Determining inventorship in Australia – have a heart!
Polwood Pty Ltd v Foxworth Pty Ltd  FCAFC 9 (18 February 2008)
Australian jurisprudence in relation to inventorship is relatively undeveloped and accordingly any decision from an Australian Court focussing on this issue is received with interest. The Full Federal Court (‘FFC’) was asked to make a determination on inventorship, and ultimately the entitlement to the grant of a patent in respect of an invention that was the subject of a provisional application and a subsequently filed international (PCT) application (collectively referred to as ‘the application’).
Under the provisions of the Australian Patents Act 1990 (‘the Act’) a patent granted to a non-entitled party (or granted solely to a party not solely entitled) may be revoked. As entitlement to a patented invention ultimately flows from the inventors, making a proper inventorship determination is of particular importance.
Facts of the case
The application relates broadly to a plant growth or culture medium (e.g. plant potting mixtures) composed of plant based organic waste materials such as sawmill waste. In one aspect the application describes a method of producing the plant growth medium which is sterile, pest free and possesses enhanced water retention properties. The plant growth medium is characterised as having a relatively low moisture content. The application also describes an apparatus for manufacturing the plant growth media comprising a dual auger design whereby the feedstock (e.g. sawmill waste) is initially submerged in heated water and is subsequently dewatered to reduce the moisture content.
The application contains claims to both the method and the apparatus.
In the initial Supreme Court (‘SC’) decision (Foxworth Pty Ltd v Polwood Pty Ltd  QSC 185) the primary judge concluded that neither Polwood (comprising alleged inventors Rampton and Connick) nor Foxworth (comprising alleged inventors Power and Kemp) was solely entitled to the grant of a patent, as there had been joint inventorship.
The SC concluded that Polwood contributed to the inventorship of the claims to the method and Foxworth to the claims to the apparatus. It was held that the concept embodying the method was developed solely by Polwood inventors, and that this concept was then communicated to the Foxworth inventors. The Foxworth inventors then manufactured the apparatus, the production of which, it was found by the SC, involved ‘inventive skill’.
In the primary judgement inventorship was determined based on a modified approach to that adopted in the United Kingdom appeal decision in Markem Corp v Zipher Ltd  All ER (D) 377. The distinction being, however, that inventorship was decided on a claim by claim basis. The SC concluded that the invention had two “hearts”. The first “heart” was identified as Polwood’s concept, which was described as a key inventive step of the invention. The primary judge found that Foxworth contributed to the second “heart”, which was the apparatus. Polwood appealed against this SC decision and sought a declaration of sole inventorship.
In the appeal Polwood argued, inter alia, that there was only one inventive heart, this being the original concept it had communicated to Foxworth, and that the apparatus did no more than put this concept into effect.
The FFC initially considered what the inventive concept was. In doing so, the FFC differed in the approach taken by the primary judge by stating [at 60] that ”the invention or inventive concept of a patent or patent application should be discerned from the specification, the whole specification, including the claims. The body of the specification describes the invention and should explain the inventive concepts involved. While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed. The claims assist in understanding the invention and the inventive concept(s) which give rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution. The invention may consist of a combination of elements. It may be that different persons contributed to that combination.”
The FFC noted that the primary judge did not directly consider whether the contribution by Foxworth constituted a separate “heart” of the invention or whether the Polwood concept gave sufficient information and instruction to enable the apparatus to be constructed using “ordinary skill or the application of common general knowledge”. Thus, in dismissing the appeal the FFC acknowledged that the patent application described the apparatus as an aspect of the invention and that Polwood did not itself play any part in its design and construction prior to the filing of the patent application. Following from this analysis, and based on the facts presented before the primary judge, the FFC concluded that the apparatus was “an invention” involving an inventive contribution by Foxworth and that there was no evidence that Polwood’s concept was so broad as to encompass the apparatus that made it workable.
In reviewing the law on inventorship from various UK, US and Australian lower court and Patent Office decisions, the FFC judgement offers the followings guidelines for determining inventorship:
- There is likely to be inventorship if a person’s contribution had a material effect on the final invention.
- There is likely to be joint inventorship if a person who conceived an original idea did not know whether his/her idea would work, and where the process of finding out involves more than simple and routine experimentation or mere verification.
- There is unlikely to be inventorship if a person’s contribution occurred after the invention was conceived and was under the direction of the/an inventor.
- There is likely to be inventorship in the case where the invention would not have materialised without the person’s contribution.
Some further considerations that come out of this decision are:
- In relation to inventions based on a combination of features, a non-inventive contribution to a working combination may be enough for a finding of joint inventorship (it is not necessarily an inventive contribution that is the determining factor as inventorship relies on the facts in each case and concerns the quality, not the quantity, of the contribution)
- It is not enough that someone contributed to the claims, because the claims may include non-patentable integers derived from the prior art or be common general knowledge Joint inventorship often follows where the invention is made as part of an ongoing collaboration
In view of the severe penalty of patent invalidity that may arise from an Australian patent being granted to a party not entitled or not solely entitled to the invention, and the obvious connection between inventorship and entitlement, it is of great importance to ensure inventorship is correctly determined in Australia. This case draws together a number of somewhat confusing and contradictory precedents and makes it clear that inventorship determination involves an assessment of the contribution by individuals involved to the inventive heart/s or concept/s underlying a claimed invention, and that this should be done on the basis of the invention as described in the patent specification rather than by conducting a claim by claim analysis.