In three separate judgments, Emmett, Bennett and Jagot JJ each concluded that the reference to “the filing date of the complete application” in reg 2.2(1A) was a reference to the filing date of the first complete application. As summarised by Bennett J:

The scheme of the Act provides that, where the invention of the divisional was disclosed in the parent, the publication or use of the invention within 12 months before the filing date of the parent must be disregarded for the purposes of assessing the novelty and inventive/innovative step of each of the parent and the divisional, provided that a patent application for the invention is filed within the prescribed period.  This applies where the divisional is of a parent standard patent or a parent innovation patent.  Where the invention of the divisional was disclosed in the parent, the words “the complete application” in reg 2.2(1A) refer to the parent application and not to the divisional application.

While the Full Court acknowledged that there was some lack of clarity in the drafting of reg 2.2(1A), it considered that the construction put forward by Mont was not unduly strained as submitted by Phoenix. To the contrary, as Emmett J stated:

The construction is reasonably open and is consistent with the structure of the 1990 Act and the Regulations as a whole, particularly in relation to the treatment of divisional applications and avoids anomalous or unreasonable results.

The approach adopted by the Full Court plainly gives effect to the intention behind the relevant provisions, despite the somewhat confusing manner of their drafting.

The arrangement between Ms Rutter and Brookland Valley was confined to the production and sale of 90,000 bottles bearing the label over a 12 month period. However, Brookland Valley continued to produce and sell bottles of wine with the label featuring Ms Rutter’s music well after the expiry of the agreement and sold over 5 million bottles between 1999 and 2007.

Ms Rutter claimed that her copyright as author of “Blo” was infringed when Brookland Valley continued to reproduce the score of the melody without her permission after the expiry of the 12 month licence. The Court agreed, finding that the Verse 1 labels reproduced a substantial part of Ms Rutter’s original musical work and  awarded Ms Rutter $293,377 in compensatory damages and interest.

The Court also found that the disregard of Ms Rutter’s rights by Brookland Valley was unsatisfactory and flagrant and awarded Ms Rutter additional damages of $150,000 pursuant to s 115(4), stating that:

The agreement which Brookland Valley made with Ms Rutter was itself breached virtually immediately with the introduction of a new variety of wine. It was then breached when the agreed volumes were exceeded. Disregard of her rights continued after the expiry of the contract. Mr and Mrs Jones [as managing director and marketing manager respectively] took what they wished from the arrangement with little apparent regard for Ms Rutter’s entitlements and legitimate interests. Mr Jones’ failure to honour the bargain which he had made with Ms Rutter or take any step to address her rights may not be dismissed as simple carelessness on his part…

This decision provides yet another example of a copyright owner successfully using s115(4) to receive an award of damages which significantly exceed the amount required to compensate for damage suffered and reinforces the benefits of including a claim to additional damages in any action for infringement.

[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.