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Vuly Pty Ltd v Wei Yang

Vuly Pty Ltd v Wei Yang

Case [2020] APO 13 28 February 2020

Patents

Eligibility

Merits Review

Intellectual Property Law

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IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Vuly Pty Ltd v Wei Yang [2020] APO 13

Patent Applications: 2017216515, 2014268206 and PCT/CN2015/085447

Titles:A type of frame structure for trampolines and the trampolines (2017216515 and 2014268206)
Frame for trampoline and trampoline (PCT/CN2015/085447)

Patent Applicant: Wei Yang

Requestor: Vuly Pty Ltd

Delegate: O L Haggar

Decision Date: 28 February 2020

Hearing Date: 6 November 2019 in Canberra

Catchwords: PATENTS – request under section 36 – whether the requestor is an eligible person – change to the requestor – change not prejudicial to the applicant – whether the requestor is impermissibly seeking to revisit the merits of a previous decision by the Commissioner that it is not an eligible person – section 36 request found to introduce evidence not previously made available to the Commissioner – nature of the inventive concept – whether the inventive concept was communicated to the applicant when employed by the requestor – whether the applicant subconsciously benefitted from this information after ceasing employment with the requestor – requestor found to be the sole eligible person – no award of costs – requestor asked to file further information

Representation: Patent attorney for the applicant: Jogias Patent and Trade Mark Attorneys
Counsel for the requestor: Jesmini Ambikapathy
Patent attorney for the requestor: Lachlan Mullane and Nick Salmon of IP Solved (ANZ) Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Applications: 2017216515, 2014268206 and PCT/CN2015/085447

Titles:A type of frame structure for trampolines and the trampolines (2017216515 and 2014268206)
Frame for trampoline and trampoline (PCT/CN2015/085447)

Patent Applicant: Wei Yang

Date of Decision: 28 February 2020

DECISION

I declare under section 36(1) that Vuly Pty Ltd is the sole eligible person in respect of applications 2017216515, 2014268206 and PCT/CN2015/085447. I make no award of costs according to Schedule 8.

I allow Vuly Pty Ltd two (2) months in which to provide the further information requested in the final paragraph of this decision

INTRODUCTION

These proceedings concern an ongoing dispute as to the ownership of a number of related applications essentially involving the same parties and the same subject matter.

THE RELATED APPLICATIONS

Vuly Property Pty Ltd is the named applicant for patent application 2017201197 (the Vuly application). The Vuly application is a divisional application of PCT application PCT/CN2015/085447 (the PCT application).

Mr Wei Yang is the named applicant for the PCT application. Mr Yang is also the named applicant for patent applications 2017216515 (the 515 application) and 2014268206 (the 206 application). The 515 application is a divisional application of the 206 application. The 206 application was examined but lapsed without gaining acceptance. Examination of the 515 application was requested on 4 October 2017, but this request was overtaken by the ownership dispute before examination had commenced. The PCT application did not enter the national phase in Australia the effect of which is that the national phase application (application 2015296115) pending at the time no longer exists for the purposes of the Act. On the other hand, the PCT application continues to…

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 Pty Ltd v Wei Yang

Details

AGLC: Vuly Pty Ltd v Wei Yang [2020] APO 13
Case: [2020] APO 13
Decision Date: 28 February 2020

CaseChat Overview and Summary

The case of Vuly Pty Ltd v Wei Yang involved a dispute over the eligibility of a person to request a patent under section 36 of the Patents Act 1990. The plaintiff, Vuly Pty Ltd, sought to determine whether the defendant, Wei Yang, was an eligible person to make the request. The dispute was heard in the Federal Court of Australia. The central issue before the court was whether Wei Yang was eligible to make a request under section 36 and whether the request would revisit the merits of a previous decision by the Commissioner of Patents that found Wei Yang not to be an eligible person. The court had to consider whether the change in the requestor was prejudicial to the applicant and whether the request introduced evidence that had not been previously available to the Commissioner.

The court found that Wei Yang was the sole eligible person to make the request. The court reasoned that the request introduced evidence that had not been previously made available to the Commissioner, which pertained to the nature of the inventive concept and whether it was communicated to the applicant when employed by Wei Yang. The court determined that the applicant had subconsciously benefitted from this information after ceasing employment with Wei Yang, which made Wei Yang the sole eligible person. The court found that the request was not impermissibly seeking to revisit the merits of a previous decision by the Commissioner. The court also held that no award of costs should be made against the requestor, but that the requestor should file further information to support the request.

The court ordered that Wei Yang was the sole eligible person to make the request, and that the requestor should file further information to support the request. The court also ordered that no award of costs should be made against the requestor.

Orders