E-Chem Technologies (E-Chem) was established in March 2004 by Fosroc International Limited (Fosroc), and E-Chem was granted a patent in Australia on 18 November 2010. Vector purchased a corrosion business of Fosroc and its related companies in January 2009 via a Deed of Assignment.
The inventors listed in the E-Chem patent were employees of Fosroc prior to the filing of the E-Chem patent, and it was on this basis that Vector claimed that the inventive concept of the patent was conceived by the inventors during their employment with Fosroc, hence Vector had a claim to entitlement to the grant of the patent. In addition, Vector contended that they were an “eligible person” to whom a patent can be granted under section 192(2) of the Australian Patents Act 1990 (Cth).3 Accordingly, the issue to be decided in this case related to whether the inventors conceived of the inventive concept during their employment with Fosroc.
The Court concluded that the inventive concept was conceived of in the context of the inventors’ work after they had left Fosroc,4 ie. from October 2004 to February 2005, and that any ideas relating to the invention that were conceived during their employment with Fosroc were not contemplated in the invention since it wasn’t until after their employment ceased that substantive development of the invention occurred.
Accordingly, the Court held that the invention was not conceived during the inventor’s employment with Foscroc, hence Fosroc were not entitled to the grant of the E-Chem patent and hence the patent rights could not be passed to Vector. In addition, Vector was not considered an eligible person solely or together with E-Chem in respect of the E-Chem patent.
This decision highlights that in disputes that arise in relation to ownership (entitlement), consideration should be given to the date on which an inventive concept is conceived, and the timing of events that culminated in the filing of a patent application. In obiter, the Judge also noted that unreasonable delays to the initiation of proceedings which seek to challenge the entitlement to the grant of a patent (10 years in this case) is prejudicial and not viewed favourably by the Court.
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1 Vector Corrosion Technologies Ltd v E-Chem Technologies [2022] FCA 188 (‘Vector Corrosion Technologies’).
2 Patents Act 1990 (Cth) s 15(1)(c); this provision related to who may be granted a patent, in particular, granting a patent who derives title to the invention, from the inventor.
3 Australian Patents Act 1990 (Cth) s 192(2).
4 Vector Corrosion Technologies (n 6) 155.
