William Kyunghwan Kwon v William John Trickett - [2018] APO 51

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
William Kyunghwan Kwon v William John Trickett [2018] APO 51

Patent:2016201125

Patent Application: 2017200391
Title:Wall Panel Installation (2016201125) & INSTALLATION OF EXTERIOR PANELS IN A HIGH RISE BUILDING (2017200391)

Patent Applicant/Patentee:     William John Trickett
Requestor:  William Kyunghwan Kwon
Delegate:  Isaac Tan
Decision Date:  17 August 2018
Hearing Date:   Written submissions completed 19 March 2018

Catchwords: PATENTS – requests under section 36 and section 191A – entitlement – eligible person – contracts – confidentiality of information – autoclaved cement extrusion panels – no evidence to suggest assignment of rights – no contractual or fiduciary relationship exists – insufficient corroborating evidence to establish series of events – burden of proof lies with the requestor – insufficient evidence to discharge the onus of proof – requestor partially successful under section 36 but unsuccessful under section 191A – no award of costs

Representation: Patent Applicant/Patentee: IP Strategies
Requestor: No representation

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2016201125

Patent Application: 2017200391
Title:Wall Panel Installation (2016201125) & INSTALLATION OF EXTERIOR PANELS IN A HIGH RISE BUILDING (2017200391)

Patent Applicant/Patentee: William John Trickett
Date of Decision: 17 August 2018
DECISION
Pursuant to section 36(1), I declare that William Kyunghwan Kwon and William John Trickett are both considered to be an inventor and is an eligible person in relation to application 2017200391.
Pursuant to section 191A, I decline to make a declaration in relation to patent 2016201125.
REASONS FOR DECISION
Brief Overview

The present matter concerns patent 2016201125 (the ‘125 patent) and patent application 2017200391 (the ‘391 application), between William John Trickett and William Kyunghwan Kwon (the “Requestor”). A business relationship between the parties first commenced in late 2012, around the importation of lightweight autoclaved cement extrusion (“ACE”) panels from South Korea. A company, Star Walling Solutions Pty Limited (“SWS”), was set up to facilitate this business opportunity.
After a number of years, Mr Trickett filed an application which eventuated into the ‘125 patent. However, before the ‘125 patent was granted, Mr Kwon was employed by SWS as a warehouse manager. The ‘391 application was subsequently filed after the date which Mr Kwon commenced employment.
Background
The ‘125 patent was filed on 23 February 2016 in the name of William John Trickett and claims an early priority date of 25 February 2015. A request for full standard examination was filed on 23 February 2016. The ‘125 patent was accepted on 20 December 2016, was advertised in the Supplement to the Australian Official Journal of Patents on 19 January 2017, and subsequently granted on 4 May 2017. On 30 November 2017, a request was filed to the ‘125 patent to record an assignment of Investkett Pty Ltd. This request was allowed on 5 January 2018.
The ‘391 application was filed on 20 January 2017 in the name of William John Trickett and claims an early priority date of 21 January 2016. Relevant to the present case, are the following requests:
·On 29 November 2017, a request was filed to amend the applicant of the ‘391 application to Star Walling Solutions Pty Ltd. This request was allowed on 13 December 2017.
·On 4 December 2017, a request was filed to add William Kwon as a co-inventor stating that “William Kwon was inadvertently omitted as a co inventor.” This request of the ‘391 application was allowed on 18 December 2017.
·On 7 December 2017, a request was filed to amend the applicant of the ‘391 application to Investkett Pty Ltd. This request was allowed on 18 December 2017.
On 18 August 2017, William Kyunghwan Kwon filed two forms entitled “Application to Commissioner for Declaration of an Eligible Person”, which refers to section 35, section 36 and section 191A of the Patents Act (the Act). Mr Kwon requests that the Commissioner makes the following declaration:
·William Kyunghwan Kwon is an eligible person along with the patentee/nominated person in respect of patent 2016201125 under section 36(1) of the Act.
·William Kyunghwan Kwon is an eligible person and the patentee/nominated person is not such an eligible person in respect of application 2017200391 under section 36(1) of the Act.
However as the ‘125 patent had already been granted, the Commissioner has treated the request having been made under section 191A.
On 17 October 2017, a letter was sent to the parties setting out the evidentiary timelines. The letter is identical for both cases. The parties were given two months to provide Evidence in Support, after which time they had a further month to provide responding evidence.
The parties have both filed evidence in support of their position. Evidence for both cases was completed on 22 January 2018 at which point the parties were informed that the present matter can be adequately dealt with on the basis of written submissions. On 14 February 2018, the parties were both directed to file submissions by close of business on 15 March 2018 and responding submissions on 30 March 2018.
Evidence and Submissions
In relation to the ‘125 patent:
The Requestor filed the following:
- Evidence in Support consisting of:
- Evidence in Response consisting of:
- Written Submission filed 19 March 2018
The Patentee filed the following:
- A declaration by William John Trickett dated 11 December 2017
- Letters in relation to the employment and resignation of William Kwon and SWS
- Written Submission filed 14 March 2018
In relation the to ‘391 application:
The Requestor filed the following:
- Evidence in Support consisting of:
- Evidence in Response consisting of:
- Written Submission filed 19 March 2018
The Applicant filed the following:
- A declaration by William John Trickett dated 11 December 2017
- Letters in relation to the employment and resignation of William Kwon and SWS
- Written Submissions filed 14 March 2018
Due to the volume and manner in which the evidences and submissions were filed, I will make explicit reference to the relevant document or drawing as required.
Relevant Law
Section 36(1) and Section 191A as amended by the Intellectual Property Amendment (Raising the Bar) Act 2012 (“RTB Act”) apply in the present case as the section 36 request and section191A request were both filed after the commencement of the RTB Act.
Section 36(1) provides:
“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 as so disclosed.”
Section 191A provides:
“(1)The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:
(a) the omission of an entry from the Register;
(b) an entry made in the Register without sufficient cause;
  (c) an entry wrongly existing in the Register;
  (d) an error or defect in an entry in the Register.
(2)The Commissioner must, on application, make a declaration as to a person's entitlement to a patent, or a share in a patent, if the Commissioner is satisfied, on the balance of probabilities, that the Register does not properly record a person's entitlement to a patent, or a share in a patent:
(a) because the patent, or a share in the patent, was granted to a person who was not entitled to it; or
(b) because the patent, or a share in the patent, was not granted to    a person who was entitled to it; or
(c) for any other reason.
(3)If the Commissioner makes a declaration under subsection (2), the Commissioner must rectify the Register accordingly.
It is worth pointing out that Section 36 is dependent on whether the nominated person is or is not an eligible person. On the other hand, Section 191A allows the Commissioner to rectify the register if a patent was granted incorrectly to a person who was not entitled to it, or was not granted to a person who was entitled to it.
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. The relevant parts of 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);
Similarly, a person may be entitled to the grant of a patent by contributing to the inventive concept, or have entitlement transferred by way of a verbal agreement[1], or an express provision in a service agreement[2].
[1] University of British Columbia v Conor Medsystems Inc, [2006] FCAFC 154 at [37]
[2] Khoury v Sherrard Pty Ltd [2018] APO 20; 1414 Degrees Limited v Climate Change Technologies Pty Ltd [2018] APO 28
In the present case, only the ‘391 application satisfies paragraph 36(1)(a) as this application has not yet been granted. The request for the ‘125 patent falls under paragraph 191A(1).
The Federal Court has stated that the determination of who is an eligible person and entitlement is assessed by considering a three step approach[3]:
(i) identify the "inventive concept" of the invention as defined by the claims;
(ii) 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] University of Western Australia v Gray [2009] FCAFC 116; 82 IPR 116
(iii) determine how any contractual or fiduciary relationships give rise to proprietary rights in the invention
There is also the question of when was the invention conceived. In University of Western Australia v Gray (No 20), French J listed the following principles[4]:
1.Conception is the touchstone of inventorship, the completion of the mental part of inventions.
2.Conception is the "formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice". It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.
3.An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea. The discovery that an invention actually works is part of its reduction to practice.
4.It is not the law that the inventor’s definite and permanent idea must include a reasonable expectation that the invention will work for its intended purpose even when it deals with uncertain or experimental disciplines where the inventor cannot reasonably believe that an idea will be operable until some result supports that conclusion.
[4] University of Western Australia v Gray (No 20) (includes corrigendum dated 29 April 2008 and 22 April 2008) [2008] FCA 498;76 IPR 222 at 1426
The 2016201125 patent
As set out above, the request for the ‘125 patent falls under paragraph 191A(1). It is worth noting that the ‘125 patent claims an early priority date of 25 February 2015 deriving priority from two provisional applications. 2015900660 filed 25 February 2015 and 2015901465 filed 24 April 2015. The complete application was filed on 23 February 2016. Mr Kwon commenced employment with SWS as a warehouse manager on 11 May 2015.
The inventive concept
In order to make a determination of who is entitled to the patent, or a share in the patent, I must first identify the inventive concept as claimed. The patent consists of seven claims, of which two are independent. Independent claim 1 and 4 are provided below:
“Claim 1
A method of installing partition walls in high rise buildings having building lists, which includes the steps of:
installing top channel sections;
installing floor J channel sections which have one side wall higher than the other and at least one longitudinal upstanding rib in the base section to allow them to be slid above the track fastenings and to absorb building movement and reduce stress on the panel joints;
utilising autoclaved cement extrusion (ACE) panels in which the panels incorporate a tongue in one end edge and a mating groove in the opposition end edge and a recess in at least one face of the panel to provide a recess adjacent the tongue and groove joints of two end abutting panels and to accommodate the sealant joining compound to provide a paintable finished surface after setting the panel joints;
providing fork liftable pallets of said ACE panels;
utilising building lifts to life the pallets and floor and ceiling channels;
sliding the panels into the floor and ceiling channels and mating the tongue and groove edges;
finishing the wall by setting the joints and sealing and insulating around the panels in the ceiling and floor channels.
Claim 4
A partition wall which includes:
top channel sections;
floor J channel sections which have one side wall higher than the other and at least one longitudinal upstanding rib in the base section to allow them to be slid above the track fastenings and to absorb building movement and reduce stress on the panel joints;
lightweight autoclaved cement extrusion(ace) panels in which the panels incorporate a tongue in one end edge and a mating groove in the opposite end edge and a recess in at least one face of the panel to provide a recess adjacent the tongue and groove joints of two end abutting panels which accommodates the sealant joining compound to provide a paintable finished surface after setting the panel joints.”
As set out in the claims, the invention relates to a modified ACE panel. This is best shown in figure 1 of the specification which I have reproduced below.
Figure 1 depicts a panel (10) with internal hollows (11) and faces (14, 16). The panel comprises a tongue (12) at one end and a groove (13) at the other opposing end. One of the faces (14) is tapered towards one end to create a recess (15) adjacent the panel joints. During installation, the panel is designed to slide into complementary soffit (Figure 2) and floor channels (figure 3). Figures 2 and 3 are reproduced below:
Figure 2 is an end view of a soffit C channel, and figure 3 is an end view of a floor J channel. The soffit C channel (20) contains fixing holes (21) for fasteners. The floor channel J (30) contains a longer side wall (31), a shorter side wall (33), and a base (32). The base contains a plurality of ribs (35). A fastener hole is located in the base (38) and is offset from the rib. In an alternative embodiment, only one rib is present.
I find that the inventive concept as claimed resides in the modified ACE panel as defined above, and the manner in which said panel is installed.
Having determined the inventive concept, I will briefly address the differences between the provisional applications and the complete application. The two provisional applications are near identical aside from a small paragraph added in the description, and the addition of a figure 8. Figure 8 depicts a corner adaptor which is used to join two ACE panels at a corner. The provisional application also contains some photos in the figures which have been transcribed as drawn diagrams in the complete application.
The complete application also includes the addition of figure 9, and accompanying texts to explain what is shown in figure 9. Figure 9 is reproduced below:
Figure 9 is accompanied with the following text:
“The panels may be used in hybrid walls made up of one ACE panel joined to a plasterboard panel with insulation between. Such an embodiment is shown in figure 9 where the ACE panel is shown installed in the C and J channels with a plasterboard 62 forming the outer face on one side of a corridor wall. Insulation 61 is held between the plasterboard 62 and the ACE panel 1 0.fasteners 63 fix the trim surrounding the insulation and plaster board to the floor and upper slab. Screws 64 secure the plasterboard to the insulation. The installed walls are sealed and fire proofed in the conventional way.
Although figure 9 does provide another manner in which the modified ACE panel can be installed, it is clear from figure 9 that the ACE panel is still installed via the use of a soffit C channel and floor J channel. I do not consider that this changes the inventive concept of the application. In this respect, I am satisfied that the inventive concept had been established by the priority date of 25 February 2015.
Who is responsible for the inventive concept at the time of conception?
The next step is to identify who was responsible for the inventive concept. This is distinct from reducing the invention to practice. As I noted above, the inventive concept had been established by the priority date of 25 February 2015.
Mr Kwon has provided a number of hand drawn drawings, each containing a hand written date. In his submissions accompanying these drawings, Mr Kwon states:
“When we develop the system, actually recessed edge design came from Kelvin Graham and concept was came from the product manufacturer.
When I saw the installation, and I saw the nail pin head keep stop the panel as pin head is higher than the previous bottom track. So, I raised the issue and I had a meeting with engineer (Kelvin). First concept is by myself and final design done by myself as you can find in the diary and another file with different language (Korean). “
A copy of the hand drawn drawing is produced below:
As seen above, most of the text in the hand drawn diagram is written in Korean. I am not in possession of an English translation, and therefore am unable to make a determination as to the relevance of this text. However, the floor channel J with a rib and a fastener hole as defined in the ‘125 patent can be clearly seen in the figures of the hand drawn drawing. On the top right corner of the diagram is a hand written date 24 July 2014 with the comment “Meeting w Kelvin by William Kwon”. Noting that the texts in the diagram are written entirely in Korean, this raises the question as to why this comment was written in English.
Mr Kwon explains that the “recessed edge design came from Kelvin Graham”. It is not clear this recessed edge refers a groove situated at one end of the panel and is annotated as item 13 in figure 1 shown above, or if it refers to the ribs of the floor J channel annotated as item 35 in Figure 3 shown above. Alternatively, this recess may also relate to the other end of the panel, which is tapered on one of its faces to create a recess annotated as item 15. Mr Kwon states that when he saw the installation, he noticed that the nail pin head obstructed the panel in some way. However, Mr Kwon does not explain which installation he is referring to. From the hand drawn diagram, it appears that this relates to the floor J channel which presumably, did not have the arrangement of ribs as claimed. I will briefly note that Mr Kwon also submitted two other hand drawn diagrams which show a floor J channel with a rib. One drawing is dated 25 February 2015, and the other dated 27 May 2015.

Based on the limited information I have available, it appears that Mr Kwon first developed a design shown in the 25 February 2015 and 27 May 2015 drawings. He then arranged a meeting with Kelvin Graham, at which time the designs shown in the drawing reproduced above and the diary pages were finalised. It is worth noting that the 25 February 2015 is also the date on which the first provisional application was filed.
However I note that there is no information which sets out what each drawing shows, or the significance of each drawing leading up to the creating of the inventive concept. Secondly, there is no information as to what was discussed in the meeting with Kelvin Graham. It is not apparent whether Mr Graham would have had some input in developing the floor J channel, and if so, there is a question as to what his contribution may be.
On this basis, I find Mr Kwon’s evidence to be of little weight. As the requestor, Mr Kwon bears the burden of proof. I consider that on balance, Mr Kwon has failed to discharge the onus of proof. Consequently, I am not satisfied that Mr Kwon was responsible for, or contributed to the inventive concept.
The 2017200391 application
The request for the ‘391 application falls under section 36 of the Act. The ‘391 application claims an early priority date of 21 January 2016 from a single provisional application. The complete application was filed on 20 January 2017. Mr Kwon commenced employment with SWS on 11 May 2015 and resigned on 20 July 2017.
The inventive concept
Neither party filed submissions addressing what the inventive concept of the ‘391 application is. The invention of the ‘391 application relates to movable frames which are deployed to allow safe installation of external ACE panels. The invention involves the use of two frames, installed on the floor where installation of the external ACE panel is to take place, and on the floor above. The frames are deployed so that external panels can be installed from a frame deployed on the floor above. The invention is illustrated by several drawings, of which figures 2 to 6 are reproduced below to aid in understanding how the system works in practice. Figures 2 to 6 are a schematic representation of a sequence of steps in the preferred method.
The main components consist of two frames (10, 20) and lifting rail (30) attachable to frame (20). A mounting bracket (45) is attached to the edge of a slab (60). The specification describes the sequence of steps as follows:
“As shown in figure 2 once brackets have been fixed on floors 1 and 2 the safety frame 20 can be installed on the first level above ground while the frame 10 has been moved to the level above. In figure 3 a panel 43 has been lowered using the lifting rail 30 attached to frame 20 and is attached to the slab to provide an external wall of the ground floor.
In figure 4 a panel 43 has been installed on the level above the ground floor. In figure five the frames 10 and 20 are lifted one floor up to continue the installation sequence. Figure 6 shows both frames 10 and 20 in position ready to install panels 43 on the second floor. The conventional safety rails 40 have been removed on the ground and first floors. This sequence is continued until all floors have been completed.”
In essence, it is clear that the inventive concept resides in the frames as described above, and the manner in which the system works in practice.
Who is responsible for the inventive concept at the time of conception?
The next step is to identify who was responsible for the inventive concept. This is distinct from reducing the invention to practice. There is no reason for me to question whether the inventive concept had not been established by the priority date of 21 January 2016.
Mr Trickett submits that he conceived the idea of a new method of installing external building panels without utilising cranes in the second half of 2016. I assume that Mr Trickett intended to refer to an earlier date. Nevertheless, he filed provisional application 2016900171 for this method on 21 January 2016, and the complete application on 20 January 2017. As I’ve covered above, Mr Kwon joined SWS as a ware house manager on 11 May 2015.
The ‘391 application was not initially assigned to SWS for the same reasons as the ‘125 patent. That is, Mr Trickett had no other investors at the time and he was intending on licensing the patent to SWS.
During Mr Kwon’s employment, Mr Trickett submits that he invited Mr Kwon to assist him in relation to the implementation of the method of installing external building panels without utilising canes. Mr Kwon subsequently resigned from SWS on 20 July 2017, and filed a request which is the subject of the present dispute.
Upon reviewing Mr Kwon’s involvement with the invention of the ‘391 application, Mr Trickett realised that Mr Kwon should have been named as a co-inventor, and subsequently took steps to have him listed as such. A request was also filed to assign the ‘391 application to SWS, but was re-assigned to Investkett Pty Ltd days later.
To my mind, this confirms that the parties agree that Mr Kwon was at least partially responsible for, and contributed to the inventive concept. The relevant question now, is whether Mr Trickett contributed and what his contribution may be.
Mr Kwon has provided a large number of drawings with dates ranging from 8 December 2015 to 16 December 2015. These drawings as split into two categories. One category relating to the individual components used and another category in relation to the methodology of how to put said components into practice. Specifically, the methodology drawings provide examples on a number of different ways in which the individual components can be used in four storey and six storey buildings. However, no accompanying information has been provided which explains specifically, what is shown in each drawing, and how they relate to one another.
I have reviewed these drawings, and have found that they provide a more comprehensive overview and contain more extensive examples to that shown in the figures of the ‘391 application. I can also confirm that the components used are identical. The figures of the ‘391 application are also present in the drawings. As an example, Figure 1 of the ‘391 application relates to components of the system. The same components are also present in the drawings.
These drawings are accompanied with a series of emails between Mr Kwon, Mr Trickett, Darryl Mischlewski, and a number of other parties. Mr Mischlewski is the patent attorney responsible for filing of the present application. In regards to the other parties, they appear to be other employees of SWS.
The earliest email provided is from Mr Kwon to Mr Trickett at 7:05am on the 9 December 2015. The email contains a single attachment entitled “SWS – JUMP SAFETY RAIL SYSTEM DRAWINGS”. The email was forwarded 6 minutes later by Mr Trickett to Mr Mischlewski. Mr Mischlewski responded on 21 December 2015 at 1:59 pm. The email reads:
“Will
I have completed my assessment of the patentability of the exterior wall installation system and method.
See attached report.
Once you can provide further details as outlined in the assessment I can prepare a provisional specification.”
It is not clear whether the attachments referred to in the above emails correspond to any of the evidence on file and there is no information in the submissions and evidence from which I could make a reasonable inference.
On 22 December 2015, at 6:25pm, Mr Trickett emailed Mr Kwon and Mr Mischlewski. The email suggests that a file containing materials relevant to filing of the provisional application was attached. However no information has been provided as to the exact contents of this attachment. Relevantly, the email states:
“William please do not discuss the new jump scaffold any more, till Darrel (sic) has the registration completed.
William could you email Darryl your new jump scaffold details and methodology.”
On the same date, at 10:35pm and 10:46pm, Mr Kwon sent two emails to Mr Mischlewski. The subject of both emails is “JUMP SAFETY RAIL SYSTEM DRAWINGS” following by a 1/2 and 2/2. In the first email sent at 10:35pm, Mr Kwon states:
“Hi Darryl,
This is William from Star Walling Solutions.
Please find attached file which is about the components.
Methodology for Jump is in the following email.”
In the second email sent at 10:46pm, Mr Kwon states:
Hi Darryl,
Please find attached file for Jump procedures.
It has 2 components which is
·Red: cover current floor & above floor
·Green: cover current floor & below floor
And 1 outside of primary components is
·Blue: 1m away from the slab edge which is normal everyday fencing
While Red & Green is off from the structure, BLUE works as safety fence to prevent any accidents to fall down.
When panels are installed, as you can see from the drawings,
For example, #17
·Panels are located on level 2 (remove Blue fence before install panels)
·Lifting machine is located on level 3
·Lift panel using lifting wire machine (level3), install panels (which is level 2)
·When job is done, JUMP RED & BLUE up for next step
It is not clear which drawing #17 relates to. However what is made clear, is that Mr Kwon provided the material used in the filing of provisional application.
On balance, I am satisfied that Mr Kwon contributed to the inventive concept. Although there is no evidence on file which sets out what Mr Trickett contributed, conversely it has not been shown that Mr Trickett contribution amounted to nothing at all.
Consequently, I find that Mr Kwon and Mr Trickett both contributed to the inventive concept.
Contractual and Fiduciary arrangements
Having determined that Mr Kwon and Mr Trickett both contributed to the inventive concept, the question now becomes whether Mr Kwon assigned his rights to Mr Trickett.
Mr Kwon commenced employment with SWS on 11 May 2015 as a Warehouse Manager on a permanent, part time basis averaging 24 hours per week. According to the letter of engagement, as a warehouse manager, Mr Kwon was required to:
1.Perform the duties referred to in your Job Description and all duties reasonably requested by the Company.
2.Serve the Company well and faithfully, in a conscientious and professional manner and use your best endeavours to promote the Company’s interests and welfare.
3.Follow all reasonable and lawful direction given to you by the Company, including complying with policies and procedures as amended from time to time.
In relation to point 1, the respective job description of Mr Kwon’s duties have not been filed in the evidence. Mr Trickett states in his declaration that Mr Kwon was employed to co-ordinate importation and dispatch of building panels.
The letter of engagement also includes a clause under the section “Confidentiality of Information” which states (my emphasis added):
“During your employment you may become aware of information relating to the business of STAR WALLING SOLUTIONS PTY LTD, including but not limited to client lists, trade secrets, client details and pricing structures.
Confidential information, including client lists, trade secrets, pricing structures and any and all documents created by you in the course of your employment remain the sole property of STAR WALLING SOLUTIONS PTY LTD. You shall not, either during or after your employment, without the prior consent of the STAR WALLING SOLUTIONS PTY LTD, directly or indirectly divulge to any person or use the confidential information for your own or another’s benefit.”
On 1 October 2016, Mr Kwon was promoted to the position of National Logistics Manager on a full time basis of 38 hours per week. Mr Kwon remained in this position until he resigned on 20 July 2017 which was confirmed in a letter dated 4 August 2017 signed by Will Trickett. The letter also notes that confidential information owned by SWS was removed by Mr Kwon, and states that:
“Any and all Confidential Information the property of SWS must not be used or further disclosed by you. This includes but is not restricted to data contained on equipment other than the previously SWS-allotted laptop, including mobile devices and cloud-based software to which you have access.”
Under a section entitled “Your Post-Employment Obligations”, the letter further states:
“We put you on notice of your ongoing obligations following your employment with SWS, again as detailed in your Letter of Engagement executed on 11 May 2015. Specifically, these relate to confidentiality, the soliciting of customers and staff, and the use by you of intellectual and/or any other property of SWS. Further, you must not directly or indirectly divulge to any person or use any client lists, trade secrets, client details and/or pricing structures for your own or another benefit.”
This is accompanied by a subsequent letter dated 8 August 2017 which requests Mr Kwon to return a number of SWS’s assets including a laptop computer and company phone.
According to his declaration dated 17 December 2017, Mr Kwon explains that he only worked three days a week for SWS as a warehouse manager. Outside of this, he worked for his own business, Absolute Ad Pty Ltd. It is during this time which he contributed to the inventive concept of the ‘391 application. Having developed the inventive concept, Mr Kwon showed his designs to Mr Trickett with the intention of setting up a licensing agreement with SWS. It appears that some agreement was reached, and Mr Kwon was under the impression that Mr Trickett would apply for a patent under Mr Kwon’s name. However, noting my comments above, I do not need to decide this point as it would make no difference to the outcome.
Firstly, I would like to point out one important distinction. At the time when the requests for the Commissioner to make a declaration were filed, both the ‘125 patent and the ‘391 application were in the name of William John Trickett. In this regard, even if I find that some proprietary rights exist as a consequence of Mr Kwon’s employment with SWS, the present request does not question whether SWS is an eligible person but rather, is a determination I must make in relation to Mr Trickett and Mr Kwon.
Regarding Mr Kwon’s employment with SWS, it is important to note that Mr Kwon was employed as a warehouse manager. I have not been provided with a copy of Mr Kwon’s specific job description. However, Mr Trickett states in his declaration that Mr Kwon was employed to co-ordinate the importation and dispatch of building panels. There is no evidence on file to suggest that Mr Kwon was bestowed any responsibility to invent.
Mr Kwon’s letter engagement also contains a confidentiality clause which begins “During your employment you may become aware of information…”, and states that any confidential information, including client lists, trade secrets, pricing structures and any and all documents created by Mr Kwon remains the property of SWS.
The first line of the confidentiality clause refers to information that Mr Kwon may become aware of. In this respect, this suggests that it is not material that Mr Kwon has created. Moving on to the list of integers, I note that these integers are all confidential or sensitive information of a business or commercial nature, and the term “any and all documents” would refer to information of the same nature. In this respect, I am not satisfied that an intention exists in this confidentiality clause to include intellectual property, nor do I find the language used sufficient for me to draw such an inference.
In this regard, I am not satisfied that there is any contractual or fiduciary relationship which awards SWS proprietary rights in any intellectual property which may be developed by Mr Kwon during his employment. Similarly, there is no evidence to suggest that Mr Kwon had assigned any rights acquired by him to Mr Trickett.
In this respect, on balance, I am satisfied that both Mr Kwon and Mr Trickett are considered to be an eligible person in accordance with section 15(1)(a) of the Act.
Further considerations
Although outside the scope of the present matter, from the evidence and submissions filed in relation to both the ‘125 patent and the ‘391 application, it appears that SWS may be entitled to a share of the ‘125 patent, or be considered an eligible person for the ‘391 application. However, this will depend on whether any contractual or business arrangement exists. It is also possible that there are other parties who may have made a contribution, and therefore could be considered co-inventors.
Moving forward, I would encourage Mr Kwon to seek professional representation who would be able to assist Mr Kwon in the correct procedure for securing his applications, to managing his intellectual property, and assist should any matters of dispute arise.
Conclusion
In relation to patent 2016201125, I am not satisfied that a declaration should be made pursuant to section 191A.
In relation to application 2017200391, I make the following declaration pursuant to section 36(1):
- William Kyunghwan Kwon is an inventor and an eligible person.
- William John Trickett is an inventor and an eligible person.
- Application 2017200391 is to proceed in the name of both William Kyunghwan Kwon and William John Trickett.
Costs
The requestor has been partially successfully in pursuit of the matter under section 36, but is unsuccessful for the matter under section 191A. In these circumstances I believe each party should bear its own costs. Consequently, I make no award of costs.
Isaac Tan
Delegate of the Commissioner of Patents