Sticking the knife in – owner of scalpel removal device patent survives entitlement attack

Background

This case concerned a dispute as to inventorship of an apparatus for detaching surgical blades, claimed in Australian Patent 2018203404 (Patent) granted to Aunex Pty Ltd (Aunex), with Mr Quek named as sole inventor. The case was initiated by the Managing Director of Qlicksmart Pty Ltd (Qlicksmart), Dr Michael Sinnott, who sought rectification of the Register of Patents to name his company as patentee and Qlicksmart’s Research and Development Director, Dr Henry, as inventor. Mr Quek was a former employee of Qlicksmart and started up Aunex several months after ceasing employment at Qlicksmart.

Key Issues

The key issue for determination was whether the invention the subject of the Patent was truly conceived by Mr Quek and if so, when. As set out by the Delegate, under Australian law, the determination of entitlement is assessed by considering the three-step approach adopted by the

Full Court in University of Western Australia v Gray,¹ including:

1. identifying the “inventive concept” with reference to the specification as a whole, including the claims;
2. determining inventorship, being the conception or “formation in the mind” of the invention; and
3. determining any contractual or fiduciary relationships that give rise to rights in the invention.

Outcome

In relation to first step, the inventive concept in this case was deemed to relate to a particular arrangement of a rigid backing plate that constrained flexing of a blade detachment member such that surgical blades could be easily removed from blade holder handles when inserted into the claimed device. Rigidity of the backing plate was part of the inventive concept notwithstanding that the claims did not explicitly include such feature.

In relation to second step, the Delegate was satisfied that Mr Quek did conceive the invention himself.

Mr Quek’s evidence set out the approach he took in identifying problems with other blade removal devices in the prior art and how he eventually realised that restraining the flexibility of the blade detachment member was critical to the success of the device. He also provided in his evidence photos of the prototype he manufactured, which were consistent with embodiments depicted in the Patent. On the other hand, evidence of Qlicksmart declarants was considered by the Delegate to be based on “assertions and opinions” and did not provide sufficient narrative from the alleged inventor, Dr Henry, about how or why he came up with the invention.

Finally, in relation to the third step of the test, the Delegate found that Mr Quek devised the invention after leaving the employ of Qlicksmart. Accordingly, as the invention was not made during the course of his employment, Mr Quek was not required to assign it to Qlicksmart. Further, to the extent that Qlicksmart asserted the invention might have arisen from Mr Quek’s employment and therefore was required to be assigned, the Delegate dismissed this argument, finding that Mr Quek used only publicly available information in devising the new invention.

Accordingly, Dr Sinnott’s request to amend the Register of Patents was dismissed.

Implications

This decision affirms the importance to inventors and employers alike of keeping records in relation to the development of new inventions. If employee/employer relations do break down, or in cases where employees move to rival businesses, such evidence can be used to make or counter assertions of lack of entitlement to a patent.

1. University of Western Australia v Gray [2009] FCAFC 116