In a recent decision by the Australian Patent Office (Michael John Arieni v SunWizard Holding Pty Ltd [2021] APO 20), Spruson & Ferguson has been successful in the first Australian opposition to a surrender of a patent (based on available public records). The proceeding was a combination of an opposition to a surrender of an innovation patent and an entitlement dispute under s 191A of the Patents Act 1990 (Cth).

The Delegate found that the Requestor/Opponent (represented by Spruson & Ferguson) was the true inventor, instead of the original inventors, and refused to accept the offer to surrender the patent. The Delegate thus directed that Sun-Wizard Holding Pty Ltd (“the original Patentee”) was not the owner, and that all rights in the patent have now been transferred to a company affiliated with the Requestor/Opponent.

Background

Innovation patent AU 2014100975 (“the Patent”) entitled “Solar Powered Outdoor Lighting Device” and in the name of Sun-Wizard Holding Pty Ltd was filed on 25 August 2014, granted on 11 September 2014 and certified on 16 March 2015. The granted innovation patent certificate lists the inventors as Ian Fry and Richard McCleary.

On 12 September 2019, a notice of opposition to the certified innovation patent was filed by the Requestor/Opponent, Michael Arieni. The Patentee was advised that their evidence in answer should be filed on or before 12 December 2019. However, instead of filing evidence in answer, the Patentee filed an application to surrender the innovation patent under the provisions of s137 of the Patents Act 1990 (Cth). In response, the Requestor withdrew the notice of opposition to the innovation patent and filed a notice of opposition to the surrender of the patent asserting that the Patentee is not entitled to the patent. The Requestor asserted that he is an inventor of the patent and, therefore, the Requestor is entitled to the patent and the revocation of the patent would unfairly disadvantage the Requestor. A request under s191A1 to record Michael Arieni (“the Requestor”) as the inventor and patentee of the innovation patent was also filed along with the notice of opposition to the surrender of the patent.

Evidence was filed by both parties and the hearing was conducted via written submissions. The evidence filed by the Requestor included various emails and a sketch made by the Requestor in April 2010 when the Requestor and one of the original named inventors, Ian Fry, were directors of the same company (Exlites Pty Ltd). The sketch was found to show2 the main inventive features of the invention as claimed in the Patent and the evidence stated that the sketch had been emailed to Ian Fry in April 2010, well before the earliest priority date of the Patent. Although the sketch was not dated, supplementary documents provided in the evidence supported the Requestor’s recollection that the sketch was made in April 2010. In the evidence filed by the Patentee, Mr Fry denied having seen the sketch during his time with Exlites but provided very little information3 in relation to his or Mr McCleary’s contribution to the conception of the invention.

Decision of the Delegate

The Delegate noted that, based on the evidence, it appeared that Mr Fry and Mr McCleary had no material input into the conception of the invention claimed in the Patent and concluded that the Requestor was the sole inventor of the claimed invention4.

With regard to the surrender of the Patent, the Delegate stated:

“Having found that Sun-Wizard is not entitled to any rights to the innovation patent, it is clear that they also do not have any rights to surrender what is legally not theirs. I therefore refuse to accept the Patentee’s offer to surrender the innovation patent. … As the invention has otherwise been found to comply with the other legal requirements and has been certified, revoking the patent would adversely affect the rights of Mr Arieni or Key Logic. I therefore also refuse to revoke the patent.”5

The Delegate was unable to make a definitive determination as to who is entitled to the Patent as the Requestor was the Managing Director of Key Logic Pty Ltd (which was the sole shareholder of Exlites Pty Ltd) at the time he conceived the invention. The Delegate suggested that Key Logic Pty Ltd is likely to be entitled to the Patent. This has since been confirmed by the Requestor and the Register has been amended to record Key Logic Pty Ltd as the Patentee and Michael Arieni as the sole inventor.

Conclusion

The decision by the Patent Office issued in relation to this opposition demonstrates that it is indeed possible to successfully oppose a surrender of a patent. Although the particular circumstances of this matter related to entitlement, there may well be other circumstances under which such an opposition may be successful. It is also encouraging that, when provided with sufficient evidence to support the Requestor’s entitlement to the Patent, the Patent Office did not hesitate to award complete ownership of the Patent to the Requestor.