Disputes about entitlement to an invention have been relatively common in Patent Office proceedings in recent times but it is much less often that one reaches the Federal Court. Recently a Full Court of the Federal Court has had an opportunity to clarify the principles that apply to what has been termed “one of the muddiest concepts in the muddy metaphysics of the patent law”.
The case, Polwood Pty Ltd v Foxworth Pty Ltd1, involved a patent concerned with the production of plant growth media using waste materials primarily of vegetable origin. The patent included claims to a process and method for producing the media, and also claims to apparatus for implementing the process. It was accepted that Polwood Pty Ltd or persons connected with it (here referred to for simplicity as “Polwood”) had devised the process concept and had disclosed it in confidence to parties connected to Foxworth Pty Ltd (“Foxworth”) who then devised an apparatus to carry out the process. The patent was granted solely to Polwood, however. In the Supreme Court of Queensland, Foxworth had sought (among other things) a declaration that two parties related to it were the only persons who had entitlement to the patent; Polwood sought a declaration that it had sole entitlement. The trial judge, however, refused to make either of the declarations sought.
Polwood appealed to a Full Court of the Federal Court. In the appeal, Polwood continued to argue that it, solely, was entitled to the patent, whereas Foxworth was prepared to accept that it and Polwood were jointly entitled to the grant.
Central to this case were the criteria that determine inventorship and hence entitlement to a patent. The Full Court restated the fundamental principle that where there is more than one inventor, a patent can only be validly granted to all of them jointly. (The principle must be qualified where there are others who derive entitlement from the inventors, such as by assignment; a patent may only be validly granted to all such persons jointly).
The Full Court applied what is essentially a two-step approach to the determination of inventorship. The first step involves deciding what is the invention disclosed in the patent. The Court rejected the notion that this should be done on a claim-by-claim basis, but instead observed that the invention or inventive concept of a patent or patent application should be discerned from the whole of the specification, including the claims. Although a patent is required to claim only a single invention, the invention may have more than one inventive concept.
The second step in determining inventorship, once the nature of the invention is understood, is to determine who made a contribution to the invention and the nature of that contribution. Not everyone who participates in a new development is necessarily an “inventor” for patent purposes. Nevertheless, the Court observed that inventors’ contributions to an invention do not have to be equal; rather, the issue of inventorship is a qualitative rather than a quantitative one.
In considering the principles that apply to the determination of inventorship, the Court referred with apparent approval to earlier decisions of delegates of the Commissioner of Patents. In particular, the Court noted one delegate’s observation that a person has entitlement to an invention if that person’s contribution, either solely or jointly with others, had a material effect on the final concept of the invention.2 The Court also noted with apparent approval a delegate’s view that the question to be answered when more than one person had been involved in a new development is whether the invention would have occurred without the second person’s involvement.3 It seems that these are to be regarded as possible tests of inventorship, though not necessarily the only conceivable ones. In addition to these observations from decisions in Patent Office proceedings, the Full Court also noted the observation made in the Federal Court in an earlier case4 that rights in an invention are determined by objectively assessing contributions to the invention rather than assessing the inventiveness of respective contributions. That is, it is not necessarily the inventiveness of a person’s contribution that is the determining factor.
It follows from these principles that the fact that a person contributed a feature which is mentioned in one of the claims does not necessarily mean that person is an inventor: it is the nature of the contribution that is crucial. The Court made it clear, however, that entitlement to joint inventorship does not apply to a person who, not being the true inventor, bases the claim on knowledge derived from that inventor.
In the appeal, Polwood had argued that the concept of the process described and claimed in the patent was the only relevant inventive concept, and said that the first model of apparatus, which it accepted was devised by Foxworth, came within the inventive concept that Polwood communicated to Foxworth. The Full Court referred, however, to the finding of the trial judge that Foxworth had exercised inventive ingenuity in devising the apparatus. Since that apparatus was included in the broadest apparatus claim, and in the absence of evidence that the process concept was itself sufficient to encompass the apparatus that put the process into practice, each of Polwood and Foxworth was held to be jointly entitled to the patent.
Cases involving issues of inventorship typically turn on their own facts and Polwood v Foxworth is no exception. The case is informative, however, in illustrating the analysis involved in applying the particular facts of any case to the general issue of inventorship. It reinforces and tacitly approves the approach to determining inventorship that has been adopted in previous Patent Office decisions, and re-emphasises the importance of discerning from the patent specification as a whole what it is that is said to have been invented. From this case, the following may be identified as some of the possible (though not necessarily conclusive) indicia of inventorship:
- where a person constructing an apparatus contributed to a different or better working of it;
- where a person’s contribution had a material effect on the final invention;
- where a person’s contribution was part of a collaborative effort;
- where a person contributed to the ‘conception of the solution’ to a problem solved by the invention;
- where a person’s contribution converted a mere idea into something practical;
- where one person had a general idea of what was required but did not necessarily know how to put that idea into effect, and another person did so; and
- where the final concept of the invention would not have come about without a particular person’s involvement.
By contrast, the following are not normally associated with inventorship:
- where a person’s contribution involved no more than carrying out instructions;
- the contribution of a feature derived from the prior art or forming part of the “common general knowledge in the art”;
- where finding out whether or not an idea worked was a matter of simple and routine experimentation or mere verification; and
- the addition of inessential detail.
1 Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 8 (18 February 2008).
2 Costa v G R and I E Daking Pty Ltd (1994) 29 IPR 241 at 246
3 Row Weeder Pty Ltd v Nielsen (1997) 39 IPR 400 at 405
4 JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68 at [132]