IP SPOTLIGHT JULY 7

would lead to a conclusion that the invention was made in the course of his employment. Also, whilst the invention was clearly in an area of technology that was relevant to his employer, the employer had not directed the creation of the invention. EX-EMPLOYEE NOT ENT I TLED A counterpoint to the decision in Spencer v Collins referenced above can be seen in the 2019 decision of Vuly Pty Ltd v Wei Yang [2020] APO 13. Here an employee (Yang) had become aware of an inventive concept whilst employed and was held not to be entitled to then obtain a patent directed to that inventive concept having left that employer. The invention in question here related to trampolines of the springless type that are so popular at present. Yang was employed by Vuly as a mechanical engineer and there was not real argument that innovation in the area of trampoline design fell outside his employment. However, for some time and over a number of actions taken before the Australian Patent Office to assert their rights to the invention, Vuly had not been able to successfully make a claim to ownership of the invention. This changed when Vuly was able to provide evidence of Yang having received two emails from Vuly’s CEO that included sketches of the invention that Yang was seeking to patent. The invention was consequently Vuly’s, despite Yang suggesting that he had no recollection of the emails. The Delegate was satisfied on the balance of probabilities that Yang would not have been able to isolate the information from the emails in his mind after receiving it and to then recreate it independently. TAKE-AWAYS? Employers should review, and if appropriate, put in place employment agreements with their staff that make it clear what the expectations are regarding ownership and handling of intellectual property. Employees should review their circumstances and any agreements in place to ensure their expectations regarding ‘who owns what’ are likely to be met. When in doubt, as always, seek professional advice.

Any fuzziness around the edges can generally be clarified through an appropriate employment agreement. The inclusion of terms regarding an employee’s duties and the ownership of intellectual property is highly recommended. It is worth noting that consultants are typically treated differently to an employee, and particularly careful consideration must be made of any engagement with a consultant to ensure that all parties are happy with how any existing intellectual property, and any resulting intellectual property, will be handled. NOT EMPLOYED TO I NVENT In Australia we have the benefit of some historical guidance on the question of when an employee may be considered not to have been employed to invent. The result being that the employer did not have the right to the invention, nor did they have the right to apply for a patent. In University of Western Australia v Gray [2009] FCAFC 116, the Full Federal Court of Australia determined that researchers employed by a university to undertake and organise research did not have a ‘duty to invent’. The contracts of university academic staff do not include an implied term that would result in the university owning inventions created in the course of their employment. At the time of this decision, the result was, for most, quite surprising. On 12 February 2010, the High Court of Australia, the ultimate court of appeal in Australia, dismissed an application by the University of Western Australia for special leave to appeal the Full Federal Court’s decision. The High Court considered that there was no error in the judgement at first instance by Justice French (who is now the Chief Justice of the High Court) and whose decision was affirmed by the Full Federal Court, thus giving further weight and authority to the decision. Most publicly funded institutions in Australia set about setting in place new contracts with explicit terms relating to the ownership of intellectual property as a result of this decision. In the case of Spencer Industries Pty Ltd v Collins [2003] FCA 542, a sales manager for a family business manufacturing and supplying equipment used in tyre re-treading was found to be the owner of an invention for a tool used in tyre re-treading that was conceived whilst he was employed. Key aspects to this decision included that the inventor held a sales position, and despite it being a managerial level position the inventor did not have a level of seniority or control that

BUT THAT’S MY IDEA – ISN’T IT?

One of the most fertile grounds for disputes relating to inventions, and patents, is the question of who owns the invention or patent. We are reminded of this year after year as cases relating to the ownership of inventions come before the Australian Patent Office and the Australian courts.

invention will either reside with the (or with each) inventor, or with someone else who can claim entitlement from the (or with each) inventor.

AN EMPLOYER AS OWNER One common circumstance is that an employer will claim entitlement to an invention from their employee. Typically this is appropriate. That is, an employee that has been engaged to generate ideas about how to achieve a certain outcome in new and innovative ways in a specific technology area should expect that their employer will claim, as theirs, the fruits of their labour. This is the traditional ‘master/servant’ relationship in action. Other factors can and often do play a role in determining who owns what – although these factors are not determinative in and of themselves. For example, is the invention in the area of technology in which the employee was engaged to operate? Was the invention created on or with the employer’s equipment and facilities, and on their time? Was the employer directing the inventor’s actions or activities?

There are two considerations involved. Firstly, who is or are the inventors? Secondly, who then owns the invention?

MATER I AL CONTR I BUT ION TO THE CONCEPT

PETER CAPORN Principal

In the Australian context, an inventor is someone who can be seen to have made a material contribution to the concept of the invention (see for example the decision in Neobev Pty Ltd v Bacchus Distillery Pty Ltd (Administrators Appointed) (No 3) [2014] FCA 4). In turn, the ownership of the

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difficult when the focus is often on the flowsheet that is to be commercially implemented. Taking the above example, a third party could potentially avoid infringement by ensuring their own process included one or more of the following: – – Crushing ore to a different average particle size – – Conducting the leach using a different acid or at ambient temperature – – Recovering the metals by solvent extraction or precipitating a carbonate instead of a hydroxide The options available to third parties can be limited by ensuring that the language used in the claim is broad enough to cover alternatives. KEY TAKEAWAYS When applying for a patent, care must be taken to ensure that the patented claims describe the invention in a manner that is sufficiently broad to cover not only the particular product/process that is intended to be implemented commercially, but also alternative variations that third parties may look to implement. When considering whether your own product/process would infringe another patent it is important to carefully review the granted claims to evaluate whether your product/process does in fact include all of the essential features of the claim. It may also be possible to avoid infringement by replacing one or more of the claimed features without departing too far from your intended path.

claims will describe a set of process steps. Once granted, the claims will be used to determine infringement of the patent.

To put this into perspective, Claim 1 for a theoretical hydrometallurgical process may be granted as follows:

– – A hydrometallurgical process for extracting metals from an ore, comprising the steps of: a. subjecting the ore to a size reduction step to produce a feed stream with an average particle size of about 500 µm b. subjecting the feed stream to a sulphuric acid leach at a temperature of at least 50°C c. separating undissolved solids from the product of the leach step d. recovering a metal hydroxide solid from the leach solution by adding a hydroxide source. The scope of such a patent is defined by particular steps (a)-(d). I NFR I NGEMENT Patent infringement occurs when an alleged infringer has exploited a product or process which falls within the scope of one or more claims of a granted patent without the authorisation of the patent owner. In order for this to occur, the infringing product must include all essential features of one or more claims, or the infringing process must include all of the essential claimed steps. In the above example, if we agree all the steps are essential, any third-party process that includes all of steps (a)-(d) would infringe this patent, irrespective of any other steps that are also included in the third party’s process. On the other hand, if the third-party process did not include all of these features as set out in Claim 1, it would not infringe the patent. I T ’S ALL I N THE WORDS Given the importance of the claim language in determination of patent infringement, it is important that the language used in the claims is sufficiently broad. It is also important to ensure that the integers in the claim are in fact essential, as this prevents third parties from easily replacing one or more features of the claimed process in order to avoid infringement. The main difficulty faced when claiming mineral processes is that many different processing routes are often available at each step in a process, so care needs to be taken to ensure all obvious variations are covered. This can be

BACK TO BASICS: CLAIMS OF MINERAL PROCESSING PATENTS AND INFRINGEMENT

When people think of patents it is typically with reference to physical products or apparatus as this provides an easy way in which to visualise the patented invention. Processes (or methods) can similarly be patented and such patents are used extensively in the mining industry to protect new mineral processing technologies. But without a physical product to provide a reference, it can often be difficult to visualise the scope of these patents.

PATENT SPECI F I CAT ION BACKGROUND A patent is split into two main parts, the description and the claims. The description provides a discussion of the technology, often with reference to the problems addressed by the patented invention. The description also provides a detailed explanation of the various features of the technology and preferred ways in which the invention may be produced and/ or implemented. The claims reduce the technology to its essential features and are used to define the scope of the patent. Claim 1 (and other independent claims) will typically define the broadest scope of the invention and the dependent claims introduce further important features. Claims are typically described with reference to a set of features, these are often referred to as the claim integers. Where the invention relates to a product/ apparatus, the claims will describe a set of physical features of the product. Where the invention relates to a process, the

TYSON KEED Senior Associate

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As a startup, you have probably got a lot on your to-do list, from completing your MVP to refining your business model and planning your strategy. So where does intellectual property (IP) fit in to all of this? Do I have time? Do I have the budget? And why should I make IP a priority over all the other important stuff I have to do? These next three tips are some of the most common pieces of advice we routinely give to our startup clients each day. If followed, they can save you and your business from being distracted, giving you more invaluable time to focus on the things that are important and generate real value. KEEP I NG I T CONF I DENT I AL One of the very first things you want to do with your new idea is to shout it to the world! After all, you’re proud of it, right? And you know deep down inside that a “common sense” check with your friend, family member or work colleague will give you a healthy dose of reality you need. Then, you need to discuss your idea with a developer be it an engineering company, or software development company. Now enter from stage left the Confidentiality Agreement (or Non-Disclosure Agreement as it’s also called). The reasons you want your discussions about your idea to be treated confidentially are many fold, but these two are the most important: – – You don’t want someone else to run off into the sunset with your idea – – You don’t want to inadvertently destroy your ability to get a patent These two things can happen if you don’t ensure your discussions are treated and kept confidential. So always consider entering into an NDA with anyone with whom you will be discussing your idea. Signing a formal document like an NDA also sets the tone of the relationship. It lets the recipient know that you consider your confidential information to be valuable and that it should be treated differently to other information.

People always ask me, what’s the value of an NDA? Is it worth the paper it’s printed on?

In the case of a dispute about confidential information, it is almost always better to have it in writing. It gives the recipient party a lot less wiggle room if your NDA sets out clear expectations for how confidential information will be treated and managed and precisely defines what your “confidential information” actually is. OWN WHAT YOU PAY FOR Did you know that, generally speaking in Australia , if you pay a contractor to create a design or code a piece of software for you, the first owner of the IP in that creation is the contractor and not the person who paid for it? The solution is quite simple: get ownership of IP confirmed in writing. If you need to own that particular piece of IP make sure you have a written agreement clearly stating that you own the intellectual property in what has been created. This is called an assignment. For a software app it might be the source code, the logo, icons, graphics, text and the even the wireframe. For a new device, it might be engineering drawings and even the engineer’s own “inventive contribution” towards the device – this is especially important if your idea is not fully formed and you are outsourcing some of the “inventing” to your contractor. The other thing to remember is that you don’t need to own it all – sometimes you just need sufficient permission to use the IP or parts of it. This is called a licence and merits a separate article of its own! BE AWARE OF WHO ELSE I S OUT THERE IP is literally all around us. The Apple iPhone consists of hundreds of different IP rights: patents for inventive aspects of its functionality, designs protecting how it looks, trade marks protecting the brand and copyright protecting the software code. Many of these rights are registrable, and so publicly accessibly IP registries all around the world can tell you all sorts of interesting things about the monopolies (or exclusive fields) that these IP rights owners hold. Since straying into someone else’s exclusive field can lead to IP infringement, This default legal position takes many by surprise.

T H R E E I P T I P S T O W R I T E I N T O T H E O P E N I N G A C T O F Y O U R S T A R T U P J O U R N E Y

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I N THE END Adopting an IP conscious approach whilst continuously refining your idea is a smart way of going about pursuing your startup. The tips we set out above can be easily integrated into your startup journey by simply stopping at various touchpoints to ask three simple questions: does this need to be kept confidential, do I own it, and what are others doing? Armed with these three simple questions, you are well on your way to protecting your IP proactively, which will automatically give you a competitive edge over those that don’t.

the first use for trawling the public IP registries is to help you understand whether your proposed new product or service may be infringing someone else’s IP rights. Another way you can leverage publicly available information is for competitive gain. For example, doing a quick search for Apple’s latest patent filings can tell you what they’re working on. Conducting searches of competitor’s filing helps you understand where their products may be heading before they even hit the market, which could give you the heads-up you need to pivot and save some invaluable resources (read: time and money!) Flicking through the patent register can also tell you what’s been done before. Generally speaking, under patent law, if it’s done been before anywhere else in the world (whether found in a patent or in a journal article), it may be difficult to obtain patent protection. The lesson here is that freely available information can be used as a powerful source of intelligence to inform your product or service development, refine your go-to-market strategy and stay ahead of the competition.

ADRIAN HUBER Special Counsel

About Wrays

Wrays is one of the largest independent IP specialist firms in Australia – bringing together the right combination of experts to protect, grow and defend our client’s intellectual property assets locally and globally for 100 years.

And when you combine our passion for achieving the best result with our broad capability across the IP spectrum, it’s our clients who enjoy the benefits. In day-to-day reality, this means bringing the right people in the room every time and working together across disciplines to deliver what’s needed.

It doesn’t stop there. Through our extensive local and global networks, we can connect clients with like-minded experts who deliver supporting services, such as private equity, tax advisors, corporate and employment law, as well as IP specialists around the world servicing other jurisdictions. wrays.com.au

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