Vague proposals do not an inventor make

Date: 08 December 2021
Court: Full Court of the Federal Court of Australia
Judges: Nicholas, Yates and O’Bryan JJ

Background

Australian Patent Application 2013213708 (708 Application) relates to vehicle detection units in the field of parking compliance. The applicant, Vehicle Monitoring Systems Pty Ltd (VMS), opposed the grant of the 708 application before the Australian Patent Office, including on the basis that the respondent, SARB Management Group Pty Ltd (SARB), was not entitled to the grant of a patent on the invention, or was only entitled to a grant in conjunction with another person.

The entitlement objection was rejected by the Delegate and VMS’ appeal to the Federal Court was dismissed on all grounds. VMS sought leave to appeal to the Full Court on the single issue of entitlement.

Key Issues

VMS contended that its managing director, Fraser Welch, was an inventor of the invention the subject of the 708 Application. Since SARB had not derived title to the invention from Mr Welch, it was not entitled to the Application, pursuant to s15 of the Patents Act 1990 (Cth).

The parties agreed that the key issue was identification of the “inventive concept” of the application, and what Mr Welch’s contribution to that inventive concept was (if any). The specification described a typical parking enforcement process as manual periodic inspection of restricted spaces, which is time consuming and inefficient, and the invention as an automated parking enforcement system. The claims were to a “vehicle detection unit” (VDU) which included a magnetic sensor and a processor determining the occupancy status of a vehicle space, which communicated any illegal parking to a supervisory device for prepopulation into infringement issuing software. In short, the device detected variations in the earth’s magnetic field caused by the presence of vehicles, to determine when a vehicle had overstayed in a parking place and allowed infringement notices to be automatically issued using this information.

VMS was the owner of the Parking Overstay Detection System (POD system), which used magnetic sensors in this way, but which required information regarding an infringement to be manually transcribed for a ticket to be issued. In 2005 Mr Welch had discussions with a SARB representative in which it was found he had suggested that the POD system could be integrated with SARB’s ticket issuing device. VMS claimed on this basis that Mr Welch was an inventor of the invention. In the first instance appeal, the judge found that the inventive concept was focussed on a VDU configured and utilised in a particular way, and that Mr Welch had not contributed to the specific device.

Outcome

The Full Court noted that both parties agreed that the contested issue should be determined by reference to whether Mr Welch contributed to the “inventive concept” of the 708 Application.     Notwithstanding, the Court queried whether the notion of “inventive concept” was apt or necessary as a tool for determining inventorship. That question was left unanswered.

As to the inventive concept in this case, the Court found that the primary judge had fallen into error by confining the inventive concept to the embodiments closely reflecting the claimed device. Rather, the inventive concept was to be derived from a reading of the specification as a whole and included the idea of an integrated automated parking enforcement system in which magnetic sensors are able to output a sensor signal caused by the occupancy of a vehicle space by a vehicle and in which details pertaining to a notifiable event are pre-populated into infringement issuing software. Significant to this conclusion was the fact that the specification “seated” the invention as an automated parking enforcement system that provides advantages over a so-called manual parking enforcement system, and that only in “further preferred embodiments” the VDU would provide information to the supervisory device. In other words, the invention was not confined to devices having this capability.

However, the Court was not satisfied that Mr Welch’s contributions made him an inventor of the invention. The Court particularly took into account that the information provided by Mr Welch to SARB about the POD system did not go beyond information that was already in the public domain, and found that his suggestion that “it would obviously be much better” if details from the POD system automatically populated in the infringement notice system was not of such significance as to amount to a material contribution to the inventive concept of the 708 application.

Implications

It is relatively rare for the Full Court to consider patent entitlement issues. This decision provides guidance in relation to the relevant principles. In particular, it is clear that the way in which the invention is described in a patent specification can be significant in determining its inventors. The decision also confirms that not all passing contributions, or “vague proposals” will be sufficient to form the basis for inventorship. The importance of maintaining good written records of contribution to an invention is also highlighted. In this case the dispute played out some 15 years after relevant conversations had taken place, and oral evidence of precisely what was said in those conversations (which was critical to the issues at hand) was approached by the primary judge (and approved of by the Full Court) with considerable caution where not supported by documents.