Vehicle Monitoring Systems Pty Ltd (‘VMS’) developed a Parking Overstay Detection System, also known as the POD system. SARB Management Group Pty Ltd (‘SARB’) intended to collaborate with VMS to assist in the advancement of the POD system, however, no such collaboration eventuated. Instead, SARB developed its own detection system which became the subject of Australian Patent Application No. 2013213708 (‘the Patent Application’).
VMS opposed the grant of the Patent Application on the basis that the claims lacked an inventive step, and VMS also argued that SARB did not have entitlement to the grant of the Patent. VMS submitted that its Managing Director, Mr Welch, was entitled to be named as an inventor in respect of the patent application. However, the primary judge rejected VMS’s submissions, and it was on that basis that VMS sought leave to appeal.
On Appeal, the Full Court considered whether Mr Welch’s contribution was a contribution to the inventive concept and on that basis whether Mr Welch was entitled to the grant of the Patent. Accordingly, the meaning of “inventive concept” was considered by the Full Court. Mr Welch’s submissions included evidence of a PowerPoint presentation at a 2006 conference, which Mr Welch argued gave him entitlement to the grant of the Patent.
The Full Court agreed with the primary judge that Mr Welch was not entitled to be named as inventor in the Patent application on the basis that Mr Welch merely provided commercial stimulus for SARB to develop the invention. In other words, the Court considered that commercial stimulus does not equate to inventive concept.1 In addition, the information provided by Mr Welch was considered not to go beyond information that was already in the public domain. Accordingly, the Appeal to the Full Court was dismissed.
Another important takeaway from this decision is that the “inventive concept” of a Patent should not be solely discerned from the claims, but more broadly, i.e. from the whole of the specification.2
This decision provides clarification regarding the Court’s interpretation of ‘inventive concept’, and how entitlement to the grant of a standard patent is determined. This decision is particularly useful since it is relatively rare for the full Court to consider patent entitlement issues. It also demonstrates issues relating to non-documentary publications (i.e. PowerPoint presentations) and the importance of maintaining good written records of contribution to an invention.
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1 Ibid 178.
2 Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2021] FCAFC 224, 104.
