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Entitlement disputes between joint patent applicants

In our previous article we introduced the concepts of patent ownership and entitlement and how these are distinct from one another yet related in very important ways. In the present article, we will be talking about the standard of proof that is required for entitlement disputes in Australia, and will explore one of the many sections in the Patents Act that is relevant to an entitlement dispute. Specifically, delving into entitlement disputes between joint applicants.

Standard of proof

For entitlement disputes under Sections 32 and 36 of the Patents Act (“the Act”), the standard of proof is the civil standard of proof, which relies on the balance of probabilities. Often the opponent carries the burden of proving their case. Although, in some circumstances, particularly where the Applicant may have some exclusive knowledge on the contributions made by various individuals to developing the invention at hand, the Applicant may also carry some evidential burden.

For Section 59 oppositions, the opponent again bears the onus of proving entitlement. Given that the requirements for proof under Section 59 are much higher when compared to the same under Section 32, often a request for determining entitlement under Section 32 is made alongside a Section 59 opposition.

Disputes between joint applicants

Section 32 is the relevant Section of the Patents Act under which a determination can be made on an entitlement dispute between any two or more joint patent applicants, as to whether an application should proceed in the name of one or more of the patent applicants. A request made under this Section must be filed in an approved form (Reg 3.6) and must include a notice that outlines the grounds on which the request is made and may include evidence at the time of filing the request. Once evidence has been provided, the other party will be provided with a period in which to file responding evidence. Extensions of time may be granted but only under exceptional circumstances (Section 223 of the Act).

Olvey & Sketo v Danko & Gabrys [2019] APO 42

An example of a case whereby Section 32 was relied upon, includes the case of Olvey & Sketo v Danko & Gabrys [2019] APO 42, in which the invention related to pallets for shipping goods, in particular a corrugated paperboard pallet that has high tensile strength and which may be produced using minimal amounts of paperboard material. In this case, a request under Section 32 was filed by the joint inventors Olvey and Sketo, to remove Applicants Gumbert, Danko and Gabrys. Both Olvey and Sketo as the requestors were tasked with providing proof for establishing inventorship. In brief, Olvey and Sketo were unsuccessful in proving inventorship to the Hearing Officer, who applied the principles of the Full Federal Court in the case of University of Western Australia v Gray [2009] FCAFC 116, for determining entitlement.

The case of University of Western Australia v Gray applied the following approach to assessing entitlement:

  • First, the inventive concept of the invention must be determined based on the claims of the specification;
  • Inventorship should then be determined based on who was the person responsible for deriving the inventive concept, distinguishing this from the person who verified and reduced the invention into practice;
  • Consideration should then be given to any contractual or fiduciary relationships that may give rise to proprietary rights in the invention.

Some of the reasons why Olvey and Sketo were unsuccessful in proving inventorship in this case, included the fact that they had unusually relied on opinions filed by their respective US legal counsel, which did not assist their case, since the external opinions provided did not mention or discuss the key issue at hand, as it did not provide any clarity into what each of the Applicants contributed towards the inventive concept. Instead, the documents merely summarized the issues of contention. With respect to other evidence, Olvey and Sketo provided very broad and general statements to describe the discussions that were held at their meetings concerning the invention. Such broad disclosures made it unclear as to the role each attendee played in developing the invention, let alone was it clear whether all attendees were present at those meetings. Videotaped depositions were also provided by the Applicants, Gabrys and Danko, which attempted to provide some insight into the contributions made by each individual concerned. However, delivery of the depositions, which saw the frequent use of the phrase “I believe”, amongst other indications of uncertainty, meant that the evidence provided by the Applicants were not convincing enough.

In the absence of clear articulation or corroborating evidence, the Hearing Officer in this case was left unable to conclude who exactly contributed to what with respect to the inventive concept. The only conclusion that was reached was that Applicants Gabrys and Danko did have some involvement in the development of the inventive concept, as did Olvey and Sketo. The Section 32 request in this case was therefore denied and the status quo was retained, which emphasizes the importance of submitting detailed and accurate records as supporting evidence, particularly during the early stages of product conception.

In addition to the case of Olvey & Sketo v Danko & Gabrys, others that discuss use of the Section 32 provision, include the case of Charles Genn v Ross Willian Bain [2000] APO 39, which saw the application of principles for testing joint inventorship, as set out in John Dalton Upham and Commissioner of Patents, Victor and Dan Vrubel [1998] AATA 852. Paragraph [20] of that case discussed some of the questions that should be asked when determining joint inventorship, including (i) whether the contribution beneficially affected the final concept of the claimed invention. For example, would the final conception have been less efficient without that contribution; (ii) whether the invention would have occurred in the absence of the claimant’s involvement; and (iii) whether there was any relevant contribution, based on the evidence of any collaborations formed during the course of product development.

The provisions of Section 32 are very similar to those of Section 36 of the Act, which concern applications for a determination on entitlement by eligible persons, except there are some differences, which will be discussed in our next article. Whilst most cases concerning entitlement disputes fall under the categories of either Section 32 or Section 36, occasionally there may be some cases where both of these Sections are relevant, as in the case of Pancreas Technologies Pty Ltd v The State of Queensland acting through Queensland Health [2005] APO 1 (5 January 2005).

We will publish our follow up article on entitlement disputes under Section 36 of the Act, in the next few weeks. In the meantime, if you have any questions in relation to the above article or have other questions concerning patent ownership and/or entitlement, please do not hesitate to contact our team at Michael Buck IP. Our attorneys will be most pleased to assist.