Vuly Property Pty Ltd v Wei Yang

[2016] APO 69

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Vuly Property Pty Ltd v Wei Yang [2016] APO 69

Patent Application:                2014268206

Title:A type of frame structure used for trampolines and the trampolines

Patent Applicant:                   Wei Yang

Requestor:  Vuly Property Pty Ltd

Hearing Officer:  P M Spann Deputy Commissioner of Patents

Decision Date:  12 October 2016

Hearing Date:  15 and 22 August 2016 by written submissions.

Catchwords:  PATENTS – request under section 36 – whether requestor is entitled to the invention – whether feature of pairs of upwardly cross-joined safety poles was derived by the patent applicant during the course of his employment – requestor not found entitled – costs awarded against the requestor

Representation:  Patent applicant:  Jogias Patent and Trade Mark Attorneys

Requestor:Ahearn Fox Patent and Trade mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2014268206

Title:A type of frame structure used for trampolines and the trampolines

Patent Applicant:                   Wei Yang

Date of Decision:                   12 October 2015

DECISION

I declare under section 36 that the nominated person Wei Yang is an eligible person in relation to the invention and that Vuly Property Pty Ltd is not an eligible person.  Costs according to Schedule 8 of the Patents Regulations are awarded against Vuly Property Pty Ltd.

REASONS FOR DECISION

Background

1. Patent Application 2014268206 was filed by Mr Wei Yang (Yang) on 26 November 2014 and he is the only named inventor.  On 11 December 2015 Vuly Property Pty Ltd (Vuly) requested a declaration under section 36 that it is an eligible person in relation to the application and that Yang is not.  The application stated that:

“1. The person nominated for the grant of the patent (the patent applicant) was an employee of the section 36 applicant (or a company related to the section 36 applicant) at the time of the invention was invented. The invention described and illustrated in the complete application was illustrated by a director of the section 36 applicant in consultation with a consultant commissioned to assist the section 36 applicant with aesthetic aspects of an invention invented by the director and the applicant of the complete application has obtained the invention from those illustrations, and is under an obligation by way of an employment agreement to assign any invention developed by him to the section 36 applicant and therefore is not an eligible person.

2.  The person named as inventor is not the true and first inventor.”

1. Yang denies that Vuly is entitled and the parties have filed evidence to support their respective entitlement to the subject matter of the present application. I will refer to the evidence and submissions filed by the parties in my reasons below.  

Subject matter

1. The subject matter of the application relates to a frame structure for trampolines. More particularly it relates to a frame structure for a trampoline that has a bounce surface that is surrounded by a vertical safety net held up by a number of safety poles. An embodiment of the described invention is illustrated in figure 1 of the patent specifications:

 

1. A key feature of the arrangements described and claimed for current purposes is the use of pairs of safety poles that are “upwardly cross-joined” and follow a different path around the frame loop which supports the bounce surface. A number of optional features are described. For example the support poles can be straight or arc shaped. The frame loop can also be supported by pairs of support frames that are cross-connected at the ground.

The section 36 request

1. The alleged facts on which Vuly relies to establish its entitlement are stated in the section 36 request as indicated above. It is apparent that the requestor’s allegations are that the cross-over pole design originated from Mr Vuly’s CEO, Mr Joe Andon (Andon) and or a design consultant engaged by Vuly. It is then said that Yang became aware of the cross-over design due to his employment as a design engineer with Vuly and that the application was made after that employment was terminated.

The evidence

1. The parties have filed the following evidence in this matter:

• Yang’s evidence in support consisting of a declaration by Mr Wei Yang dated 6 April 2016 with Appendices A-D;

• Vuly’s evidence in support consisting of a declaration by Mr Joe Andon dated 12 April 2016 with Exhibit JA-1;

• Yang’s evidence in response consisting of a declaration by Mr Wei Yang dated 3 June 2016 with Appendices A-D; and

• Vuly’s evidence in response consisting of a declaration by Mr Joe Andon dated 13 June 2016.

1. Vuly also sought to serve further evidence in the matter, however in a letter dated 8 September 2016 a delegate decided that this further evidence should not be admitted. Consequently I will not consider this additional material in the determination of this matter.

Relevant law

1. Subsection 36(1) was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which applies in the present case since the section 36 request was filed after the commencement date.   

1. Subsection 36(1) as so-amended provides:

“(1) If:

(a) a patent application has been made and, in the case of a complete application, the
     patent has not been granted; and
(b) an application for a declaration by the Commissioner is made by one or more persons
     (the section 36 applicants) in accordance with the regulations; and
(c) the Commissioner is satisfied, on the balance of probabilities, in relation to an
     invention disclosed in the specification filed in relation to the application for the patent:

(i)that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or

(ii)that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons,

the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention so disclosed.”

10.  The present application clearly satisfies paragraph 36(1)(a).  Schedule 1 of the Patents Act defines an “eligible person” in relation to an invention as meaning a person to whom a patent may be granted under section 15.  Subsection 15(1) provides:

“(1) Subject to this Act, 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 representative of a deceased person mentioned in paragraph (a), (b) or (c).”

11.  Thus it is apparent that if the Commissioner is satisfied on the balance of probabilities that a person derives title from the inventor(s) in relation to an invention disclosed in a patent application (whether those inventors are named in the application or not), the Commissioner may declare in writing that that person is an eligible person either solely or jointly with another person who is similarly found to be entitled.

12.  The law governing disputes over entitlement was most recently considered by the Full Court in University ofWestern Australia v Gray [2009] FCAFC 116; 179 FCR 346 (UWA). The Full Court at [253] cited with approval the matters identified at first instance by French J (as he then was) to be considered when assessing entitlement, namely:

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 how many contractual or fiduciary relationships give rise to proprietary rights in the invention.

13.  In the present case Vuly asserts both entitlement and inventorship in that it claims that Andon rather than Yang is the inventor. The alternative that Yang made the invention and that Vuly derived entitlement by virtue of his employment was not pursued other than in general submissions and has no evidentiary support. Consequently, the key issue is whether the invention was derived from Vuly, and particularly Andon, or as asserted by Yang was made independently after he left its employment. 

Consideration

14.  It appears not to be disputed that Yang was employed by Vuly from March 2011 to March 2014. He was employed, at least, to engineer trampoline designs under the direction of Andon including the trampoline designated the “Thunder”.  Yang does not appear to have had experience with designing trampolines before he was employed by Vuly but had extensive mechanical design experience in other areas.

15.  At this point I note that Vuly’s Thunder trampoline is of similar type to the trampoline described above but has a number of significant differences. Most particularly instead of being attached by coil springs the bounce matt is supported by leaf springs arranged circumferentially around a circular base. It has largely vertical poles holding a safety net with the poles not “upwardly cross-joined” as claimed and described in the present application. There is no evidence that this product was ever produced with cross-joined poles even in prototype.

16.  While apparently existing only as a concept, Vuly’s assertion is that a cross-over design for the Thunder was developed by Andon and worked on by a design company, 3D Design. It is then claimed that the design was communicated to Yang in one of three different ways:

1. Yang was included in the distribution of communications about the cross-over design;

1. Sketches of new design concepts were placed on the wall of the engineering office; and

iii)The design was communicated directly by Andon to Yang.

17.  I do not find that the admissible evidence supports any of these contentions.

[The reasons provided in these paragraphs have been redacted due to reference to material made confidential under Reg 4.3(2)(b)]

18.  Ultimately Vuly bears the onus of proving a case for entitlement on the balance of probabilities and the evidence falls far short of this. Consequently I do not find that Vuly has any entitlement to the invention described and claimed in the application.

Conclusion

19.  The evidence does not establish that Vuly is an eligible person either solely or in part, and consequently I will declare under section 36 that Wei Yang is an eligible person in relation to the invention and that Vuly Property Pty Ltd is not an eligible person.

Costs

20.  Vuly has not successfully pursued its section 36 request and I can see no reason why costs should not follow the event.  I therefore award costs against Vuly.

P M Spann

Deputy Commissioner of Patents