Vuly Trampolines Pty Ltd v Wei Yang

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Vuly Trampolines Pty Ltd v Wei Yang [2018] APO 74

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

Titles:A type of frame structure for trampolines and the trampolines (2017216515 and 201428206)

Frame for trampoline and trampoline (PCT/CN2015/085447)

Patent Applicant:                   Wei Yang

Requestor:  Vuly Trampolines Pty Ltd

Delegate:  O L Haggar

Decision Date:  29 October 2018

Hearing Date:  Written submissions completed on 4 June 2018

Catchwords:  PATENTS – requests under section 36 – whether requestor is an eligible person – whether feature of pairs of upwardly cross-joined safety poles was communicated to the applicant during the course of his employment with the requestor – applicant found to have independently devised the safety pole feature after ceasing employment with the requestor – requestor not found to be an eligible person – costs awarded against the requestor

Representation:  Patent attorney for the applicant:  Jogias Patent and Trade Mark Attorneys

Patent attorney for the requestor:  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 201428206)

Frame for trampoline and trampoline (PCT/CN2015/085447)

Patent Applicant:                   Wei Yang

Date of Decision:                   29 October 2018

DECISION

It is not appropriate to make any declaration under section 36.  Costs according to Schedule 8 are awarded against Vuly Trampolines Pty Ltd.

BACKGROUND

Introduction

1. These proceedings raise questions concerning the ownership of a number of related patent applications that involve the same parties.

The related applications

1. Vuly Property Pty Ltd is the 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 applicant for the PCT application.

1. Mr Yang is also the applicant for patent applications 2017216515 (the 515 application) and 2014268206 (the 206 application).  The 515 application is a divisional application of the 206 application which has now lapsed due to the expiry of the prescribed time for acceptance.  The PCT application (from which patent application 2015296115 would otherwise have derived) did not enter the national phase in Australia, but is nevertheless treated as a complete application for a standard patent under section 29A.

1. Mr Yang is the inventor named in the PCT application, the 515 application and the 206 application (the Yang applications).  Mr Joe Andon is the inventor named in the Vuly application.

The claims to entitlement

1. Vuly Trampolines Pty Ltd has requested declarations under section 36(1) that it is an eligible person in respect of the Yang applications, and that Mr Yang is not (the present requests).  Mr Yang refutes that Vuly Trampolines Pty Ltd is an eligible person, but has not made a request under section 36(1) in relation to the Vuly application.  However, the question of entitlement was raised in the first examination report on the Vuly application.  The examiner noted that although claiming divisional status, the applicant and the inventor for the Vuly application are not the same as…