the development of the electronic equipment and also paid for the electronic components.
Over the last twenty years a great many Provisional patent Application have been submitted by myself on a vapour inject system continually upgrading the system.”
He also says that Caringbah Automotive Research is the business name he and his wife Ronda operate under.
Upham’s statutory declaration dated 11 June 1996 (“Upham 3”)
This declaration filed in respect of Upham’s belated opposition action, refers to Upham’s activity in filing provisional patent applications. He says that his provisional applications PL8775, PL9698, PL9899, and PM0064 “all with priority dates earlier than Mr Vrubel’s provisional patent application PM0400 describe the invention in detail as it is described in Patent Application No 664804 and does not contain anything novel in the way of electronics”.
Upham also says he had legal advice in August 1993 to the effect that Vrubels “was ineligible to lodge a provisional patent application for this invention” because of his (Upham’s) patent activity and the confidentiality agreement.
Upham’s statutory declaration dated 2 January 1997 (“Upham 4”)
The full text of this declaration is as follows:
“On behalf of my wife Ronda G Upham and myself that we have been developing an automotive electronic gas injection system for more than ten years with each improvement covered by a provisional patent application before it was shown to anyone. These were drafted by myself in the name of Caringbah Automotive Research a business name shared with my wife and then from May 1993 in my wife’s and my own name. Copy of AIPO database enclosed. In 1990 Mr Victor Vrubel an electronics engineer of 11 Drake Ave Caringbah NSW was engaged to develop electronic control equipment for my automotive electronic gas injection system as covered by Provisional Specification No PM0064 22/07/1993 (copy enclosed) with a view to Mr Vrubel manufacturing the electronic equipment if the invention was successful. Mr Dan Vrubel joined his father in the project at a latter date. Mr Vrubel was selected even though he knew nothing about automotive electronic injection because he lived locally.
On 10/11/1992 a confidentiality agreement was signed giving Mr Vrubel sole Australian manufacturing rights to the electronic equipment (copy enclosed).
Mr Vrubel and his son did such an excellent job with the electronics they were paid for their work even though not covered in our agreement (copy of invoices included).
I also approached GO GAS on behalf of Mr Vrubel for him to repair the electronics on the LPG dispensers at their service stations to which they agreed.
During our working relationship gas and electronic components were purchased using Mr Vrubel’s Electronic Advance order numbers and sales tax number 2714523 but paid for by Caringbah Automotive Research (copies of just some of the invoices included).In August 1993 Mr Vrubel removed the software from the electronic control equipment and demanded that his name and that of his son be included in our patent application.
In a letter dated 18 August 1993 (copy enclosed) he informed me that he had lodged a provisional patent application covering the electronics of the system. I was advised by other electronic engineers that there was nothing novel in the electronics and I also had legal advice that he had breached the terms of the agreement and so the agreement was terminated (copy of solicitors letter enclosed).
Within the next twelve months we had developed a completely new improved electronic gas injection system and because of financial restraints and because we had wanted to apply for overseas patents we did not proceed with the complete Specification.”
Sheets attached to this declaration included a printout from AIPO’s Patent Office database listing by number a series of Australian provisional patent applications in the name of Caringbah Automotive Research or John D Upham or John and Ronda Upham, thirty in all. Also included are copies of 7 invoices spanning the period 18 October 1990 to 22 May 1993 to Caringbah Automotive Research from Electronic Advance with indications of payments received. The one sheet “confidentiality agreement” referred to by Upham is also attached - it is reproduced in full as Appendix A to this decision. A copy of provisional specification PM0064 dated and filed on 22 July 1993 was also supplied with this declaration.
The 18 August 1993 letter referred to by Upham in the “Upham 4” declaration is a letter from Victor Vrubel to John Upham which I will call the “Vrubel’s August 1993 letter”. It is headed “Automotive LPG Vapour Injection” and refers to the joint development project and problems between the parties, including completing the “development of the electronic control equipment for the operation of the LPG injection system undertaken by Electronic Advance”, completing one testing phase and the development and manufacture of the pre-production sample. The letter then states:
“In the last few days we contacted you with a view of making suitable arrangements for the installation and final testing of the pre-production sample in the test vehicle. Your response was that you were not interested in any further co-operation with Electronic Advance on this project. As a reason you cited our reluctance to hand-over to you the completed software. I made it clear to you earlier that the electronic control equipment was developed by Electronic Advance at our own cost and you had no right to it. We were willing to complete the project if you would only provide us with an acceptable undertaking. This would guarantee the participation of Electronic Advance in your patent application lodged for the whole system incorporating jointly developed components, such as the metering valve assembly operated by the rotating stepper motor. You declined even to discuss giving any such undertaking to us.”
After referring to the agreement of the 10 November 1992 between the parties, it being clear that Vrubel still considers the agreement in force, Vrubel’s August letter concludes:
“We think it relevant for you to know that the electronic control equipment for the operation of LPG injection system developed by Electronic Advance in the past two years is protected by a provisional patent application.”
Upham’s statutory declaration dated 2 June 1997 (“Upham 5”)
This declaration formed part of the additional material filed by Upham, said to be “in response” to the Vrubels evidence. In clause 1 Upham declares:
“The idea for using a rotary gas metering valve controlled by a stepper motor in an automotive gas injection system came to me from reading AUB 60536/86 Rotary Fuel Metering Device (copy enclosed).”
He then states that the Vrubels were engaged to provide “electronic control for the metering valve designed by myself” (clause 2), and that the “first prototype of the metering valve as described in Patent Application 664804 was manufactured the first week of July 1993 by Mr Vince Metham” and fitted to the test vehicle the same week (clause 3), and that the Vrubels had access to the test car until 22 July 1993 (clause 4). (Metham states in his declaration which is in evidence that he made a metering valve as stated by Upham from drawings provided by Upham.)
Upham says that 4 of his provisional applications all described the gas injection system with various designs of metering valve controlled by a stepper motor “which I do not wish to be made public at this time”. He has however submitted another of his provisional specifications, PL9698 dated 1 July 1993, as evidence. (Clauses 5 and 6.)
In the 3 final clauses of this declaration Upham refers to some advice to him from patent attorneys concerning the gas injection system and of the Vrubels claim to be included in Upham’s patent applications (clause 7), to the Vrubels knowing he had provisional applications covering the “Gas Injection System” (clause 8), and that Go Gas Australia who provided the test car and some financial backing “believed that I was the sole inventor of the Gas Injection System as described in Patent Application No 664804 and that my wife and myself had exclusive legal rights to that invention” (clause 9).
THE VRUBELS EVIDENCE
The Vrubels evidence is a declaration by Victor Vrubels dated 11 February 1997. In clause 1 Victor Vrubel states he is “a designer of electronic equipment, operating under the trading name of Electronic Advance” and indicates he declares “on my own behalf and on behalf of my son Mr Dan Vrubel as follows”. The declaration includes a further 39 clauses which “include an historical outline of dealings between the disputing parties” (essentially covered in clauses 6-30) and otherwise refer to Upham’s evidence. I have included as Appendix B a summary or quoted fully the main statements and claims from this declaration using numbers equating with the clauses of the declaration. I have emphasised by bold type certain text in that summary.
SUBMISSIONS
Mr Halford’s submissions elaborated on a number of matters which I briefly list following.
In determining inventorship/ownership matters for an invention the subject of a patent application, principles of common law apply, and there needs to be “clear evidence and justification” to delete or include an inventor or applicant.
Clauses 2 and 3 of the confidentiality agreement indicates the extent of the undertakings of the parties - there is no mention of intellectual property of any kind, even though Upham was conscious of the patent system at the time. After the date of the agreement the present invention came into being.
The evidence of the Vrubels (clauses 16, 17) indicates that in early 1993 they realised that full digital control of the metering valve was needed and the invention was developed by them.
17 March 1993 is significant being the date of invoice No. 5 for “Design and assembly of electronic control unit for testing of LPG metering valve driven by stepper motor. EFIGAS - Stage 3.” (Clause 18 of the Vrubels evidence.)
The evidence of Upham is completely lacking on any technical contribution regarding the invention - in fact it was because he had no skills in electronics that he had originally engaged Victor Vrubel.
The mere existence of provisional patent applications filed in July 1993 by Upham including references to a stepper motor and microcontroller is not conclusive evidence of inventorship.
Upham (in “Upham 5”) provides no corroborative evidence or supporting explanation regarding when he got ideas from application AU 60536/86. Further Upham has failed to provide any corroborated contribution by him to the invention.
For John and Ronda Upham to be co-applicants for the application they need to show some legal entitlement. The Vrubels were not employees of Upham, thus there was no master and servant relationship. Furthermore the confidentiality agreement gave no such entitlement.
DECISION
I am mindful in deciding this matter that I have not had the benefit of submissions by Mr Upham since he chose not to attend the hearing. However I do have the various items of evidence he has filed in this matter and so my assessment of his request will follow from my understanding of the facts insofar as I can glean them from his evidence. In matters such as this, the onus rests on the party making the request to provide clear and compelling grounds and reasons which support the claim. To conclude that there should be some change in the inventor or applicant status for this application I agree with Mr Halford that there needs to be clear evidence and justification.
Also, in deciding a matter such as this, the Commissioner is entitled to act on any material which is "logically probative" of the issues under decision. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see eg. Dunlop Holdings Ltd's Application [1979] RPC 523). In the present matter I must consider the evidence and decide the issues mindful of these general parameters.
Inventorship
The question here is whether John Upham is a co-inventor in respect of the invention disclosed in the specification of application 664804.
As I have indicated previously, the invention disclosed, which enables the control of vaporised gaseous fuel to an engine, relates to apparatus which has two main components,
a vaporised gas metering means of particular form, specifically having a rotatable slotted (discharge) head driven by a stepper motor allowing varying graduated gaseous fuel flow, and
a microcontroller to produce phase shifted control signals to enable selective control of the gas metering means.
Upham’s evidence
From Upham’s evidence I think it is evident that he has been involved with some proposals relating to automotive gas injection systems for some time, including prior to 1991. The precise nature of the proposals he was developing prior to 1991 has not been described by Upham. Upham however states in several of his declarations that certain of his provisional applications “describe the invention in detail as it is described in Patent Application No 664804” but the only provisional applications placed in evidence are two filed in July 1993. In “Upham 4” Upham declares:
“..... In 1990 Mr Victor Vrubel an electronics engineer of 11 Drake Ave Caringbah NSW was engaged to develop electronic control equipment for my automotive electronic gas injection system as covered by Provisional Specification No PM0064 22/07/1993 (copy enclosed) with a view to Mr Vrubel Manufacturing the electronic equipment if the invention was successful. ...”
I have some difficulty with this evidence. It suggests that Victor Vrubel was to develop control equipment for a system as described in the mentioned provisional specification. But as that patent application was filed more than two years after Upham first approached Victor Vrubel, and as Upham says he has covered development improvements by new provisional applications, I cannot be certain that his “system” in 1990 was as in his provisional application PM0064. Upham provides nothing else from which I can determine what his system or proposal was in 1990 or for that matter through to 1 July 1993.
Regarding provisional applications PL9698 and PM0064, in each the invention is said to be “a micro-processor controlled rotary metering injection valve for gaseous fuel injection systems.” The descriptions refer to vaporised LPG flowing “to a gas solenoid valve 5 which controls the flow on or off from a signal from LPG micro-processor 8. The gas then flows through metering valve injector 6 controlled by LPG micro-processor 8, which receives a signal from petrol Electronic Control Unit (EGU) 9 which calculates fuel requirements from sensors mounted on engine 12.” Later the description says that the injector valve 6 is controlled by stepper motor 7 controlled by micro-processor 8. Whilst a particular form of rotary metering valve is shown and described there is no elaboration of the “LPG micro-processor 8” or the “CNG micro-processor 8” (CNG meaning “compressed natural gas”). Other provisional applications said by Upham in “Upham 5” to show various designs of stepper motor controlled metering valves are not in evidence - only one of these was filed before 1 July 1993, on 13 May 1993.
In “Upham 5” Upham says he got the idea of using a rotary gas metering valve operated by stepper motor from AU 60536/86 (first published in February 1987). Importantly he does not say when he first saw this specification and got this idea and nothing else to link “this idea” with the development of the “system”. Thus, given Upham’s evidence on this point, the best that I can conclude is that at 1 July 1993 Upham documented a proposal for the use of a rotary gas metering valve operated by a stepper motor controlled by a micro-processor of unknown nature.
Upham’s evidence is devoid of any proposals he may have developed for electronic control of his “automotive electronic gas injection system”. His evidence refers to engaging Victor Vrubel “to develop electronic control equipment” thus suggesting it was up to Vrubel to “develop” what was necessary to control the system (See “Upham 1” and the confidentiality agreement). Nowhere in the evidence before me, other than in the July 1993 provisional specifications, does Upham separately refer to micro-processor or microcontroller control of his injection system.
Metham in evidence states that in early July 1993 he made a metering valve “as described in patent application No 664804” from drawings by Upham. This evidence is only of help to the extent that it coincides with the disclosure of the use of such a valve in Upham’s 1 July 1993 provisional application - it provides no support or information about what Upham had proposed at earlier times and nothing to establish inventorship of the invention disclosed in application 664804. I note that application 664804 did not even exist as of early July 1993.
I agree with Mr Halford’s submission that the fact some disclosure is in a patent specification does not necessarily establish inventorship of proposals incorporating such disclosure.
The Vrubels evidence
An initial observation regarding the Vrubels evidence is that there is considerable detail given regarding the history of the involvement of Victor Vrubel, and later his son, with Upham and of the technical developments between 1990 and 1993. I also note that in “Upham 5”, the declaration filed by Upham “in response to” the Vrubels evidence, Upham has not raised issue with much of what the Vrubels have stated - essentially the details in clauses 6-22 of the Vrubels evidence have not been specifically disputed. Overall I believe I can give similar weight to the Vrubels evidence as I can to Upham’s.
The Vrubels admit that Upham had devised an injection system for LPG in 1990, which they say used “an on/off pulsating valve”. Victor Vrubel agreed to develop the required “pulsation rate control circuit for the system”. Invoices dated between October 1990 to March 1991 in evidence from Upham tend to confirm that Vrubel was paid for this work. According to Vrubel, in early 1992 he suggested a different valve and “then developed a suitable electronic gas flow control device for the analogue metering valve”. Vrubel says the development of this electronic gas flow control device was at his own expense and at this early stage Vrubel reserved all rights to the control device. (Clauses 6-8.)
Around mid 1992 Dan Vrubel became involved by developing computer software for an onboard computer to interface Victor Vrubel’s analogue control circuit with the then test vehicle’s electronic control unit. Dan Vrubel was paid for his initial work by Victor Vrubel who was later reimbursed by Upham. In November 1992 the agreement between Upham and Vrubel was made. Dan Vrubel continued to be involved as further development work was needed on the onboard computer and software. (Clauses 10-15.)
The Vrubels evidence is that in “early 1993” they “invented a way of controlling the gas flow by the use of a rotational electric stepper motor in place of the electric servomotor employed up to that time. The idea was put in practice ....”. According to clause 17, the Vrubels performed the development and changes to the electronic gas flow control device. By March 1993 a test unit was constructed by the Vrubels to enable adjustment of the gas flow using a stepper motor operated valve. (Clauses 16-18, fully quoted in Appendix B.) I have quoted from Invoice No 5 in referring to Mr Halford’s submissions.
The Vrubels evidence asserts that “the electronic gas flow control device” played an increasing significant role in the whole LPG system and was the “truly novel part” and was their idea exclusively. (Clauses 19-22 and 36.)
The Vrubels evidence also indicates that at various times in 1993 they sought to be included in Upham’s patent applications as co-inventors/co-applicants (clauses 19-22, 24 and 28). In evidence the Vrubels briefly refer to a number of provisional specifications which Upham filed prior to July 1993. As these specifications have not been introduced as evidence and have not been published under the Patents Act I cannot have regard to them.
In summary, the Vrubels evidence indicates a strong, tending to exclusive, involvement in developing the electronic gas flow control device for the gas injection system, particularly the use of a stepper motor and analogue metering valve and the computer control of these. From the Vrubels evidence these developments were after the initial approach from Upham to Victor Vrubel to supply an electronic circuit controlling the variable pulsation rate of an on/off pulsating valve, and before 17 March 1993.
Other evidence
The agreement between Upham and Victor Vrubel dated 10 November 1992 (Appendix A) is, to my mind, unhelpful on the question of inventorship of the invention in application 664804. The agreement itself provides no details of the “electronic control equipment” or of the “Automotive LPG Vapour Injection” (the “Project”). It says nothing about rights to intellectual property for components or inventions developed during the currency of the agreement in respect to the “Project”.
The only other evidence which is of some note is Vrubel’s August 1993 letter from Victor Vrubel to Upham, referred to in “Upham 4”. In the paragraph of that letter which I have quoted in reference to “Upham 4” there appears this sentence:
“This would guarantee the participation of Electronic Advance in your patent application lodged for the whole system incorporating jointly developed components, such as the metering valve assembly operated by the rotating stepper motor.”
There has been no elaboration by Vrubel of what he meant by this sentence. On its face Vrubel appears to indicate that the “metering valve assembly operated by the rotating stepper motor” was a joint development component. However in the same paragraph Vrubel states that “the electronic control equipment was developed by Electronic Advance at our own cost and you had no right to it”. In other evidence, as discussed above, the Vrubels maintain they had the idea of using an analogue metering valve operated by stepper motor, and further, that evidence indicates that the Vrubels before 18 August 1993 asserted to Upham that the electronic gas flow control device was their development. Thus I am led to conclude that, at around the time of the letter, the Vrubels had been prepared to continue participation with Upham provided they were included in Upham’s patent applications and in that event would have treated some individual ideas, such as the valve operated by stepper motor, as being jointly developed project components, although it seems they always wanted the rights to the electronic control equipment they had developed.
Conclusion on inventorship
In Falkenhagen et al v Polemate Pty Ltd et al (unpublished decision on patent application 84712/91, dated 16 June 1995) I had occasion to consider the issue of inventorship. After discussing some authorities I concluded, at page 9:
“It seems to me that to claim inventor status a person would need to establish at least some role in the final conception of that which is sought to be patented in the sense that the role contributed at least something of material benefit to the final concept of the invention. Stated another way, was the involvement and contribution of a person essential to the invention.”
(See also Re Application by CSIRO 31 IPR 67 @ 72.)
In the present case I am satisfied, on the balance of probabilities, that the idea of using an analogue metering valve operated by stepper motor to control the gas delivery was the Vrubels and that the electronic control equipment to permit controlled operation of the valve was entirely proposed and developed by the Vrubels. To my mind there is no doubt that the initial work Victor Vrubel was asked to do by Upham provided some basis for these later ideas and developments by the Vrubels. But that link does not necessarily establish inventor status for Upham for the present invention. The invention is apparatus enabling the control of vaporised fuel to an engine and not the overall system to enable an engine to be operated by vaporised fuel. In the terms of the invention, involving as it does the stepper motor operated analogue metering valve and associated microcontroller, I can find nothing in the evidence to clearly establish that Upham contributed something of material benefit to the final concept of that invention. Essential to the invention is the microcontroller for controlling the stepper motor and hence the valve and there is no evidence to establish that Upham made any contribution to that aspect of the invention.
Accordingly I find 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 nor a joint inventor for that invention.
Applicants / Entitlement
In the section 32 request John Upham asks that he and Ronda Upham be determined as co-applicants with the Vrubels. By that request I take it that John Upham and his wife also want to be joined as nominated persons entitled to the invention along with the Vrubels, although the request does not specifically say this. The specific basis for the claim to entitlement is not stated in Upham’s evidence although it can be inferred that it was based on his claim to inventorship and initial involvement in developing the LPG injection system prior to involving Victor Vrubel.
Section 15 of the Act provides that a patent 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 representative of a deceased person mentioned in paragraph (a), (b) or (c).
Given my conclusion above, John Upham does not gain applicant or entitlement status through inventorship since he is not an inventor of the invention. Para (d) also does not apply here. The only other ways John and Ronda Upham may have entitlement is via an assignment from the inventors, by some employer-employee relationship, or from there being a collaboration between the parties whereby John and Ronda Upham derived a share of the title to the invention from the inventors, the Vrubels. There is no evidence of any assignment between the Vrubels and John and Ronda Upham concerning the invention so the first situation does not apply.
Regarding the relationship between the Vrubels and John and Ronda Upham, it seems to me from the evidence that in late 1990 Victor Vrubel was effectively contracted to develop a particular electric control circuit for Upham. Invoices in evidence indicate that Vrubel was paid for this work and the product of the work was given to Upham. Subsequent to completing this development work for Upham, the Vrubels evidence is that they (the Vrubels) developed the present invention. During this subsequent development work, according to the Vrubels evidence (clause 37), a computer chip (microprocessor) was delivered to Upham and Upham paid the Vrubels for the initial development of the software. Thus up to this point, that is mid to late 1992, the Vrubels had developed products, supplied them to Upham and in return were paid for their work. Later developments, including the stepper motor controlled valve and further software development work, were done by the Vrubels at their own cost and products supplied to Upham for, it seems, no direct cost. Some test units “needed for adjustments to the gas flow and road testing of the GOGAS vehicle” were built by the Vrubels and their cost paid by Upham.
From the material before me I am unable to conclude that any employer-employee relationship existed between the Vrubels and John and Ronda Upham in relation to the invention of this patent application. Clearly there was some on-going working relationship between the individuals following the initial work done by Victor Vrubel. There is nothing to suggest this relationship was an employer-employee situation and I do not see any assertion in evidence by Upham that it was. Also there is nothing which establishes that the relationship was of such nature that it amounted to a co-partnership in respect of on-going developments arising from or incidental to the relationship, whereby any rights to inventions from individual developments rested with the partnership rather than the individual party responsible for such inventions. It is evident that the Vrubels did seek to have their input into that working relationship recognised by way of inclusion in Upham’s patent applications for the injection system, but as that was rejected by Upham, this points to Upham viewing the relationship as other than any co-partnership of the form I have mentioned. And nothing in Upham’s evidence confirms the existence of such a partnership. As to the confidentiality agreement dated 10 November 1992, this said nothing about patent rights, and only required Electronic Advance to develop “electronic control equipment” for the project and Caringbah Automotive Research to provide to Electronic Advance “the sole Australian manufacturing rights of the electronic control equipment” for the project. Thus I do not see how this agreement forms a basis from which Upham or Caringbah Automotive Research can establish entitlement to inventions developed by the Vrubels during the relationship between the parties.
In summary, from the evidence before me I am not satisfied that John and Ronda Upham have established a legal entitlement to the invention of this patent application.
Therefore I find 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.
Conclusion
John Upham has failed to establish that he is an inventor in relation to the invention disclosed in patent application 664804 and has also failed to establish that he and Ronda Upham are entitled to the grant of a patent on the application jointly with Victor and Dan Vrubel. I therefore refuse his request.
Sealing a patent on the application has been postponed pending the outcome of the section 32 request. Pursuant to section 224 of the Patents Act 1990, a party may ask the Administrative Appeals Tribunal (AAT) to review this decision within a period of 28 days of receiving it. I therefore direct that a patent be sealed on application 664804 after this period expires unless an application for review is filed.
COSTS
Mr Halford submitted that if Upham was unsuccessful in his request the Vrubels should be awarded costs. The normal practice is that costs follow the event and I see no reason to vary that practice in this case. In this case there are two aspects to the costs award. The first arises from the admittance of the additional material filed by Upham into the proceedings. The second concerns costs generally in the section 32 matter. On the first aspect, when advising the parties on 16 July 1997 that I had decided to admit the additional material, I said this:
“I agree with a submission made on behalf of Victor and Dan Vrubel that any costs directly associated with admitting the further evidence should be awarded to them. I will make such an award in the s.32 decision, to a maximum claim value of $145.”
Thus in respects of costs I make the following awards:
In respect of the admittance of the additional material filed by Upham into the proceedings, I award costs to a maximum claim value of $145 against John Upham and in favour of Victor Vrubel and Dan Vrubel.
In respect of the section 32 request and the hearing thereon, I award costs in accordance with Schedule 8 of the Patent Regulations against John Upham and in favour of Victor Vrubel and Dan Vrubel. (Relevant claimable costs are specified by items 11 and 12 of Part 1 and item 1 of Part 2 of Schedule 8.)
Trevor Bruhn
Delegate of the Commissioner of Patents
Patent attorneys for the patent applicants : Halford & Co, Sydney
Appendix A
“Caringbah Automotive Research.
12 Bass St.
Caringbah 2229.10/11/1992.
Electronic Advance
11 Drake Ave
Caringbah 2229
Automotive LPG Vapour Injection
Dear Mr. Vrubel
I refer to our recent discussion and wish to confirm this Agreement in the following terms of our agreement (the “Agreement”).
(1) This Agreement commences on the 10th of November 1992 and shall continue until terminated by mutual agreement.
(2) Electronic Advance agrees to develop electronic control equipment for the operation of the Automotive LPG Vapour Injection (the “Project”) at its own cost.
(3) Caringbah Automotive Research agrees to provide to Electronic Advance sole Australian manufacturing rights of the electronic control equipment of the Automotive LPG Vapour Injection (the “Project”).
(4) /Clause 2 represents the total commitment Electronic Advance has to Caringbah Automotive Research for the purposes of the Agreement.
(5) /Clause 3 represents the total commitment Caringbah Automotive Research has to Electronic Advance for the purposes of the Agreement.
(6) The terms and conditions of this Agreement and all informations, records and other data or documents relating to the activities undertaken by Electronic Advance and Caringbah Automotive Research pursuant to this Agreement (the “Information”) shall be confidential.
(7) No information shall be disclosed to any third party without the consent of the other party.
(8) The terms of the Agreement shall represent the entire agreement between the parties.
Yours faithfully (signed)
(signed)
Victor VRUBEL John D. Upham
for Electronic Advance for Caringbah Automotive Research”
Appendix B
The Vrubels Evidence (declaration dated 11 February 1997)
“In late 1990 Mr Upham devised a system of injection of evaporated LPG into the intake manifold of an internal combustion engine through an on/off pulsating valve. The valve was to be operated by an electric circuit controlling variable pulsation rate. Mr Upham approached Mr Victor Vrubel who agreed to develop the required pulsation rate control circuit for the system” and was paid for his work.
“When the developed injection system proved disappointing in its operation, at the beginning of 1992 Mr Vrubel suggested to Mr Upham to replace the on/off valve with an electronically controlled analogue metering valve. Mr Vrubel then developed a suitable electronic gas flow control device for the analogue metering valve. He designed a circuit operating the valve by means of an electric servomotor, using the available input signals.”
As Upham could not finance the control device development, “both parties agreed verbally that Mr Vrubel would develop the electronic gas flow control device at his own expense and recoup his costs at a later stage when the whole LPG injection system reached production stage. It was at this early stage that Mr Vrubel reserved all rights to the electronic gas flow control device developed by him.”
Vrubels says that in May 1992 Upham filed provisional application “PL2669 for ‘The Vapour Injection System’ employing unspecified metering valve and a fully specified relief valve that was claimed to be essential to the system’s operation.”
The system was road tested on a carburetted engine but it became apparent it would be unnecessarily complicated on an engine with electronic fuel injection.
Upham gained support from GOGAS in the form of a loan car fitted with a modern electronic fuel injection system for petrol operation. “The original simple LPG flow control was then replaced with the LPG injection system under development. To take full advantage of the electronic control of the petrol injection system, Mr Vrubel modified his gas flow control device used with the analogue metering valve. This required the development of an advanced onboard computer to interface Mr Vrubel’s analogue control circuit with the Commodore's petrol injection electronic control unit (ECU). Mr Victor Vrubel enlisted the help of his son Mr Dan Vrubel, a software engineer, for this purpose.”
In August 1992 Dan Vrubel was paid by Victor Vrubel for the initial development of the software for the onboard computer operating servomotor who in turn was reimbursed by Upham in October 1992.
“In November 1992 the LPG injection system was operating reasonably successfully on the GOGAS Commodore and the verbal agreement described in 8) above was written down at the insistence of Mr Victor Vrubel. This confirmed that Mr Victor Vrubel had the sole Australian manufacturing rights for the electronic gas flow control equipment. Copy of the Agreement is attached as part of Mr Upham’s evidence.”
“The agreement did not state that Mr Vrubel would develop any equipment for Mr Upham. After all, paragraph 2 showed that Mr Upham would not be financing the development work undertaken by Mr Vrubel and there was no mention in the agreement that Mr Upham would have any rights to the result of Mr Vrubel’s development.”
It became apparent that further development work was needed on the onboard computer and software and “Mr Victor Vrubel and Mr Dan Vrubel (Vrubels) agreed verbally that further software development would be undertaken by Mr Dan Vrubel at his own costs.”
“The LPG injection system comprising the original metering valve coupled with a servomotor controlled by the onboard computer worked well and was being continuously improved by modifications to the computer software. In early 1993 Vrubels realised that further improvement could only be achieved by full digital control of the metering valve. At this stage Vrubels invented a way of controlling the gas flow by the use of a rotational electric stepper motor in place of the electric servomotor employed up to that time. The idea was put in practice and the stepper motor had been used for all further development work.”
“The development and changes to the electronic gas flow control device were performed by Vrubels whilst the modifications to the LPG supply equipment, including the evaporator, pressure regulators and relief and safety valves were the responsibility of Mr Upham.”
“When the GOGAS company got involved as a sponsor of the LPG injection system project, Mr Victor Vrubel obtained payment of $1,680 from Mr Upham for the construction of a test unit needed for adjustments to the gas flow and road testing of the GOGAS vehicle. In May 1993 another test unit for the same purpose was required and Mr Dan Vrubel built it and invoiced Mr Upham the cost of $1,120 (Invoice Nos. 5 & 16 in Mr Upham’s evidence).”
“Before the validity of his provisional patent application number PL2669 expired 12 months after its lodgement, Mr Upham prepared in March 1993 a new provisional patent application number PL7790 for ‘Gas Injection System’. It was very similar to the earlier ‘Vapour Injection System’ and included again the relief valve and servomotor. Before Mr Upham went to discuss it with the Shell patent attorney in Melbourne in April 1993, Vrubels asked Mr Upham to be included in some way in the new patent application. Vrubels felt that their electronic gas flow control device played an increasingly significant role in the whole LPG injection system. They provided Mr Upham with written information outlining the basics of their electronic gas flow control device.”
“Vrubels asked Mr Upham to discuss the matter of their patent rights with the patent attorney in Melbourne. On his return Mr Upham told them that the patent attorney advised that the electronic gas flow control device was not considered suitable for patent protection. The patent attorney’s advice also included the revelation that an LPG injection system similar to Mr Upham’s invention with the relief valve had already been patented in Holland. Obviously, a change was required to the system that was subject to the patent application lodged by Mr Upham in order to make it novel and thus patentable.”
“In May 1993 the relief valve was removed from the system. This change made all Mr Upham’s past provisional patent applications irrelevant. On 12 May 1993 a meeting was held at Gogas Sydney with their Manager Ron Burchell - who financed the consultations with the patent attorney - to decide what, if anything, in the developed LPG injection system was unique, novel and patentable.”
“In discussions it became apparent that the only truly novel part of the LPG injection system was the gas flow control device. Gogas concluded that around 18 May 1993 the patent attorney would consult with Vrubels in regards to further action concerning future patent applications. This consultation has never eventuated.”
“Shortly afterwards Vrubels learnt from Mr Upham that he was preparing a completely new provisional patent application (No. PL8775 lodged on 13 May 1993) describing the LPG injection system as last fitted to the Gogas test vehicle. As Vrubels learnt in connection with the present day proceedings, Mr Upham later made another two provisional patent applications No. PL9698 on 1 July 1993 and No. PL9899 in late July 1993.”
“On 14 July 1993 Vrubels prepared a draft agreement between themselves and Mr Upham that included the above history in a proposed Statement of Agreed Facts and a request that Vrubels be included in Mr Upham's latest provisional patent application under preparation in July 1993. Mr Upham received a copy of the draft agreement but refused to respond or even discuss it, indicating that he did not wish to co-operate with Vrubels any longer.”
25-27. Attempts to reach a compromise between Upham and the Vrubels failed. Further testing was made difficult given limited access to the test car by Upham.
“When Vrubels learnt that Mr Upham had lodged his latest provisional patent application for the Gas Injection System they requested Mr Upham again on 2 August 1993 to be included in his application with their gas flow control device. Mr Upham refused to discuss the matter.”
“On 6 August 1993 Vrubels lodged their own provisional patent application (No. PM0400) for the ‘Gas Flow Control’ in order to protect intellectual rights to their invention. The provisional specification together with the complete patent specification, made some 10 months later, fully and in detail described and claimed the invention of the electronic gas flow control device. A complete gas injection system was described only generally, as far as it related to the invention, and was not claimed as it was generally known and was not novel or unique. This was shown in a patent search conducted in 1993.”
“In August 1993 Mr Upham terminated co-operation with Vrubels and advised that he engaged services of another electronics engineer or a firm to duplicate the Vrubels’ work to date. Vrubels responded to Mr Upham by a letter dated 18 August 1993 and acknowledged that the co-operation was terminated by Mr Upham.”
31-35. These clauses comment on some of Upham’s statements. In clause 33, referring to Upham’s provisional application PM0064 filed 22 July 1993, the declaration states: “There is no doubt that the vague description of an electronic gas flow control device in this specification in fact referred to the invention made by Vrubels during the preceding months.”
“Since 23 April 1991 Mr Vrubel can hardly be said to have been engaged by Mr Upham to perform a development work when Mr Vrubel was not instructed or paid to develop an electronic gas flow control device used in the gas injection system. As mentioned earlier in paragraph 6, prior to 23 April 1991 Mr Vrubel was asked to develop an electric circuit controlling variable pulsation rate of an on/off pulsating valve. Mr Vrubel duly completed this assignment and received a modest payment. The idea of developing an electronic gas flow control device including a stepper motor, as described in patent application 664804, originated from Vrubels exclusively and much later than April 1991.”
“In the second paragraph of his Statutory Declaration [2 January 1997] Mr Upham expressed his satisfaction that Vrubels indeed developed the electronics for his project. The assertion by Mr Upham that Vrubels were paid for their work is disputed by Vrubels as the amounts documented by the invoices (Nos.. 5 and 16) tendered in evidence were paid for the design and assembly of two testing units for adjustments to the gas flow and road testing of the GOGAS vehicle. Invoice No.23 was raised for the then subcontractor’s work on the first stage of a microprocessor program (software). The computer chip (microprocessor) with this software was delivered to Mr Upham and together with the associated hardware that was supplied without payment.”
“All equipment paid for by Mr Upham was delivered to him prior to or on payment of the invoices. The closing paragraph on page 1 of Mr Upham's Statutory Declaration concerning the purchases of hardware components by Vrubels is correct with the clarification that all parts purchased were delivered to Mr Upham.”
The Vrubels claim Upham, not they, broke the confidentiality agreement.
“Mr Upham did not present any evidence at all in support of his claim that Mr John Upham or his wife Mrs Rhonda Upham was the inventor of the invention titled Gas Flow Control that is the subject of patent application 664804. ........”
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