A decision by the Full Federal Court of Australia has found that even if you have contributed to an invention and your contribution has led to a patent claim, you may not be a co-inventor for that claim.

The case

The Full Federal Court in Kafaratis v Davis [2016] FCAFC 134 considered the Australian inventorship requirements for a PCT application for a method of playing a card game. The PCT application concerned a method of wagering, whereby a player of a card game, such as baccarat or blackjack, can wager on an effect of a third card after two cards have been dealt. The inventive concept was determined to be a secondary or auxiliary bet option exercised independently or in cooperation with the primary game.

The PCT application claimed priority to a provisional patent application for which all statements of invention were limited to baccarat. Indeed, the Court determined that no games other than baccarat had been identified by the original inventor or the patent attorney for the provisional patent application.

After filing the provisional patent application an expert in wagering and gaming was engaged to devise betting odds. That expert identified that the opportunity to be bet on a third card could be applied to blackjack. The expert spent some 50 hours developing a rules document and calculating odds using a website that provided the probability information for baccarat and blackjack.

Based on the work of that expert, the limitation to baccarat was omitted from the independent claims of the PCT application, and dependent claims to expressly cover blackjack were included. Nonetheless, the Court determined that the engaged expert was not a co-inventor.

Contribution to the inventive concept

Although the only game referred to in the provisional patent application was baccarat, the Court found that inventive concept was not dependent on a particular game — the provisional specification had indicated a more general desire to provide more versatile games of chance in which a primary and secondary game can be operated cooperatively or independently of each other.

Thus it was found that the contributions of the engaged expert had no material effect on the inventive concept. The Court acknowledged that in some cases the reduction of the concept to practice can itself require an inventive contribution, but that the contribution by the engaged expert was not such a case. The Court found that the engaged expert was alerted, by the original inventor, to the concept of baccarat having an auxiliary betting opportunity, and the expert then considered the rules of blackjack to see if a similar auxiliary betting opportunity arose. Rather than bringing about a change to the invention, he merely provided another example.

Implications for ownership

The case highlights the relevance of the quality of a person’s contribution and its impact on the inventive concept, which is not necessarily determined by the claims. The case shows a stark contrast with the law in US, where inventorship is, in a more straightforward manner, determined by who contributed to the claims. This difference from US law could result in some Australian patent applications having either fewer or more inventors than in their US counterparts.

If there is uncertainty surrounding inventorship and resulting ownership for Australia, it is general practice to err on the side of including the co-inventor/applicant in question. However, to ensure that a party can reap the benefits of their investment in patent protection, care needs to be taken to ensure that the party does in fact have rights to the Australian patent application, particularly in cases where the party’s rights are derived from an alleged inventor that did not conceive of the original inventive concept.