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

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.”

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

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…

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.

Continue reading Vuly Property Pty Ltd v Wei Yang

Details

AGLC: Vuly Property Pty Ltd v Wei Yang [2016] APO 69
Case: [2016] APO 69
Decision Date: 12 October 2016

CaseChat Overview and Summary

Vuly Property Pty Ltd sought a declaration under section 36 of the Patents Act 1990 (Cth) that it was an eligible person in relation to a patent application for a frame structure for trampolines filed by Wei Yang. The court had to determine if Vuly was entitled to the invention and if Yang was not the inventor. The court found that Yang was the inventor and that Vuly was not entitled to the invention. Vuly bore the burden of proof on the balance of probabilities and failed to provide sufficient evidence to support its claims. The court awarded costs against Vuly.

The court examined the evidence provided by both parties and found that Vuly had not met its burden of proof. Vuly argued that the cross-over design for the trampoline frame originated from its CEO and a design consultant, and that Yang became aware of the design during his employment with Vuly. However, the court found that the evidence did not support Vuly's claims. The court also noted that Vuly's Thunder trampoline, which was of a similar type to the one described in the patent application, had significant differences and was not produced with cross-joined poles. The court concluded that Yang was the inventor and that Vuly was not entitled to the invention. The court awarded costs against Vuly as it had not successfully pursued its section 36 request.

Orders