Case Note: Disputed patent application: Olvey & Sketo v Danko & Gabrys [2019] APO 42

This case highlights the importance of maintaining comprehensive records throughout the ideation and development stage of your invention.

Summary

The Delegate to the Commissioner, Isaac Tan, held in Olvey & Sketo v Danko & Gabrys [2019] APO 42 that there was insufficient evidence submitted to make a determination under Section 32 of the Patents Act 1990 regarding disputes between applicants, and therefore the application will remain in the names of all five applicants.

The listed applicants for Australian Application No. 2016259383 titled "Corrugated Pallet" include Sean G. Gumbert, Joseph J. Danko, Douglas A. Olvey, James L. Sketo and Christopher W. Gabrys. The listed inventors, Sketo and Olvey, filed a request under s32 for the Commissioner to make a determination to remove Gumbert, Danko, and Gabrys as applicants.

Section 32 of the Act

Section 32 states:

1. If a dispute arises between any 2 or more joint applicants in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those applicants, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the applicants alone, or for regulating the manner in which it is to proceed, or both, as the case requires.
2. The Commissioner may make a determination under subsection (1) whether or not the application has lapsed.
3. The Commissioner must not make a determination under subsection (1) without first giving each joint applicant a reasonable opportunity to be heard.

Inventive Concept

In determining the entitlement of the invention, the Delegate has followed the approach taken in University of Western Australia v Gray [2009] FCAFC 116, including: (a) identifying the inventive concept; (b) determining persons responsible for the inventive concept; and (c)determining how any contractual or fiduciary relationships give rise to proprietary rights in the invention.

The invention relates to pallets for shipping goods and, in particular, a corrugated paperboard pallet. The inventive concept was summarised by the Delegate (with no objections from either party) to lie ina corrugated pallet having only two ribs and is responsible for increased strength and ease in machine-assembly in combination with a locking arrangement.

Submissions

In making s32 submissions, the Requestors (Sketo and Olvey) must demonstrate that they are the only two inventors, and therefore, Gumbert, Danko and Gabrys should be removed as applicants, as they were not the inventors of this device, nor did they have any entitlement to the application, for example by virtue of an agreement with the true inventors.

Both the Requestors and the remaining applicants submitted evidence from foreign legal practitioners, however, due to both submissions failing to highlight what each applicant contributed to the inventive concept, these held little weight in the Delegate's determination.

Further, Gabrys submitted two meeting invitations and broad agendas for two hours of group meetings (involving all five applicants) in which Gabrys asserts that the inventive concept was conceived. However, Gabrys failed to provide any further evidence regarding the meeting discussions and these meeting invitations and agendas also held little weight in the Delegate's determination.

The Delegate states at [22] that "it would have been helpful if there were documents showing what aspects of the corrugated pallet design were being looked at, and who contributed. Moreover, in my view, it is not apparent whether the evidence establishes what pallet design was discussed at these meetings."

Finally, the Requestors and remaining applicants submitted a transcript of a videotaped deposition by Gabrys and Danko, discussing what each of them contributed to the inventive concept. However, the Delegate was still unable to conclude specifically who contributed to the inventive concept as a result of very little evidence and use of uncertain language (i.e. "I believe" and "if my memory serves me correctly") and general uncertainty from Gabrys and Danko regarding who developed the idea.

Decision

In light of the limited evidence, the Delegate was unable to conclude which applicants were responsible for the inventive concept and the s32 request was denied. The applicants therefore remained unchanged.

This decision reinforces the importance of maintaining detailed accounts and records relating to an invention during the ideation and development stage of the invention, especially when more than one party is involved.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.