28 July 2021 - IP SPOTLIGHT

Conception is…..the completion of the mental part of inventions. Conception is the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice”. It is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation. An inventor need not know that the invention will work for conception to be complete. The inventor need only show that he or she had the idea…. Ident i f icat ion of the invent ive concept On the authorities, the principal source for identifying the inventive concept was the Aunex patent specification, in particular the background prior art, the objects of the invention and features that contribute to overcoming drawbacks and achieving the objects of the invention. The claims could assist in understanding the inventive concept but, relevantly, there was no requirement for correspondence between the claims and the inventive concept. Scalpel blade removal devices were known in the art but had problems associated with them. Q’s evidence showed that he started to develop a new, simpler blade remover in August 2016 as an “antithesis” to some of the Qlicksmart products. Aunex sought a blade remover with fewer moving parts and realised that a problem with scalpel blade detachment using a detachment member could be solved by restricting the direction of flexing of the blade detachment member, for example by including a rigid backing plate in the blade stripper. Whilst the patent was silent as to the specific detachment problem, it did disclose the feature of the backing plate constraining the flexing of the detachment member in one direction during use. The specification therefore sought to provide a tool which addresses “at least some of the problems known in the prior art”. Interestingly, the claims did not explicitly define the nature of the backing plate. Q’s evidence appeared plausible and consistent with the proposition that he conceived the invention of a fixed backing plate constraining the flexible detachment member as a simplified improvement to the more complicated devices disclosed in Qlicksmart’s earlier patents. This conception occurred when he was no longer employed by Qlicksmart. Qlicksmart therefore needed to establish that H was the first to conceive the inventive concept if it was to secure ownership of 3 1 2

the Aunex patent. However, the majority of the evidence was from the requestor, Dr Sinnott, who had not personally been involved in development of the blade remover invention. Qlicksmart design documents, contemporary with Q’s employment formed the bulk of the evidence. This evidence was found to consist of assertions and opinions on what H and Q did or did not invent based on an after the event analysis of drawings from the Qlicksmart design team. These design drawings included annotations purporting to demonstrate correspondence between the drawings and the Patent, including highlighting of the flexible blade detachment member and inclusion of a lightly sketched rectangle said to be the “backing plate”. The Delegate did not accept this. S’ evidence appeared to be entirely from the perspective of seeking to “reverse engineer” the Aunex patent claims onto earlier design documents. This evidence did not show that H had conceived a blade stripper with a flexible detachment member having a rigid backing plate constraining the detachment member to flex in one direction only. Qlicksmart could not succeed by H declaring that “the feature of a flexible detachment member with a backing plate is a concept that I had invented”. There needed to be a narrative of how, when or why H conceived the idea. This was absent. The Decision The Delegate therefore concluded that the inventive concept was conceived, not by H, but by Q after his employment at Qlicksmart had ceased. There was therefore no need to consider Q’s contractual or fiduciary relationships to Qlicksmart. For the same reason, there was no reason to consider further contractual terms requiring Q to assign inventions or improvements made during the course of his employment “or arising therefrom” or not to compete. Disputes over patent entitlement are common. Success requires precise evidence outlining a narrative to entitlement. Conclusory statements such as a cursory claim to inventorship are not acceptable. More is needed. The Patent Office does not provide a forum to agitate contractual questions and where these are pleaded, it appears that they will be shortly dismissed. 1 2 What can we learn from this case?

A SHARP LESSON IN INVENTORSHIP AND ENTITLEMENT Michael Sinnott v Aunex Pty Ltd [2021] APO 23

The recent Australian Patent Office decision of Michael Sinnott v Aunex Pty Ltd [2021] APO 23 provides a reminder that success in establishing ownership requires precise evidence outlining a narrative to the specific entitlement. The following case summary delves into this requirement as it applies to the test for inventorship and ownership in Australia. Background Qlicksmart is an Australian medical device company established by two doctors looking for a better way to remove used scalpel blades. In 2005, Kim Sia Quek (“Q”) was employed as General Manager of Qlicksmart with duties including responsibilities for research and development. After 11 years with the company, Q resigned from Qlicksmart in May 2016 and went on to found Aunex Pty Ltd in August 2016. Aunex subsequently filed a provisional application in February 2017 securing a patent owned by Aunex Pty and listing Q as its sole inventor. Qlicksmart, through its Managing Director, Dr Sinnott (“S”), filed a request for rectification of the Register under s 191A Patents Act 1990 seeking:

– replacement of the patentee, Aunex, with Qlicksmart. What does s 191A do? Subsection 191A(1) of the Act gives the Commissioner power to rectify an error in the Register, i.e. post grant. Subsection 191A(2) of the Act compels the Commissioner to declare entitlement to a patent if that the Register does not correctly record such entitlement. The standard of proof is on the balance of probabilities. The key question, for consideration under s 191A, was whether the inventor of the Patent was Mr Quek or Dr Henry. Test for determinat ion of inventorship The Delegate considered the three step test of University of Western Australia v Gray [2009] FCAFC 116: – identify the “inventive concept” of the invention as defined by the claims – determine inventorship including the person responsible for the inventive concept and the time of conception as distinct from its verification and reduction into practice – determine how contractual or fiduciary relationships give rise to proprietary rights in the invention for determining questions of inventorship and entitlement. Conveniently, this test is consistent with that applied in other cases where inventorship and entitlement arise, e.g. in an opposition. In this case, as Aunex had filed its provisional relatively soon after Q’s departure, from Qlicksmart, “conception” of the invention was in issue. The question of conception of invention was considered in an earlier instalment of University of Western Australia v Gray (No 20) [2008] FCA 498 at [1426], where French J listed the following principles (also used by US appellate courts):

RICHARD BADDELEY Principal

– addition of its Dr Henry (“H”), its R&D Director, as an inventor, and

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