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…

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.

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Details

Case: [2018] APO 51
Decision Date: 17 August 2018

CaseChat Overview and Summary

The dispute between William Kyunghwan Kwon and William John Trickett centred around the validity of a request made under section 36 of the Patents Act 1990 (Cth) and a subsequent request under section 191A of the same Act. Kwon sought information from Trickett, who had previously worked for a company involved in the manufacture of autoclaved cement extrusion panels. Kwon believed Trickett had relevant information concerning patent rights and obligations. The case was heard in the Federal Court of Australia.

The legal issues before the court were whether Trickett was an eligible person under section 36 of the Patents Act and whether Kwon had established a sufficient basis for the request under section 191A. Specifically, the court needed to determine if Trickett was in possession of relevant information and if any contractual or fiduciary relationship existed that required him to disclose such information. Furthermore, the court had to assess the sufficiency of the evidence provided by Kwon to substantiate his claims.

In delivering its judgment, the court held that while Trickett might possess information pertinent to Kwon's inquiry, there was no evidence to suggest that any patent rights had been assigned to him. The court found that no contractual or fiduciary relationship existed between Kwon and Trickett that would compel Trickett to disclose the information. Additionally, the court found that the evidence provided by Kwon was insufficient to corroborate the series of events he claimed led to Trickett's possession of the relevant information. The burden of proof lay with Kwon, and he had not discharged his onus of proof to the requisite standard. Consequently, the court ruled that Kwon was partially successful under section 36 but unsuccessful under section 191A. No award of costs was made to either party.

Orders