So who owns the invention anyway?

The Commissioner of Patents recently handed down McDonald v Vines 63 IPR 465. This is a useful case as it summarizes the often vexed issue of who actually owns an invention.

The dispute centred on the ownership of an invention for the treatment of incontinence. Vines filed a provisional patent application naming himself as inventor. McDonald subsequently filed a notice under section 32 of the Patents Act that provides for disputes between parties as to how a patent application should proceed. In order to defend himself, Vines withdrew the application and McDonald then filed an application under section 36 of the Patents Act for a declaration that he be an eligible person to be nominated for a patent.

McDonald and Vines had reached an agreement whereby McDonald would be involved in the development of the invention. As expected, the parties had different ideas as to what McDonald's contribution had been. However, it was common ground that Vines approached McDonald on the basis of McDonald's expertise in the field. The Commissioner took the position that McDonald must have had some idea of what Vines had invented. Also, McDonald did make some suggestions as to how the invention may be improved.

Citing previous cases, the Commissioner held that a person has entitlement to an invention if that person's contribution had a material effect on the invention. A material effect is that which results in the occurrence of an invention. The Commissioner noted that the onus was on McDonald to show on a balance of probabilities that he was entitled to be nominated for a patent. McDonald could not discharge this onus.

After considering the evidence, the Commissioner was of the opinion that McDonald had merely confirmed concepts already canvassed by Vines. In this regard, the Commissioner cited previous authorities when stating that the applicant needs to supply some improvement to the device which is not contemplated by the respondent and which is material to the invention.

As an interesting aside, Vines introduced evidence of research into the matter before communicating with McDonald. This took the form of web page printouts. However, the Commissioner pointed out that the date on these printouts was after meetings with McDonald. Clearly, Vines had re-visited these web pages to print them out. The Commissioner gave these documents very little probative value. This emphasizes the importance for inventors to track their web-based research carefully and pay particular attention to dates. Us patent attorneys live and die by dates!

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