Right to inventorship forfeited by prior disclosure
Robert Dommett v Zebra Research Pty Ltd  APO 53
Sections 32 and 36 of the Patents Act 1990 provide an interested party with a means to dispute inventorship and entitlement details of record in respect of a patent application. In this case, Robert Dommett (“Dommett”) challenged the inventorship and entitlement details recorded in respect of a patent application under examination. Despite being successful in arguing that he should be named as the “inventor” of the subject matter disclosed in the application, due to a prior disclosure the Hearing Officer considered it inappropriate under the circumstances to make a determination under the provisions in favour of Dommett. The net result was that the inventorship and entitlement details of record remained unchanged.
Facts of the case
Australian Patent Application No. 2010201111 (“the application”) was filed on 22 March, 2010 by Zebra Research Pty Ltd (“Zebra”) claiming priority from Australian provisional application No.’s 2009903646 and 2009905141 filed respectively on 4 August and 20 October, 2009. The inventor of record is Katie Harris (“Ms Harris”), and, at the time of the hearing, the application was under examination.
On 23 June, 2010 Dommett filed requests under sections 32 and 36 for a determination that he, and not Ms Harris, be named as the inventor, and for a declaration to have Zebra removed as the “eligible” or nominated person in respect of the application.
The invention described in the application related to a system and method for undertaking market research, and more particularly for gathering market research from online survey groups.
A problem with gathering market research using online survey groups was said to be that the collected data can be skewed relative to a corresponding data set of a target population to which the market research is in practice directed.
As apparently agreed by both Dommett and Zebra, the broad underlying concept of the invention addresses this problem by providing an indication of the extent to which the online survey group is representative (or not) of the target population. This is said to be achieved by obtaining from an online survey group a data set, including demographic data. The collected data set from the survey group is then compared with a known corresponding data set (for example obtained from census data) of the target population to which the market research is directed. The comparison is then used to generate data indicative of the representativeness of the surveyed group relative to the target population.
The claims as originally filed in the application were of similar scope to that of the broad inventive concept outlined above.
The Hearing Officer made a particular point of highlighting that evidence led by the applicant was “noticeably brief”. It essentially consisted of a declaration by Ms Harris who indicated that after several meetings with Dommett for the purpose of seeking advice on geo-demographic profiling techniques, the invention to which the application relates arose from an “epiphany” she had that geo-demographic profiling could find application in the context of online survey groups used for market research purposes, the epiphany arising independent of any of her dealings with Dommett.
The evidence led on behalf of Dommett provided numerous exhibits detailing meetings he had with Ms Harris and Simon Harris (“Mr Harris”) before the priority date of the application. These meetings spanned over several years and during this time Mr Harris became associated with Zebra. The evidence demonstrated, amongst other things, that in May 2009 Dommett provided to both Mr and Ms Harris a report which included examples of market research data demonstrating representativeness calculations between surveyed groups and target populations, as well as information concerning the application of such techniques for profiling online communities.
Concerning the relevance of the various exhibits, it was argued on behalf of Dommett (at ):
“… that the alleged “epiphany” which forms the basis of Ms Harris’ claim to inventorship could only have come from information conveyed to her by the requestor either directly or through the agency of Mr Harris.”
And consequently that:
“The requestor and not Ms Harris is the person responsible for the inventive concept.”
It was not disputed on behalf of Zebra that Dommett had communicated the inventive concept to Ms Harris before the earliest priority date of the application.
Instead, it was argued on behalf of Zebra that:
“an inventor of prior art does not have any entitlement to a third party’s patent application in respect of which that prior art is relevant
and likewise that:
a prior user of technology in Australia does not have any entitlement to a third party’s subsequent patent application that covers such technology. If a party decides to commercialise technology without first seeking patent protection, they should not be able to revive their ability to use the patent system simply because a third party subsequently seeks to patent similar technology.”
When considering the facts of the case, the Hearing Officer made reference to a three step approach for assessing entitlement based on the approach outlined in the decision of the Full Court of the Federal Court of Australia in University of Western Australia v Gray  FCAFC 116, namely to:
“1. Identify the “inventive concept” of the invention as defined in the claims;
2. Determine inventorship including the person responsible for the inventive concept at the time of conception as distinct from its verification and reduction into practice; and
3. Determine how many contractual or fiduciary relationships give rise to proprietary rights in the invention.”
The Hearing Officer further pointed out that a delegate of the Commissioner was faced with unusual circumstances similar to those of the present case in Mining Equipment (Minquip) Pty Ltd v Mining Suppliers Pty Ltd (1999) 45 IPR 566. In that case Minquip asserted that Mining Supplies had publicly disclosed all the material for which they were seeking entitlement before the priority date of the relevant applications. The delegate subsequently concluded:
“It would be inappropriate to make any declaration under section 36(1) … for subject matter that the party seeking the declaration … had made publicly available.”
And consequently that Mining Supplies:
“had forfeited any right to a patent for an invention in respect of [that subject matter] and was not entitled to the invention disclosed.”
On the evidence at hand the Hearing Officer was satisfied that the inventive concept of the present application was that as agreed to by both parties and as described above. At  the Hearing Officer supported the contention that Dommett, and not Ms Harris, is the person responsible for the inventive concept.
It was also established that this inventive concept was disclosed by Dommett before the earliest priority date of the application. Important to the outcome of the decision, this disclosure was not considered to be in confidence and therefore amounted to a public disclosure.
With guidance at least from the Minquip decision, the Hearing Officer subsequently concluded at  that despite Dommett being considered to be the “inventor” of the subject matter embodied in the application, “there is no matter for which I can make a finding of inventorship under section 32 or a declaration under section 36 in favour of the requestor”. Put in another way, due to Dommett’s prior public disclosure the Hearing Officer considered there to be no subject matter in which inventorship could subsist.
This case is somewhat unusual in that the evidence led on behalf of Dommett to support the requests under sections 32 and 36 amounted to an admission that the inventive concept which was the subject of the application was publicly disclosed before the earliest priority date of the application. Furthermore, by not disputing this evidence Zebra in effect concurred. Despite internal patentability/entitlement tension created by the evidence, it would seem that both Dommett and Zebra considered there to be sufficient gain to warrant the challenge/defence.
On first glance the outcome of the case may appear unjust to Dommett. However, it is important to highlight that by self-admission the invention that Dommett sought to claim as his own was deemed prior art to the application. While an assessment of patentability (e.g. novelty and inventive step) does not typically form part of a consideration under sections 32 and 36, such self-admission could not simply be ignored. Under the circumstances, it would seem to follow that an inventor of prior art cannot have any entitlement to a third party’s patent application in respect of which that prior art is relevant.
In considering the outcome of this case, one must also be reminded that in order for Zebra to successfully obtain acceptance of the application, they will not only need to establish that they are a person eligible to have the patent granted in its name, but also that the invention claimed is both novel and inventive in the light of the prior art. At least in the context of the claims in the application as originally filed, these requirements may prove difficult to fulfil in the light of the evidence led during this case.
This case, although somewhat unusual in its outcome, serves as a reminder to those entering into collaborative projects to ensure that: (i) any discussions concerning potential intellectual property are conducted in confidence, and (ii) a patent application is filed before any public disclosure and commercial use of any resulting invention takes place. Had Dommett followed these general guidelines it is likely that the requests under sections 32 and 36 may well have been decided in his favour.
As a post script to the case, it is interesting to note that on 13 July, 2011 (i.e. the day after the decision on the case was handed down), a request on behalf of Zebra was filed at the Patent Office withdrawing the application. In the request it was stated that:
“… the decision to withdraw the application is made on commercial grounds unrelated to the delegate’s decision dated 12 July, 2011. That is, no inference should be made that the delegate’s decision had caused this decision to withdraw.”
Also of interest is that on March 25, 2010 Zebra was granted an innovation patent (AU2010100225) relating to the same subject matter of the application. The innovation patent also records Ms Harris as the inventor. This innovation patent was not subject to the present proceedings as requests under sections 32 and 36 can relate only to pending applications. Nevertheless, it is likely that issues raised in the present case would surface in the future if a request is made to have the innovation patent certified.