30 March 2022

Corrosive Patent Entitlement and the Moving Target of Inventive Concept

David Müller-Wiesner

In the recent decision of Vector Corrosion Technologies Limited v E-Chem Technologies Ltd [2022] FCA 188 (09 March 2022) (Jagot J) the cloudy area of patent entitlement and inventive concept arose yet again.  Such cases are always problematic because they usually involve inventors and companies who have not sufficiently (or clearly) documented an inventive process.  We remind our learned readers to document all steps clearly and methodically in an inventive process (from light bulb moment to commercialisation pay day).  Such diligence should remove a lot of headaches if ownership is contested.

Turning to the case at hand, three Inventors A, B and C filed a patent application (AU2006224340) to a single anode system used in multiple electrochemical treatments to control steel corrosion in concrete. A source of DC power was to drive current off the anode in a hybrid process to improve the steel environment. A, B and C who were employees and shareholders of E-Chem at the time of filing the patent application transferred their rights to the subsequent granted patent to E-Chem.  Vector alleged it was the true owner of the E-Chem patent due to its purchase of the corrosion business of Fosroc International Limited and an earlier Fosroc patent application to similar technology. Inventors A, B and C were all previous employees of Fosroc. Vector alleged that the inventive concept was developed while A, B and C worked at Fosroc and not while at E-Chem.  Fosroc amended their patent application to capture the E-Chem Hybrid process described in the E-Chem patent. The case turned on what was the “inventive concept” and at what time it was conceived. Jagot J ruled that the inventive concept of the E-Chem patent was developed by A, B and C when they were working for E-Chem and dismissed Vector’s claims.  Without going into the evidence, the case highlights how patent entitlement is handled in Australia. This will be briefly summarised below.

In Australia, a patent for an invention may only be granted to a person, who is the inventor or derives title to the invention from the inventor. Correct determination of the inventors is therefore fundamental to a proper resolution of entitlement to an invention.  Though under Australian law entitlement is a ground for invalidity of a patent, practically this does not occur as, if a patent has been granted to someone with incorrect entitlement there are numerous legislative and judicial methods for correcting entitlement and rectifying the patent register to allow the patent to stand.

In the influential case of University of Western Australia v Gray (No 20) [2008] FCA 498, which changed the invention disclosure procedures at Australian universities, we were reminded that there is a distinction between a discovery or an idea (an inventive concept) and the reduction of that inventive concept to practice. The “inventive concept marks a boundary between invention and verification”: Gray at [1426].

Importantly, “[t]he time at which the invention was developed and the person by which it was developed is to be ascertained by reference to the inventive concept of the invention so described. The time of invention, and the identity of the inventor will not be affected by the subsequent process of reduction to practice some elements of which may have found their way into the claims in the application”, albeit recognising that “there may be more than one contributor to the inventive concept and perhaps more than one inventive concept”: Gray at [1443], [1442].  Further, and importantly, “the inventive concept of a patent or patent application should be discerned from the whole of the specification including the claims” Gray at [222].

Australian courts discern the inventive concept from reading the body of the specification as a whole and give less weight to the claims which typically have been narrowed to achieve validity. You will remember that “entitlement is not determined by reference to the inventiveness of the invention claimed in the patent. It is determined by reference to the history of the inventive concept in the minds of the inventors”. Stack v Davies Shephard Pty Ltd [2001] FCA 501 at [19]. “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.” Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, at [60].

Therefore, in Australian law it is important how the specification as a whole identifies the inventive concept.  This may include how that concept is reduced to practice or may not, but careful consideration is needed when drafting the patent specification. A correct inventorship will be one who has made a “material contribution” to the agreed inventive concept.  Assisting with the reduction of practice of an inventive concept does not guarantee inventorship.

Importantly, and often missed by young practitioners is that identification of the inventive concept is relevant to entitlement and inventiveness is relevant to patentability, these two are distinct and should not be muddied. That is, the patentability of an inventive concept should not be considered when determining entitlement issues. This is different to the United States where entitlement of inventorship is considered on a claim-by-claim basis, line by line and the court must consider all features claimed. We hope this helps and look forward to any comments you may have.

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David Müller-Wiesner

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