JMVB Enterprises Pty Ltd (formerly A*Van Campers Pty Ltd) v Camoflag Pty Ltd [2006] FCAFC 141 (29 September 2006)

JMVB Enterprises Pty Ltd (formerly A’Van Campers Pty Ltd) v
Camoflag Pty Ltd [2006] FCAFC 141

INTELLECTUAL PROPERTY – patents – validity – whether assignment effective – obviousness – entitlement to patent – whether title to patent derived from actual inventor – whether notional skilled addressee could reasonably be expected to have ascertained information – whether designer of caravans in Australia could be reasonably expected to conduct a patent search in New Zealand – whether an importer is an inventor

Patents Act 1952 (Cth)
Patents Act 1990 (Cth) ss 3, 7, 15, 18, 138
Statute of Monopolies 1623 (Cth) s 6

Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 referred to
Atlantis Corp Pty Limited v Schindler (1997) 39 IPR 29 applied
Commissioner of Patents v Emperor Sports Pty Limited [2006] FCAFC 26; (2006) 149 FCR 386 referred to
Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 referred to
Speedy Gantry Hire Pty Ltd v Preston Erections Pty Ltd (1998) 40 IPR 543 referred to
Stack v Brisbane City Council (1999) 47 IPR 525 referred to

JMVB ENTERPRISES PTY LTD (formerly A'Van Campers Pty Ltd) v CAMOFLAG PTY LTD

VID1409 OF 2005

EMMETT, STONE & BENNETT JJ
29 SEPTEMBER 2006
SYDNEY (HEARD IN MELBOURNE)

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID1409 OF 2005

BETWEEN:	JMVB ENTERPRISES PTY LTD (formerly A'Van Campers Pty Ltd) APPELLANT
AND:	CAMOFLAG PTY LTD RESPONDENT
JUDGES:	EMMETT, STONE & BENNETT JJ
DATE OF ORDER:	29 SEPTEMBER 2006
WHERE MADE:	SYDNEY

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID1409 OF 2005

BETWEEN:	JMVB ENTERPRISES PTY LTD (formerly A'Van Campers Pty Ltd) APPELLANT
AND:	CAMOFLAG PTY LTD RESPONDENT

JUDGES:	EMMETT, STONE & BENNETT JJ
DATE:	29 SEPTEMBER 2006
PLACE:	SYDNEY

1 The appellant, JMVB Enterprises Pty Ltd (‘the Patentee’), was granted Australian Patent No. 693176 (‘the Patent’) for an invention relating to campervans. The invention was for a campervan that can be readily and easily put into a compact form for towing and storage, but which can also be erected readily for use. The respondent, Camoflag Pty Ltd (‘Camoflag’), claims that the Patent is invalid. On 19 October 2005, a judge of the Court ordered that the Patent be revoked and that the Commissioner of Patents make an entry in the Register of Patents accordingly. In consequence, the primary judge also dismissed the Patentee’s claims against Camoflag for infringement of the Patent. Camoflag accepts that, if the Patent is valid, its actions have infringed the Patent. The only questions on the appeal, therefore, relate to the validity of the Patent.

2 The Patentee has now appealed to the Full Court from the orders of the primary judge. Camoflag says that the Patent is invalid on several grounds. First, Camoflag says that the alleged invention of the Patent did not involve an inventive step when compared with the prior art base as it existed before the priority date of the claims of the Patent. Secondly, Camoflag says that the Patentee is not entitled to the Patent because it was neither the inventor nor a person who derived title to the invention of the Patent from the inventor. Thirdly, Camoflag says that the Patent was obtained by false suggestion or misrepresentation on the part of the Patentee, in so far as the Patentee asserted that it derived title to the invention of the Patent from the inventor. Camoflag bears the onus of establishing each of those matters.

3 The invention of the Patent is described in claim 1 of the complete specification as a campervan comprising:

4 There are 8 other claims of the Patent, each of which is dependent on Claim 1. It is not necessary to deal with Claims 2 to 9, since it is accepted that all claims stand or fall together.

5 Section 138(1) of the Patents Act 1990 (Cth) (‘the Act’) provides, relevantly, that any person may apply to the Court for an order revoking a patent. Under s 138(3), the Court may revoke a patent on several grounds, including the following:

6 As to (a), s 15(1) of the Act provides that a patent for an invention may be granted, relevantly, to a person who:

Those provisions call for an enquiry as to who is the inventor of a claimed invention and whether the relevant patent applicant is either the inventor or a person who has a title to the invention derived from the inventor.

7 As to (b), s 18(1) of the Act relevantly determines what is a patentable invention. Relevantly, under s 18(1)(b)(ii), an invention will not be a patentable invention, so far as claimed in any claim, unless, when compared with the prior art base as it existed before the priority date of that claim, it involves an inventive step. Section 7(2) provides that an invention is to be taken to involve an inventive step when compared with the prior art base, unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in s 7(3). Section 7(3) provides that, for the purposes of s 7(2), the kind of information is, relevantly, information that a person skilled in the relevant art could reasonably be expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.

8 Thus, ss 7(2) and 7(3) require the identification of a notional person skilled in the relevant art and the identification of the common general knowledge as it existed in the patent area. They also require an enquiry as to the information that such a notional person could reasonably be expected to have ascertained, understood and regarded as relevant to work in the relevant art.

9 The Patentee is a manufacturer and supplier of collapsible campervans, known in the Australian market as ‘A-vans’. A-vans have an A-shaped appearance when erected. That A- shape is sometimes referred to as ‘A-line’, such that the expression ‘A-line’ functions adjectively to describe a campervan with an A-shaped appearance. Camoflag is similarly engaged in the market for collapsible campervans. Its products are known in the Australian market as ‘Chalet’ campervans.

10 It is common ground that campervans like those claimed in the Patent had been manufactured and sold in the United States for several years before the priority date of the claims of the Patent. Mr Jeffrey Van Baardwyk, who is a director of the Patentee and an industrial designer, saw A-line campervans on a visit to the United States in late 1993 and realised their potential for the Australian market place. At that time there were two manufacturers, Chalet RV Manufacturing Inc (‘Chalet RV’) and A-Liner Inc, a Pennsylvania corporation.

11 Mr Van Baardwyk first went to Chalet RV, in November 1993, to endeavour to negotiate for the right to import and assemble its campervans in Australia. His negotiations were unsuccessful.

12 Mr Van Baardwyk then approached A-Liner Inc and entered into a licence agreement with A-Liner Inc in December 1993. Subsequently, a campervan manufactured by A-Liner Inc was imported into Australia. Drawings were made from that campervan for the purpose of preparing a provisional application for a patent. Mr Van Baardwyk redesigned the campervan for Australian conditions. The changes included changes to the aluminium extrusions, stiffening the chassis and strengthening the latches. There were also changes to wall heights, axles, internal layouts, the power system, certain seals and the banjo cord. All the changes, however, were manufacturing changes, rather than part of the claims of the Patent.

13 In the final version of its Notice of Entitlement, filed in connection with the application for the Patent, the Patentee claimed entitlement ‘from the actual inventor(s) by reason of contract of employment of Jeffrey Van Baardwyk to the patentee and assignment of all rights to the applicant company and licence from Mark A. Tait to the patentee dated 12^th December 1993’. The complete specification for the Patent named Jeffrey Van Baardwyk and Mark A. Tait (‘Mark Tait’) as the actual inventors of the invention of the Patent.

14 The primary judge held that any entitlement of the Patentee to the Patent depended upon Mr Van Baardwyk and Mark Tait being the co-inventors or upon a successful assignment of the Patent from Mark Tait to the Patentee, assuming that Mark Tait was, in fact, the inventor. Her Honour concluded that there was no evidence that Mr Van Baardwyk was an inventor in the relevant sense. Further, the primary judge considered that Camoflag had led evidence and elicited admissions from Mr Van Baardwyk in cross-examination sufficient for her Honour to conclude that it was not possible to be satisfied, to the requisite standard, that Mark Tait was, in fact, the inventor as claimed by the Patentee. Her Honour considered that the actual inventorship of Mark Tait had not been proved.

15 The primary judge also concluded that, even if Mark Tait was the actual inventor, the instruments relied upon by the Patentee as giving it title to the invention from Mark Tait did not have the effect of assigning rights of ownership in the invention. Accordingly, there was no effective assignment of any rights to the invention that might amount to an entitlement to the grant of the Patent under s 15(1) of the Act. That conclusion depends upon the proper construction of the instruments in question.

16 The primary judge also concluded that the challenges to validity based on false suggestion and misrepresentation were made out. In essence, it is unnecessary to determine that question, since it depends upon the correctness of the conclusions concerning entitlement. That is to say, if the Patentee was entitled to the invention of the Patent, as a person who derived title from Mark Tait, as inventor, there was no false suggestion or misrepresentation. On the other hand, if Mark Tait was not the inventor, or if there was no effective assignment from Mark Tait, it is unnecessary to determine whether there was a false suggestion or misrepresentation, since, in those circumstances, the Patentee was not entitled to the Patent.

17 Her Honour concluded that the information in three separate documents was information that the notional person skilled in the relevant art could be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area in 1993. The three documents were as follows:

18 Her Honour found that, for each document, in the light of the common general knowledge at the time, considered together with the information disclosed by that document, the invention lacked an inventive step. The primary judge formulated the question as being whether the notional person skilled in the art, as at May 1994, in all the circumstances, would be led directly, as a matter of course, to try to design a campervan having the combination of the claimed features of each claim of the Patent in the expectation that it might well produce a useful improvement in the field of campervan design in Australia (see Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 at [53]). Her Honour considered that the relevant skilled worker against whom to judge the inventiveness, or not, of the invention as claimed in the Patent is a person or persons designing and improving caravans as at the priority date. Her Honour considered that the relevant field was caravan design, which is a simpler field than a complex scientific area of expertise in which leading experts are far removed from skilled workers.

19 The primary judge concluded that the notional person skilled in the art at May 1994, in all the circumstances, would have been led directly, as a matter of course, to try to design a campervan with the features claimed for the alleged invention, in the expectation that this might well produce a useful improvement in the campervan field. Her Honour concluded that the invention as claimed, being a combination, was obvious at the relevant date. Accordingly, the ground of objection that the Patent lacked an inventive step was made out.

20 There are, in effect, two broad issues that are raised in the appeal. The first is whether there was a patentable invention. That issue raises the question of obviousness in the context of ss 7(2) and 7(3). The second issue is whether the Patentee is entitled to the Patent.

21 Camoflag has the burden of establishing invalidity of the Patent on the ground of want of entitlement on the part of the Patentee. Camoflag may establish invalidity by proving, to the requisite standard, the existence of entitlement in a person who, for whatever reason, does not wish to come forward and assert that entitlement in a proceeding against a patentee (see Stack v Brisbane City Council (1999) 47 IPR 525 at [78] and Speedy Gantry Hire Pty Ltd v Preston Erections Pty Ltd (1998) 40 IPR 543 at 549 and 558).

22 The issues in the appeal concerning the entitlement of the Patentee to the Patent that were decided by the primary judge are as follows:

23 However, on the hearing of the appeal, the Patentee sought to rely upon a fresh argument that had not been advanced before the primary judge. The fresh argument is that the term inventor, when used in s 15(1) of the Act, includes an inventor by importation or by communication from abroad. Camoflag accepted that the trial would not have been conducted differently if the argument had been raised before the primary judge and that all the material necessary for the Full Court to consider the argument was in the appeal papers or in the findings of the primary judge. Accordingly, the Court granted leave to the Patentee to make supplementary submissions in relation to the fresh argument. The Patentee was ordered to pay Camoflag’s costs thrown away by reason of the lateness of the raising of the fresh argument.

24 It will be necessary to deal with each of the issues separately. However, before doing so, it is desirable to recount the circumstances that led to the Patentee’s application for the Patent and its grant.

25 On 12 December 1993, a licence agreement was entered into between A-Liner Inc, as Seller, and NBS Enterprises Pty Ltd and Jeff Van Baardwyk, as Buyer. A company search was in evidence before the primary judge and counsel for the Patentee noted that the company search indicated that NBS Enterprises was a former name of the Patentee. Mr Van Baardwyk’s authority to contract on behalf of the Patentee was not queried. The licence agreement recited that the Seller had developed and was the owner of certain manufacturing trade secrets, technical know-how and engineering designs relating to the manufacture of certain types of recreational vehicles and that the Buyer desired to obtain the right to use such information and to obtain a licence from the Seller to manufacture and to sell ‘the Products’ in Australia. The term ‘Products’ was not defined in the licence agreement.

27 By clause 5(a), the Buyer acknowledged the Seller’s proprietary rights in and to the Seller’s know-how and Seller’s Products. The Buyer agreed that, throughout the term of the licence agreement, trade secrets, technical know-how and other knowledge, information, instructions or engineering advice disclosed or furnished to the Buyer by the Seller would not be disclosed or permitted to be disclosed by the Buyer without the express written permission of the Seller. By clause 5(b), the Buyer agreed to refrain from copying or permitting others to copy any of the Seller’s know-how to be used by third parties who are not bound by the licence agreement.

28 By clause 7, the Buyer agreed that it would not deny or contest the validity of the proprietary nature of any of the patents, trademarks, data, technical processes, know-how, engineering drawings and concepts constituting the Seller’s know-how or the Products.

29 However, by clause 10, the Buyer agreed to disclose to the Seller promptly in writing any inventions or improvements made or acquired by the Buyer with respect to the Seller’s know-how or the Products. The Buyer agreed to grant to the Seller an irrevocable, royalty free, non-exclusive licence, including a right to grant sub-licences to manufacture, use and sell the subject matter of such inventions or improvements. The Seller was to have the right to apply for patent protection, with respect to such inventions or improvements, in its own name and at its own cost if the Buyer elected not to apply for such patent protection. No other mention of patents was made in the licence agreement.

30 By clause 9, the term of the licence agreement was to be five years, expiring on 31 December 1998. However, the licence agreement was to be renewable for a period of an additional five years. Following the expiration of the licence agreement, the Buyer was to have no further right to use the Seller’s know-how or to manufacture and assemble or sell the Products.

31 Clause 12 provided for the termination of the licence agreement by either party upon default or breach by the other party. Clause 12 also relevantly provided that, in the event of termination, the Buyer was thereafter not to have any right to use the Seller’s know-how, or manufacture or sell the Products or disclose any such information to anyone. There were repetitions of clauses 12 and 13, indicating some printing error in the production of the licence agreement.

32 By clause 19, the parties agreed that the licence agreement stated the entire agreement reached between them with respect to the subject matter thereof. It was not to be amended except by written instrument executed by the parties. There is another clause that is also numbered 19, concerning notice, again indicating some printing error. However, the mistake is immaterial.

33 Another version of the licence agreement, dated 17 December 1993, was also in evidence. While that version was similar in most respects, there are several differences. There was no explanation for the two versions. The imperfections in the printing of the first version may have prompted reconsideration, but that is speculation.

34 Clause 9 of the licence agreement of 12 December 1993 provided that, if the parties desired to renew the licence agreement for an additional five years, the parties were to notify the other party within 90 days prior to the expiration of the agreement. That provision was omitted from the version of 17 December 1999.

35 Clause 11 of the version of 12 December 1993 included a requirement that the Buyer have in force product liability insurance to cover any catastrophe that could result in a claim against the Buyer. That requirement was omitted from the later version.

36 Clause 14 of the licence agreement contained a provision whereby the Buyer was to defend and indemnify the Seller from all damages and losses caused by or arising out of the breach of the licence agreement. The version of 12 December 1993 also imposed an obligation on the Buyer to indemnify the Seller against claims made by a third party. That provision does not appear in the version of 17 December 1993.

37 Clause 15 of the licence agreement provided for arbitration in the event of a dispute arising with respect to the licence agreement or any breach. The version of 12 December 1993 provided for the arbitrator to be appointed by the American Arbitration Association. The version of 17 December 1993 provided for three arbitrators, one appointed by the Seller, one appointed by the Buyer and the third appointed by those two arbitrators or, if they could not agree, by the American Arbitration Association. Different provisions were provided for the costs of the arbitrators.

38 Clause 16 of the licence agreement provided that the agreement was not to be assignable by either party without the prior written approval of the other. The version of 12 December 1993 provided that such approval would not be unreasonably withheld. There is no such qualification in the version of 17 December 1993.

39 It seems likely that the version of 17 December 1993 was intended to be the binding version. Thus, on 19 April 1994 a further agreement was entered into, which was expressed to be supplemental to the licence agreement of 17 December 1993. Nevertheless, as will appear later, the Patentee subsequently put forward the version of 12 December 1993 as the derivation of its title to the invention of the Patent, without mention of the later version or of the supplemental agreement.

40 The effect of the supplemental agreement is critical to the outcome of the appeal. It will be necessary to return to it later.

41 On 12 May 1994, the Patentee submitted a Patent Request and Provisional Specification to the Commissioner. The Patent Request named ‘Helen Spence’, a business partner of Mr Van Baardwyk, as actual inventor. On 11 May 1995, the Patentee submitted a Complete Specification. Once again, Helen Spence was named as actual inventor.

42 On 1 April 1997, the Patentee submitted a request for examination of the Patent Request and Complete Specification. That prompted a response from the Commissioner on 30 May 1997, which stated grounds of objection, including:

43 The Patentee’s patent attorneys replied on 23 March 1998, enclosing a request to amend the original Patent Request and a Notice of Entitlement. The amendment request was to amend the name of the inventor by substituting the name ‘Jeffrey Van Baardwyk’. The reason given was that an error had been made at the time of taking instructions from the Patentee by an employee of the attorneys. A statutory declaration by an employee of the attorneys asserted that Jeffrey Van Baardwyk was and always had been the actual inventor of the invention of the patent application. The Notice of Entitlement enclosed with the letter of 23 March 1998 asserted that the Patentee had entitlement from the actual inventor ‘by reason of contract of employment of the inventor to the applicant company and assignment of all rights to the applicant company’. On 28 April 1998, the attorneys forwarded to the Commissioner a new Patent Request, showing Mr Van Baardwyk as the actual inventor.

44 There things remained until February 2001, when there was an exchange of correspondence between the solicitors for the Patentee and the solicitors for Camoflag. The initial exchange was without prejudice. However, on 23 February 2001, Camoflag’s solicitors wrote to the Patentee’s solicitors confirming Camoflag’s intentions to import folding camping trailers that would infringe the Patent. They said that, if the Patentee commenced infringement proceedings, Camoflag would seek revocation of the Patent on the basis of its invalidity. They asserted that pamphlets available to Camoflag indicated that the particular model of campervan had been available in the United States prior to 1994. The Patentee’s solicitors replied on 28 February 2001, saying that they would require detailed evidence of publication of the pamphlets referred to before the matter could be considered further.

45 Further exchanges between the solicitors on 3 April 2001 crossed each other. The Patentee’s solicitors’ first letter said that it had come to the Patentee’s attention that Camoflag had placed on display, at the 2001 Melbourne Caravan, Camping and Touring Show, a campervan similar in design and feature to the Patentee’s campervan. The letter made demands for undertakings from Camoflag and said that, if Camoflag did not agree to the demands, the Patentee would commence proceedings forthwith. Camoflag’s solicitors replied saying that Camoflag remained of the view that the Patent was invalid due to prior publication of documents in the United States. Significantly, the letter also said that the Patentee was not entitled to be granted the Patent, even if it was valid, in that Mr Van Baardwyk was not the inventor. Camoflag’s solicitors said that they could only assume that the Patentee could not establish that Mr Van Baardwyk was the inventor of the invention of the Patent.

46 Camoflag’s solicitors’ second letter of 3 April 2001 referred to alleged threats made by Mr Van Baardwyk to the Caravan Association that he was going to Court to obtain urgent orders against Camoflag in relation to its exhibition of campers at the Melbourne Show. The letter again referred to brochures advertising a folding camper trailer in the United States prior to the priority date of the claims of the Patent. The Patentee’s solicitors responded by denying that the Patentee had made threats of any sort.

47 Further exchanges took place between the solicitors for the Patentee and the solicitors for Camoflag during April 2001. The exchanges related, for the most part, to a registered design in respect of a campervan, which is not presently relevant. The correspondence also touched on the publication in the United States of the pamphlets said to disclose the invention of the Patent. Camoflag’s solicitors asserted that, in the light of those disclosures, the Patent was invalid. The correspondence continued into May 2001.

48 Against that background, the Patentee’s attorneys wrote to the Commissioner on 31 May 2001, requesting leave to amend the Notice of Entitlement and the Patent Request. After referring to the fact that Mr Van Baardwyk was named as the inventor, the attorneys said that they were satisfied that that was correct, but that subsequent enquires persuaded them that Mr Van Baardwyk was not the sole inventor. They said that the other contributor was Mark Tait of the United States. The proposed amended Notice of Entitlement asserted that the Patentee had entitlement from the actual inventor ‘by reason of contract of employment of Jeffrey Van Baardwyk to the Patentee and assignment of all rights to the applicant company and licence from Mark A. Tait to the Patentee dated 12^th December 1993’. Enclosed with the letter to the Commissioner of 31 May 2001 was a copy of the licence agreement dated 12 December 1993. Significantly, no mention was made in the letter of the version of the licence agreement dated 17 December 1993 or the supplemental agreement of 19 April 1994.

49 The Commissioner responded to the attorneys’ letter of 31 May 2001, indicating that, before the request to amend could be processed, a Patent Request for a standard patent would need to be filed. The attorneys sent a Patent Request under cover of a letter of 14 June 2001. The Patent Request stated that the actual inventors were Jeffrey Van Baardwyk and Mark Tait. Mark Tait’s address was shown as Pennsylvania, United States. By letter of 11 July 2001, the Commissioner allowed the amendment. The Complete Specification for the Patent, as granted, named Jeffrey Van Baardwyk and Mark Tait as actual inventors.

50 The Patentee says that the inventor was Mark Tait. The primary judge considered that the evidence led by Camoflag and admissions elicited from Mr Van Baardwyk in cross-examination were sufficient for her Honour to conclude that it was not possible to be satisfied that Mark Tait was in fact the inventor.

51 The primary judge did not identify in specific terms the evidence led by Camoflag that her Honour had in mind. Camoflag says that it was evidence that at least two manufacturers had been marketing A-line campervans in the United States prior to the priority date of the claims of the Patent, being A-Liner Inc and Chalet RV. There was evidence from the principal of Chalet RV that there were no registered patents or designs relating to the Chalet A-line campervans in the United States and that there had been no challenge to Chalet RV’s right to manufacture its campervans in the United States. Camoflag says that, therefore, the primary judge was entitled to draw the inference that Chalet RV had been manufacturing and marketing its campervans for some years prior to 1993. Camoflag reasons, from that conclusion, that since those Chalet RV campervans were relevantly identical to the campervans of the Patent, someone other than Mark Tait must have been responsible for the invention.

52 Camoflag also points to the fact that Mark Tait was not named as a co-inventor by the Patentee in any patent request until 31 May 2001. Even then, the naming of Mark Tait was after revocation proceedings had been threatened by Camoflag’s solicitors on the ground that Mr Van Baardwyk could not be the inventor.

53 The relevant parts of the cross-examination of Mr Van Baardwyk referred to by the primary judge were as follows:

54 Later on, the following exchange took place in the course of cross-examination:

55 Camoflag points to the mention by Mr Van Baardwyk of Ralph Tait, Mark Tait’s father, as having been involved with A-line campervans in the 1970s. It contends that that throws doubt on the somewhat vague statements made by Mr Van Baardwyk in cross-examination that Mark Tait had ‘re-invented’ something in the 1980s and that Mark Tait was ‘the guy that put it all together’. Mr Van Baardwyk accepted, in answer to a question from the primary judge, that the campervan that he imported was of a kind that had been commercially produced and sold in the United States for many years prior to 1994. He also accepted that he did not himself see Mark Tait making or designing any part of a campervan.

56 There was nothing to suggest that Mark Tait was not available to give evidence in the proceeding. While he resides in the United States, he could have given evidence by video link. However, he was not called to give evidence. The primary judge concluded, therefore, that an inference should be drawn that Mark Tait’s evidence would not have assisted the Patentee (see Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298).

57 In all of the circumstances, the primary judge considered that it was not possible to be satisfied to the requisite standard that Mark Tait was in fact the inventor. Her Honour concluded that the actual inventorship of Mark Tait had not been proved. That approach involves a reversal of the onus. The onus was on Camoflag to demonstrate that the Patentee was not entitled to the Patent. It was not incumbent upon the Patentee to demonstrate that it was entitled to the Patent.

58 If anything, the evidence given by Mr Van Baardwyk confirms that Mark Tait was the inventor. The evidence relied upon by Camoflag, that A-line shaped campervans, from sources other than A-Liner Inc, had been available for some years in the United States prior to the priority date of the claims of the Patent, is equivocal as to the inventor. Camoflag adduced no evidence and made no submissions as to the identity of the inventor. The evidence does not establish that Mark Tait was not the inventor. The primary judge erred in concluding that, because the actual inventorship of Mark Tait had not been proved, Camoflag succeeded in establishing that the Patentee did not derive title to the invention of the Patent from the inventor within the meaning of s 15(1) of the Act.

59 However, that, of course, is not the end of the matter. It is still necessary to consider whether there was an effective assignment from Mark Tait to the Patentee.

60 It is curious that the earlier version of the licence agreement was submitted to the Commissioner and that the supplemental agreement was not submitted at all. The existence of the later version of the licence agreement, coupled with the failure to refer the Commissioner to the supplemental agreement of April 1994, tends to cast some doubt on the authenticity of the instruments. However, the Patentee denied that the supplemental agreement was either forged or falsified. The primary judge made no finding that cast doubt on its genuineness and Camoflag has not filed any notice of contention challenging the absence of such a finding.

61 All three instruments were signed by Mark A. Tait on behalf of A-Liner Inc. While there was no evidence as to Mark Tait’s capacity to bind A-Liner, no question as to his authority was raised. On the other hand, it is clear that Mr Tait signed only as a duly authorised officer of A-Liner Inc. All three instruments purport to be made by A-Liner Inc, and not by Mark Tait. Nevertheless, the appeal was conducted on the basis that any entitlement to the invention of Mark Tait belonged to A-Liner Inc. The question in the appeal was whether the licence agreement and the supplemental agreement together constituted an effective assignment of the invention from A-Liner to the Patentee, such that the Patentee derived title from Mark Tait as inventor, within s 15(1) of the Act. Whatever the relationship between Mr Van Baardwyk and the Patentee and the transfer of rights between them, the Patentee’s entitlement depends upon the license agreement said to transfer title from the inventor, Mark Tait.

62 Neither version of the licence agreement effected an assignment of any right or interest in relation to the invention of the Patent. The licence agreement does no more than confer on the Patentee, and Mr Van Baardwyk, the right to use A-Liner Inc’s know-how relating to the manufacture of campervans and to manufacture a particular type of campervan in Australia. That right was limited to a period of five years, with the right to extend the period for an additional five years. The licence agreement expressly provided that at the expiration of that period, the Patentee was to have no further right to use the know-how or to manufacture or sell A-Liner Inc’s products.

63 However, the supplemental agreement provided that, notwithstanding anything contained in the licence agreement, the Seller assigned to the Buyer:

The supplemental agreement also provided that the assignment was to apply ‘to the improvements referred to in clause 10’ of the licence agreement.

64 The supplemental agreement was expressed to be supplemental to the licence agreement of 17 December 1993. That is to say, the licence granted by the licence agreement was to continue in operation. The supplemental agreement assigns the rights of A-Liner Inc in its production methods, designs, apparatus, machine and/or methods used in the manufacture of its products. It does not purport to be an assignment of any invention or of any products. Indeed, neither the licence agreement nor the supplemental agreement identifies A-Liner Inc’s products other than by reference to certain types of recreational vehicles.

65 While the assignment effected by the supplemental agreement was stated to be for the purposes of any application the Patentee may wish to make ‘to better secure’ its interests pursuant to the Act, the supplemental agreement must be read and understood in the context of the licence agreement and the limited interests created by the licence agreement. Those interests were the right to use know-how for a period of five or ten years. While the supplemental agreement begins by stating that the assignment is to be made ‘not withstanding anything otherwise contained in [the licence agreement]’, it is impossible to construe the supplemental agreement as being intended to change the basic nature of the interests created by the licence agreement, namely, a limited right to use know-how and information until the expiration of the term of the licence.

66 In the circumstances, the supplemental agreement should not be construed as constituting an effective assignment to the Patentee or Mr Van Baardwyk of the invention of the Patent. The Patentee, therefore, did not derive title to the invention of the Patent from the inventor, Mark Tait. The conclusion of the primary judge on that question was correct.

67 The Patentee says that inventor for the purpose of s 6 of the Statute of Monopolies 1623 (Imp) includes both the first importer of the invention and a communicatee of the invention. It is not disputed that Mr Van Baardwyk was the first importer into Australia of the invention of the Patent. He is, therefore, the Patentee submits, inventor within the meaning of s 15(1) of the Act. Alternatively, the Patentee says that Mr Van Baardwyk is inventor of the invention of the Patent by communication from abroad. Accordingly, so it is said, he was inventor within the meaning of s 15(1)(a) of the Act and was properly named as inventor in the Patent Request.

68 Under s 13(1) of the Act, a patent gives the patentee the exclusive rights to exploit the invention and to authorise another person to exploit the invention. The word invention is defined, pursuant to s 3 of the Act, as meaning any manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies, including an alleged invention. Under s 18(1)(a), an invention is not a patentable invention unless the invention, relevantly, is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies. While s 15(1) refers to the inventor, that reference must be to the inventor of the invention that is to be the subject of a patent and must, therefore, encompass all persons or entities who would qualify as inventors of any manner of new manufacture the subject of letters patent and grant of privilege within s 6 of the Statute of Monopolies.

69 The predecessor of s 15(1) of the Act was s 34(1) of the Patents Act 1952 (Cth) (‘the 1952 Act’). By s 34(1), both the actual inventor and a person to whom the invention has been communicated by the actual inventor were authorised to make an application for a patent. Similarly, the assignee of the actual inventor could make an application for a patent. Thus, a clear distinction was drawn between the actual inventor, on the one hand, and a person who took an assignment from the actual inventor or a person to whom the invention was communicated by the actual inventor, on the other hand. The actual inventor was defined by s 6 not to include a person merely importing an invention from abroad.

70 Section 15(1) of the Act is, in a sense, a simplification of s 34(1) of the 1952 Act. Section 15(1) contemplates grant of a patent to a person who would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person. A provision, in virtually identical terms, existed under s 34(1) of the 1952 Act. However, the distinction between the assignee of the actual inventor and a person to whom the invention has been communicated by the actual inventor, which was made in s 34(1) of the 1952 Act, is not to be found in s 15(1). Those concepts have been amalgamated into the provision in s 15(1)(c), whereby a patent may be granted to a person who derives title to the invention from the inventor or a person who would, on the grant of a patent for the invention, be entitled to have the patent assigned to that person.

71 The language of s 15(1) evinces a clear intention on the part of the Parliament to limit the grant of a patent, relevantly, to a person who is the inventor or to a person who derives title to the invention from the inventor. There is no warrant for reading the word inventor as meaning anything different from the person who is responsible for making the invention, namely, the person who makes or devises the process or product. The word bears its ordinary English meaning (Atlantis Corp Pty Limited v Schindler (1997) 39 IPR 29 at 54 per Wilcox and Lindgren JJ). There is no warrant for reading the term inventor in s 15(1) as including a person to whom the invention has been communicated by the actual inventor.

72 Inventor in s 15(1)(a) refers to the person who makes or devises the invention, wherever the invention may be made. It does not include a person who is not the inventor but who first imports the invention into Australia or to whom the invention is first communicated in Australia. To the extent that communication or importing of the invention gives rise to an interest on the part of the communicatee or importer, such that the communicatee or importer can say that the communicatee or importer derives title to the invention from the inventor, s 15(1) may be attracted. However, the language of s 15(1) is limited to a person who derives title to the invention from the inventor. Mere communication or importation, without anything further, is not sufficient to give rise to a title on the part of the communicatee or importer. That, of itself, is not sufficient to make Mr Van Baardwyk the inventor. The fresh ground of appeal has no substance.

73 None of the three documents referred to by the primary judge had ever been published in Australia. Further, the Patentee says the evidence does not support the conclusion that information made publicly available by the documents could reasonably be expected to have been ascertained by the notional skilled person. The Patentee says that the locating of each of the three documents was fatally tainted by hindsight knowledge of the Patent. It is desirable to deal with each document separately.

74 The primary judge found that, if it is known that there is a relevant patent in New Zealand, it is easy to conduct a search to find that patent. That, of course, is not enough to establish that the notional skilled addressee in the caravan industry in Australia would be reasonably expected to have carried out patent searches in New Zealand. In Commissioner of Patents v Emperor Sports Pty Limited [2006] FCAFC 26; (2006) 149 FCR 386 at [33] to [35], the Full Court of the Federal Court found that while patent searches are assumed to have been conducted, without requiring evidence that that is the case, there are situations where it is not reasonable to expect that the notional skilled addressee would conduct patent searches in another jurisdiction. The Full Court commented that in the situation of a sports coach, referee, umpire or administrator such an expectation would be "fanciful rather than reasonable" (at [35]). Her Honour simply found that, on the totality of the evidence, a skilled addressee could reasonably have been expected to have carried out a patent search in New Zealand. However, her Honour did not actually specify what evidence was taken into account in reaching that conclusion.

75 Camoflag points to evidence by Mr Robert Funder, a technical and manufacturing manager called by the Patentee, that if he was exporting a product to New Zealand, he would conduct such searches as were necessary to ensure that patents registered there were not infringed. Camoflag asserts that the primary judge was entitled to take judicial notice of the fact that New Zealand is Australia’s closest trading partner and that it followed that Australian caravan makers would be interested in selling in New Zealand.

76 Camoflag also pointed to evidence that it says demonstrates the proximity of the New Zealand market and the involvement there of the Australian caravan industry. Thus, Caravan World Magazine, said by Mr Van Baardwyk to be the biggest caravan magazine in Australia, was distributed in New Zealand before the priority date. The Patentee itself sells caravans in New Zealand. In addition, other Australian manufacturers sold caravans in New Zealand before the priority date.

77 However, those contentions ignore the distinction between what might reasonably be expected of a prospective seller of caravans in New Zealand, on the one hand, and the notional person skilled in the field of campervan design in Australia. There was no evidence that any designer would actually contemplate conducting a patent search in New Zealand.

78 There was some evidence that, if persons in Australia were seeking information about new developments overseas, the skilled addressee might have looked to the United States or Europe by attendance at trade shows. However, personal attendance at a foreign trade show is a different matter altogether from making patent searches.

79 The Patentee also relies on Camoflag’s delay in locating the Johnson Patent. Despite extensive searches, it was not until October 2002 that the Johnson Patent was located by Camoflag’s solicitors and patent attorneys. During that period, searches were also undertaken by the director of Camoflag, including enquiries of resellers and wholesalers in most states of Australia, as well as searches in libraries and computer searches. None revealed the Johnson Patent.

80 Camoflag explains the delay on the basis that it took the view that it had a strong case on the prior art originally pleaded without reliance upon the Johnson Patent and that, accordingly, there was no need to search further. It says that, as the preparation of evidence progressed, one of the witnesses proposed to be used by Camoflag to prove publication of the prior art changed camps and commenced to work for A-Liner Inc. Camoflag says that it was therefore only in September 2002 that it became necessary to undertake further searches, which located the Johnson Patent shortly thereafter.

81 Even so, the question raised by s 7(3) is whether the information made publicly available in the Johnson Patent was information that the relevant skilled person could be reasonably expected to have ascertained, understood and regarded as relevant to work in the design of campervans in Australia. The evidence does not support a conclusion that the notional skilled person could reasonably be expected to have ascertained that information by a patent search in New Zealand.

82 The primary judge found that a person interested in developments in the relevant industry would have looked to the United States and that Mr Van Baardwyk in fact did so. Anybody interested in recent developments in caravans in the United States could have picked up the Chalet (Alpine Lite) Brochure from a retailer there, as Mr Van Baardwyk himself did.

83 In fact, at the time when he obtained the brochure, Mr Van Baardwyk was not involved in the art of designing or manufacturing campervans in Australia. Rather, he was a full time employee as factory manager of a large multinational company operating in the glass industry in Australia. He was in the United States on holidays. The fact that Mr Van Baardwyk obtained a brochure in Portland, Oregon during a holiday visit is hardly evidence that the notional skilled person could reasonably be expected to have ascertained the information contained in the brochure. There was no evidence of the numbers of the brochure that were produced, or the extent of their circulation. There was no evidence that the brochures were available at trade shows that would ordinarily be attended by persons involved in the design of caravans in Australia. I do not consider that the evidence supports the conclusion of the primary judge that the notional skilled person could reasonably be expected to have ascertained the information contained in the Chalet (Alpine Lite) brochure.

84 There was no evidence about the provenance of the RV Trade Digest Magazine. The primary judge referred to evidence given by Mr Trevor Page, a caravan retailer and repairer, in the course of cross-examination, that if he was asked to go and find or obtain the November 1987 edition of the RV Trade Digest magazine, he would have found it very easily. However, that is not the question. The question is whether the relevantly skilled person could reasonably be expected to have ascertained the information made available in the advertisement in the magazine. The question is not whether the magazine could have been found by the relevant person if asked to look for it. There was no finding to that effect. The evidence does not support a finding to that effect.

85 None of the three documents that led the primary judge to conclude that there was no inventive step involved in the invention of the Patent made information publicly available that a notional skilled person could reasonably be expected to have ascertained as at 1994. The basis of the conclusion of the primary judge, that there was no inventive step, was that the alleged invention, as claimed in each of claims 2, 3, 8 and 9 of the Patent was obvious in the light of the Johnson Patent or the Chalet brochure or the RV Trade Digest advertisement, when combined with common general knowledge. Once those documents are eliminated, that conclusion must fall.

86 It was common ground that Claims 1, 4, 5, 6 and 7 of the Patent were not novel over the Johnson Patent, in the form in which the Patent was granted. However, the primary judge gave leave to amend the Patent in a manner that meant that the Johnson Patent did not relevantly anticipate the claims of the Patent as amended. There has been no appeal from that order. Her Honour concluded that, in the context that Claims 1, 4, 5, 6 and 7 were not novel because of a document that was relevant for the purposes of s 7(3) and Claims 2, 3, 8 and 9 were obvious, because of the three documents, the notional person skilled in the art of campervan design as at May 1994, in all the circumstances, would be directly led, as a matter of course, to try to design a campervan having the combination of the claimed features of each claim of the Patent, in the expectation that it might produce a useful improvement in the field of campervan design in Australia.

87 However, once each of the three documents is rejected as making publicly available information that a notional skilled person could reasonably be expected to have ascertained, the reasoning of the primary judge fails. That is to say, once it is established that none of the three documents is within s 7(3), the conclusion of the primary judge that the invention of the Patent lacked an invention step was erroneous.

88 While there may have been some error on the part of the primary judge, her Honour’s conclusion that the Patent is invalid should not be disturbed. It follows that the appeal should be dismissed. Nevertheless, the Patentee has been successful in a number of respects. The parties should be invited to make further submissions on the question of the costs of the appeal.

I certify that the preceding eighty-eight (88) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Emmett, Stone and Bennett.

Counsel for the Appellant:	Mr B Hess SC with Dr L Duncan

Solicitor for the Appellant:	Younger and Swinburne

Counsel for the Respondent:	Mr A Ryan

Solicitor for the Respondent:	Griffith Hack

Dates of Hearing:	15 and 16 May 2006

Date of Judgment:	29 September 2006

1.	The appeal be dismissed.
2.	The appellant file and serve any submissions on the question of costs no later than 10 November 2006.
3.	The respondent file and serve any submissions in reply no later than 24 November 2006.

Federal Court of Australia - Full Court Decisions

JMVB Enterprises Pty Ltd (formerly A*Van Campers Pty Ltd) v Camoflag Pty Ltd [2006] FCAFC 141 (29 September 2006)