[T]he working of the invention is to be understood as not simply the way the object claimed operates in the field, which is the approach [the primary judge] took, but rather, the working of the invention as an invention, viewed in the light of the common general knowledge.

The Full Court rejected this approach finding that the “invention” referred to in s 7(4) was to be understood in light of the wording of s 18(1A) which refers to the “invention, so far as claimed in any claim”. Accordingly:

Section 7(4) requires a comparison to be made between the invention as claimed in each claim with the information s 7(5) describes. … In making this comparison, s 7(4) requires that each comparison be made from the perspective of a person skilled in the art, whose task is to identify and assess the variations between the invention as claimed in each claim and the prior disclosure and determine whether or not these variations make a substantial contribution to the working of the invention as claimed in each claim.

The Court considered that the required comparison is a functional inquiry between the invention as claimed and the prior disclosure to assess whether the variation contributes substantially to the way in which the invention as claimed functions. The Court also noted that:

The place of common general knowledge in this provision is straightforward enough. Section 7(4) contemplates that, in performing this task, a person skilled in the art has certain background knowledge that that person uses in identifying and assessing these variations.

Accordingly, while the inquiry as to substantial contribution is made from the perspective of the skilled addressee in light of the common general knowledge, it appears that it is not relevant whether any variation forms part of that common general knowledge, provided that it makes the required substantial contribution.

There was no contract between Williams and Norkres dealing with who would own any IP created by Williams for the supercharger.  The Delegate therefore considered whether the parties intended for Norkres to own such IP, and examined the conduct of the parties and their emails about the matter.  The Delegate decided that given the nature of the relationship between the parties and the tasks Williams was charged with, it was reasonable to conclude that Williams’ rights to the invention as inventor vested in Norkres.  Accordingly, Williams’ assignment of the invention to the applicant, Richwood, was not effective.

This decision is a reminder to those purchasing IP to ensure that the assignee actually has the right to assign the IP.  In some situations it might be prudent to identify all the potential owners of IP and seek an assignment of the IP from each of them.

Inventorship dispute

Williams also asserted that the named co-inventor, Mr Mueller, was not in fact an inventor and that a person not named as an inventor, Mr Kreskas, who worked with Williams at Norkres, was a co-inventor.

In determining inventorship, the Delegate referred to the key US decision Mueller Brass Co v Reading Industries 17 USPQ 361, which has been followed by the Australian courts, and cited the principle that:

To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented.  Perhaps one need not be able to point to a specific component as one’s sole idea, but one must be able to say that without his contribution to the final conception, it would have been less – less efficient, less simple, less economical, less something of benefit.

The Delegate’s decision is interesting in light of the evidence before him.  Williams asserted that all Mueller contributed to the invention was the manufacture of the supercharger.  Mueller submitted that he worked on the design and the construction of the supercharger, that he had discussed ideas about superchargers with Williams during their long association, and he had prepared early sketches (which were in evidence) of the supercharger.  The Delegate found that given the relationship between Williams and Mueller, on the balance of probabilities Mueller was an inventor.

In contrast, neither Williams nor Krekas submitted sufficient evidence to convince the Delegate that Krekas was an inventor.  There was no evidence of conversations between the two about the invention, no evidence of drawings or notes made by Krekas and no evidence of Krekas’ direct contribution to the invention.

This case is also illustrates the need to retain contemporaneous notes and drawings made during the conception of the invention, as such documents may be of great assistance in resolving any subsequent inventorship disputes.

In Dart Industries Inc v Decor Corp Pty Ltd (1989) 15 IPR 403 Lockhart J referred to the principle that:

Small differences between the registered design and the prior art will generally lead to a finding of no infringement if there are equally small differences between the registered design and the alleged infringing article. On the other hand, the greater the advance in the registered design over the prior art, generally the more likely that a court will find common features between the design and the alleged infringing article to support a finding of infringement.

The Full Court in this case noted that the trial judge had found the design in suit to represented a clear advance over the prior art and accordingly:

his Honour held that it was necessary for Technicon to demonstrate a greater degree of difference between the Technicon Pan and the Design in order to establish that there had been no infringement. Contrary to Technicon’s submissions, the primary judge’s approach to the relevance of the prior art (at [30]) was orthodox.

This approach seems to go a step further than the principle enunciated by Lockhart J such that the scope of the monopoly of a design is not merely assessed in light of the prior art but defined by it. The decision suggests that, at least in the context of assessing fraudulent imitation, any impugned design which is closer in appearance to the registered design than the closest prior art must be an infringement.

Dr James was granted an Australian and US patent for the first invention.  She assigned those patents, along with the rights to any of her improvements on the first invention, to Fermiscan.  “Improvements” was defined broadly in the assignment agreement, and included enhancements or replacements for the first invention.

Subsequently, Dr James continued to research the use of X-ray diffraction to screen for disease.  She discovered that nail and skin samples could also be used to screen for disorders and she filed a PCT application for that (second) invention.

Fermiscan claimed it was the owner of the PCT application on the basis that the second invention was an improvement on the first invention.  Fermiscan said that the use of different biological material samples (nail and skin, rather than hair) did not give rise to a new invention of a kind that was outside the definition of an “improvement” on the first invention.

The Court agreed with Dr James that the second invention was a different invention to the first invention, in particular because the second invention was not within the scope of the claims of the Australian and US patents.  It seems a different decision might have been reached if the claims of the Australian and US patents covered analysis of any biological material samples, as the second invention would have then presumably have fallen within the scope of those claims.

The Court also relied on the fact that the PCT application described the second invention as being an
“alternative test…which may overcome at least some of the…disadvantages” of the first invention.

It was relevant also that Dr James had signed a non-exclusive consultancy agreement with Fermiscan at the same time she assigned the Australian and US patents.  The Court said that if Dr James was required to hand Fermiscan the results of all work she conducted relating to using x-ray diffraction to screen for disease, her non-exclusive consultancy agreement would be rendered meaningless.

The Court further relied on evidence that the second invention would not in all circumstances “replace” the first invention.

This decision is a reminder to parties who wish to purchase future improvements to an invention, to ensure that the purchase agreement is drafted broadly and clearly enough to capture any such improvements.