True inventor of a patent successfully opposes the patentee’s attempt to surrender it

Background

Mr Arieni was a former colleague of one of the named inventors (Mr Fry) of Innovation Patent 2014100975 (Patent) to a rugged and weatherproof solar outdoor lighting device. Mr Arieni claimed to be the true inventor of the device and to have disclosed its inventive features to Mr Fry, after which Mr Fry had joined Sun-Wizard Holding Pty Ltd (Sun-Wizard), the patent owner.

Upon certification of the Patent, Mr Arieni challenged its validity, and Sun-Wizard applied to surrender the Patent in the face of the challenge. Mr Arieni withdrew his validity challenge and opposed the surrender on the basis that he was entitled to the Patent and so would be unfairly disadvantaged by its surrender. Mr Arieni also sought rectification of the Register of Patents to record himself as the inventor and patentee.

Key Issues

It is established law in Australia that the inventor of a patent is the person responsible for conceiving the inventive concept of an invention, rather than persons involved in reducing it to practice. However, the invention is only complete when it is sufficiently clearly defined that a person of ordinary skill can reduce it to practice without extensive further research or experimentation. The inventive concept is discerned from the whole of the specification of the patent, including the claims.

Based on consideration of the specification, the Delegate determined that three key features contributed to the invention achieving its objective as a rugged and weatherproof solar outdoor lighting device. These features represented the inventive concept, and it was irrelevant whether any of them were found in the prior art individually. In summary, the features were: a funnel-shaped reflector; providing LED lights around the periphery of the reflector pointing downwards; and the location of the solar panel above the reflector.  The Delegate accordingly proceeded to consider who was responsible for the conception of these three key features.

Outcome

Mr Arieni’s evidence included emails from a third party, Mr Gray, attaching drawings of a funnel-shaped reflector and a solar panel placed above the reflector. Mr Arieni explained that these were drawn by Mr Gray based on instructions provided by Mr Arieni.

Sun-Wizard argued that these two features were more likely developed by Mr Gray alone than by Mr Arieni.  However, Sun-Wizard did not file any evidence to support this argument, such as from Mr Gray.

Mr Arieni’s evidence also included a sketch made by him of LED lights around the periphery of a reflector pointing downwards. Sun-Wizard alleged that the sketch was undated and not authentic, but Mr Arieni provided an email verifying its date. Further, although Mr Fry claimed that there would be practical difficulties in implementing the sketch, the Delegate considered that these were part of the reduction to practice of the invention rather than its conception.

The Delegate noted that Sun-Wizard had said very little about how the named inventors contributed to the invention, focussing on engineering and tooling work, but these related to the invention’s reduction to practice rather than its conception. Accordingly, the Delegate decided that all three features constituting the inventive concept had been conceived by Mr Arieni, and the Register of Patents should be amended to record him as inventor. Sun-Wizard was not entitled to the Patent and did not have the right to surrender it.

Implications

This decision shows the importance in inventorship disputes of filing probative evidence of conception of the invention. Mr Arieni filed evidence from which the Delegate could conclude that he was an inventor, whereas Sun-Wizard and Mr Fry did not. The outcome of the case was an inevitable result of this disparity.

This decision can be contrasted with the outcome in the Vehicle Management Systems v SARB Management Group.¹ In that case, the Full Court considered the contributions of the person claiming inventorship to be insufficient and more in the nature of a ‘vague proposal’. The applicant there had no drawings or similar materials such as those put into evidence by Mr Arieni here, highlighting the importance of good record keeping.

Mr Arieni’s success in the case put Sun-Wizard in a difficult position. Sun-Wizard’s application to surrender the patent appeared to be an attempt to avoid a scenario where it infringed a patent owned by Mr Arieni. However, this was presumably the end result. Accordingly, where inventorship (and thus ownership) of a patent may potentially be in doubt, the prospective applicant would be well advised to consider the position (potentially seeking verification of inventorship from its employees) before filing a patent application, and to consider the possible outcomes if there is a risk of a competing claim of inventorship being made at a later date.

1. [2021] FCAFC