EMPLOYEE INVENTIONS Greater Glasgow Health Board HELD: registrar of hospital entitled to the invention he had made in relation

n to his work WHY: although a useful accessory to his contracted work, it was not a part of it. HELD: Invention property of the employer only if employee made it in course of employment as part of the employee's duty. FACTS: the registrar made it in his own time - was not treating a patient. Sterling Engineering v Patchett FACTS: P invents guns for company. Agreed patents relating to guns would be joint and P would receive royalties. P invented domestic appliances for company P wanted royalties for the domestic appliances inventions Company argued the agreement was only for gun inventions Company owned domestic appliance inventions HELD: + P's job was to invent domestic appliances. + ordinary rule in their relationship applies: patents belong to employer + only way that P would succeed is if express or implied agreement different to ordinary rule applied to these inventions + current agreement only applied to the gun inventions. Empress Abalone v Langdon FACTS: R. Langdon did research on spherical pearls RL and sister filed patents for processes relating to growing mabe pearls EAL argued it was developed in the course of employment with them therefore they owned the IP EAL said it was the owner of all IP arising from project RL argued that the project was only for spherical pearls, not mabe. RL was doing daily activities which he was not employed to do RL argued mabe pearl growing process was developed in his own time without EAL materials and facilities related to the research project ISSUE: was invention made in course of employment - was it something he was employed to invent HELD: therefore RL has the right to the ownership of the intellectual property RL's employment was limited to processes for growing spherical pearls, not mabe there is a distinction between "course of duties" and "during term of employment" RL was employed to do one thing, and he invented the process while doing another thing

UWA v Gray FACTS: no clear express term in employment contract for assigning IP rights for inventions developed in the course of Gray's employment. Gray applied for some patents over the years while researching for UWA. HELD: Dr Gray owned IP rights during employment with the university on the grounds: + duties as an employed researcher did not include a duty to invent + no express term in employment contract about IP ownership + no implied term in employment contract that UWA owned the IP + Dr Gray did not owe UWA a fiduciary duty despite having been employed to undertake and organize research, terms of employment did not include the duty to invent duty to research does not always carry a duty to invent PATENT VALIDITY General Tire and Rubber Co: (Test for lack of novelty) The generally accepted test for anticipation, or lack of novelty, is the `reverse infringement' test. Anticipation is shown where carrying out the directions contained in the prior publications inevitably results in something which would infringe the subsequent patent. To establish lack of novelty, the prior art must establish all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Flour Oxidizing Co Ltd: (Test for lack of novelty) prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee. Smale v North Sail: (novelty & reverse infringement test) FACTS: claimed defendant infringed for a similar sail defendant turned around and said plaintiff's patent is not new/novel. prior art the defendant relied on was: (a) publication newsletter for racing, (b) photo from windsurfer yearbook ISSUE: test for lack of novelty did the plaintiff's patent infringe the prior art - or did the prior art anticipate plaintiff's invention. HELD: prior art would not provide person wishing to achieve object of the invention the means for doing so... in other words there was insufficient detail

Windsurfing International v Tabur Marine: (assessing obviousness) 4-STEP TEST FOR OBVIOUSNESS step one: identify inventive concept of the claims step two: assume mantle of normally skilled but uninventive person at priority date step three: identify difference between known matter and alleged invention step four: ask if the differences constitute steps that are obvious to the skilled person in the arts OR would the steps require a degree of invention. Windsurfing Intl. Applied to: Smale v North Sails 4-STEP TEST FOR OBVIOUSNESS question asked: whether skilled person in the arts considering the problem at priority date, would have found the solution contained in the patent to be an obvious solution. HELD: it was obvious to put the known use of the technique for the stretching the sail.

INFRINGEMENT Inglis v Mayson: (Infringement & Reverse Infringement Test: Lack of Novelty and Obviousness) Reverse Infringement test against Inglis's patent for obviousness and lack of novelty came up with a prototype and filed patent application discussed production with businesses, one being Mayson started negotiations with Mason for contract to manufacture perforator negotiations fell through Inglis found a machine resembling his in a farm - inquiries made, and found it was made by mason Claimed Mayson was infringing his patent and filed for infringement Mayson's response: sought to revoke Inglis's patent he supposedly infringed Mayson attacked his patent for novelty: + Main Relied upon US Patent made available in NZ on 17 June 1969 WHY WAS THE PATENT NOT VOID FOR NOVELTY: Priority date for Inglis was April 1975 Main question judge had to decide was if the US patent contains or anticipates all the essential features or integers of the Inglis patent (test for prior publication) the inventor of the earlier patent must have clearly planted his flag at the precise destination + "clear and unmistakable directions" + if carried out clear and unmistakable directions, and it would be an infringement then the patent has been anticipated to anticipate an old patent a prior publication or activity must contain the whole of the invention impugned. if a prior publication contains a clear description of or clear instructions to do or make something which would infringe the patentee's claim if carried out after the grant of the patent, then the patentee's claim can have no novelty. (complicated way of reverse infringement test) HELD: failed on lack of novelty argument: US Patent did not plant flag at the precise destination of the Inglis patent (the shape and angle of tynes)
WHY WAS THE PATENT NOT VOID FOR OBVIOUSNESS?

question to be asked by judge: whether claim as such would be obvious to a skilled worker in the field concerned in the field of tech @ date of priority obviousness must be apparent to notional person skilled in the art - has read everything but no inventive capacity. HELD: patent was not obvious Inglis invention was about inclining a tyne at a certain shape and angle, judge satisfied that having the tyne of a special shape and angle compared to what was published and known at priority date involved an inventive process so was not rendered obvious. Inglis v Mayson: (Variations)

comments made on minor variations: one which does not materially affect the way in which the invention works is immaterial only if it would be obvious to skilled person that the variant will not materially affect the invention and that the patentee's claim is not intended to exclude that variant. judge only considered the first claim because it was the broadest and independent (all other claims were more narrow therefore probably automatic infringement) defendant's product did not infringe because the variants were not minor or immaterial - skilled person understood that patentee's claim implies that angle iron tynes don't infringe