Patents Act 1990 ss 15, 16, 32, 36, 224, schedule 1

Harris v CSIRO [1993] APO 43; (1993) 26 IPR 469

Costa v GR & IE Daking Pty Ltd [1994] APO 23; (1994) 29 IPR 241

Re Commonwealth Scientific and Industrial Research Organisation & Ors [1995] APO 16; (1995) AIPC 91-171

Row Weeder Pty Ltd v Neilson & Ors (1998) AIPC 91-438

1. This is an application brought under section 224 of the Patents Act 1990 to review a decision of a delegate of the respondent given on 14 October 1997.

2. The application to the delegate (and to this Tribunal) was made under section 32 of the Act which is in the following terms:

`32. If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.'

3. An interested party referred to in the section is defined in the dictionary in schedule 1 to include a person who claims to be entitled to the grant of a patent on the application either alone or jointly with another person. The section is, therefore, a vehicle not only for resolving disputes between joint applicants, but also for third party intervention by a party claiming entitlement to an interest in the invention, as is the case in the present application. Section 36 dealing with competing claims by other eligible persons comes into operation only where the application in dispute has lapsed. Following the hearing by the Commissioner's delegate, a decision was given in favour of the present parties joined who were then the applicants for the patent. The sealing of the patent, however, was postponed pending the outcome of this review by the Tribunal.

4. The joined parties (the Vrubels) filed a patent application on 17 June 1994, claiming to be the inventors and nominated persons for the application. Following advertisement, Mr Upham filed a belated Notice of Opposition to the application and requested an extension of time. A refusal of this request led to an earlier application to this Tribunal for review of the Commissioner's decision. That application was subsequently withdrawn and was followed by an application to the Commissioner under section 32 by Mr Upham.

5. That request (which is the subject of the present review) stated that notwithstanding Mr Upham's belief that he was the sole inventor of the invention described in the patent application, and notwithstanding his belief that only he and his wife, Ronda Upham, should be the applicants, nevertheless he asked the Commissioner to determine the dispute under section 32 by adding his name as co-inventor, with the Vrubels and by adding his and his wife's names as co-applicants, together with those of the Vrubels. It was this request that was denied by the Commissioner's delegate in the October 1997 decision.

6. That decision followed a hearing in which the Vrubels were represented by a patent attorney by telephone, but in which the applicant failed to make an appearance. There were certain written submissions and further material submitted after the hearing. After consideration of all the evidence and submissions, the respondent's delegate decided that the applicant had failed to establish that he was the inventor of the invention disclosed in the Vrubels' patent application and that he had consequently failed to establish that he and Ronda Upham were entitled to the grant of the patent jointly with the Vrubels. Accordingly, the request under section 32 of the Act was refused.

7. In his decision, the delegate described the invention in the following terms:

`The invention the subject of application 664804 relates to internal combustion engines and particularly to apparatus to enable such engines to run on Liquefied Petroleum Gas (LPG). The invention is defined in claim 1 as follows:

"An apparatus for enabling an internal combustion engine to operate on a vaporised gaseous fuel supplied to the engine under positive pressure, said apparatus comprising firstly a vaporised gas metering means for connection to a pressurised source of said vaporised gas metering fuel and adapted for fitting into the air intake duct of said engine, the metering means comprising a barrel which is connectable to a vaporised gaseous fuel supply line from said source of vaporised gaseous fuel and which extends from a housing into the air supply duct, the operative end of the barrel including a slot through the wall thereof, and a slotted head rotatable within said barrel by a stepper motor so that the slot in said head aligns with the slot in said barrel in varying degrees to allow a graduated flow of the vaporised gaseous fuel from the barrel into the air intake duct, and secondly a microcontroller which in use of the apparatus produces phase shifted control signals for the vaporised gas metering means whereby said vaporised gas metering means may be operated to selectively control the amount of vaporised gaseous fuel entering said air intake duct in accordance with the signals from the microcontroller."

Thus the invention, which enables the control of vaporised gaseous fuel to an engine, relates to apparatus which in broad terms has two main components,

* a vaporised gas metering means of particular form, specifically having a rotatable slotted (discharge) head driven by a stepper motor allowing varying graduated gaseous fuel flow, and

* a microcontroller to produce phase shifted control signals to enable selective control of the gas metering means.'

8. Subsequently in a preliminary document in the present proceedings, the Vrubels described the invention in somewhat simpler words which were generally accepted by all parties as accurately reflecting the substance of the claims. This description was as follows:

`The invention which is the subject of Patent Application No. 664804 by the joined party consists of apparatus for enabling an internal combustion engine to operate on vaporised gaseous fuel supplied under high pressure, the apparatus consisting of three essential features:

(a) a metering valve which has a barrel extending into the air supply duct, the operative end of the barrel including a slot through its wall and a slotted head rotatable within the barrel so that the flow of fuel into the air intake duct is controlled by the varying alignment of these two slots,

(b) a stepper motor which rotates the slotted head, and

(c) a microcontroller which produces phase shifted control signals to operate the stepper motor (patent specification T 7 claim 1 page 0064).'

9. Mr Upham claimed to be the joint inventor of one or more of these three elements. The Vrubels claimed that he had no part in the invention or development of any of the three elements.

10. The tests to be applied in determining whether or not one party is a joint inventor with another have been considered in a number of decisions of delegates of the respondent, particularly in cases dealing with section 36. So far as I am aware, there has been no authoritative judicial pronouncement since the introduction of the 1990 Act. The decisions of the delegates, however, are fully reasoned and are often arrived at as a result of the benefit of adversarial argument from counsel on both sides. The tests which the respondent has adopted and followed consistently appear to me appropriate, not only because they reflect the results of reasoned arguments by experts in the field, but also because they represent tests that appear to have been universally applied among those concerned.

11. Section 15 sets out the categories of persons who may be granted a patent. It makes a distinction between the inventor in paragraph (a) and a person who would be entitled to have the patent assigned under paragraph (b). Some of the relevant decisions deal with the tests relevant to paragraph (a), while others deal with the question of entitlement. Although obviously there is a distinction to be made between the two concepts, the observations made in relation to invention or entitlement can be mutually illuminating.

12. Section 16 deals with co-ownership where there are two or more patentees. In that event, each of them is entitled to an equal undivided share in the patent. The section goes on to provide the manner of exploitation of the jointly owned patent and the protection afforded to third parties dealing with joint owners. The terms of the section seem to indicate that once a patent issues to any multiple of the persons falling within the categories in section 15, then the extent of the contribution of each person is irrelevant. If it can be said that one person is a co-inventor with another, then each of them has an equal entitlement irrespective of the significance of the part played by each of the co-owners in establishing a right to be included in the grant of a patent. The first question to be determined is how is one to identify an inventor.

13. The genesis of the current approach comes from a decision of a US District Court, cited by Mr Herald (Assistant Commissioner) in Harris v CSIRO [1993] APO 43; (1993) 26 IPR 469. At pages 475 and 476 Mr Herald said:

`Section 36 of the Patents Act 1990 provides:

(a) a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and

(b) the Commissioner is satisfied, on application made by a person in accordance with the regulations, that the nominated person is not an eligible person in relation to an invention disclosed in a specification filed in relation to the application but that some other person is an eligible person in relation to the invention as so disclosed;

the Commissioner may (whether or not the patent application lapses or is withdrawn) declare in writing that the other person is such an eligible person.

One of the points that counsel for the parties were in agreement was that the law of "obtaining" did not apply to s 36 matters. Nevertheless, in order to ascertain what matters are relevant to my considerations, I must have some basis for considering the relevance of the evidence before me. In this regard, I am also conscious of the role of the Commissioner in these proceedings - viz to determine matters at issue under the Patents Act (Cth), and not to decide "disputes" in the broader context.

In my view the relevant matters that I need to consider in the present case are:

2. What are the inventions disclosed in the specifications of Harris?

3. Does Harris have any rights in the invention of Dabbs, and vice versa.

I observe, parenthetically, that at the hearing there were essentially no detailed arguments comparing the disclosures of the various specifications of Harris with any alleged invention of Dabbs - indeed, counsel for CSIRO did not even attempt to set out in clear terms what the relevant invention of Dabbs was.

When the hearing in Canberra was adjourned to Melbourne, I requested that the parties should, on reconvening, address me on the issue of what constitutes invention. I was advised that there was little relevant Australian precedent in the matter, but attention was drawn to the possibility of relevant US precedent. I hesitate to rely on US decisions for precedent as the US law has developed the concepts of "conception of invention" and "reduction to practice" which may not equate well to disputes such as the present. Nevertheless I note the following passage in a 1972 decision of a District Court in Mueller Brass Co v Reading Industries (1972) 176 USPQ 361 at 372, which is apposite to the present case:

"The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of the patent law. On the one hand, it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed. To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specific component as one's sole idea, but one must be able to say that without his contribution to the final conception, it would have been less - less efficient, less simple, less economical, less something of benefit. This court has found no case in which co-inventorship status was recognised where the alleged co-inventor was not deemed in some way, at least presumptively, to have beneficially affected the final concept of the claimed invention, and if such a case exists, it would be so anomalous as to warrant little attention." '

14. At page 488 Mr Herald, in passing, also formulated another test which has been referred to with approval in subsequent cases. He postulated that a significant question would be whether the invention would have occurred without the claimant's involvement, often referred to in legal interpretation as the "but for" argument.

15. Mr Herald followed the same line of reasoning a year later in Costa v GR and IE Daking Pty Ltd [1994] APO 23; (1994) 29 IPR 241.

16. The Mueller Brass dictum again appeared in Re Commonwealth Scientific and Industrial Research Organisation and Ors (the Gilbert and Hazlewood case) [1995] APO 16; (1995) AIPC 91-171. On the subject of inventiveness Mr Herald said at page 39,555:

`At the hearing a range of issues were canvassed. One noteworthy aspect is that the respective sides asserted that the contribution of the other side to the "invention" was the performance of routine steps which was not inventive - that their contribution was the inventive part, and that as a result they were the only persons entitled to the invention. Whilst it is tempting to accept each side's argument that the contribution of the other was non-inventive - and come to a conclusion that there is no invention at all - I do not think that is appropriate. In particular it is well established that inventiveness is assessed by reference to whether an invention was obvious to the hypothetical non-inventive skilled addressee; the ease or difficulty to the inventor of making the invention is irrelevant. It follows, in my view, that rights in an invention do not flow from an assessment of the inventiveness of respective contributions, but rather from an objective assessment of the contribution simpliciter to the invention. See, for example, the judgement of the US District Court in Mueller Brass Co v Reading Industries 176 USPQ 361 at 372:' [There follows the quotation reproduced above]

17. Mr Herald offered further guidance where entitlement to all or part of an invention arises out of collaboration. These observations are of particular assistance in the present circumstances and are in the following terms (at page 39,556 and 39,557):

`The terms of the collaboration were never put in writing. But this is not a reason to deny its existence - the correspondence between the parties clearly recognises a real and ongoing collaboration. Dr Emmerson sought to distinguish a "scientific" collaboration from a "commercial" collaboration. I think that is an artificial distinction absent a clear indication that such a distinction was present in the minds of the collaborators. Indeed, it seems to me irreconcilable that a person could have a right to recognition as a joint author of collaborative research paper, yet have no entitlement to any proprietary rights to commercial matters that arise from the paper.

As to the scope of the collaboration, the Macquarie Dictionary defines collaborate as:

"1. to work, one with another; cooperate, as in literary work.

2. to cooperate treacherously". (I ignore this second meaning here.)

alliance, colleagueship, joint-stock, co-partnership, coalition, syndicate.

These synonyms are, in my view, in complete accord with the relationship between the parties as evidenced in their correspondence.

In my view the collaboration between the present parties was based on a sharing of all "advantages" arising from their collaboration. The respective contributions to the collaboration were the clones (including the method of their production, as is apparent from the section on experimental procedures in the joint paper) provided by Orpin and Xue, and the investigation of those clones by Gilbert and Hazlewood. All the correspondence up until the dispute evolved is consistent with this understanding as between the parties.

I conclude that a consequence of the collaboration is that entitlement to any inventions associated with the collaboration are shared between the parties of the collaboration; that is, if an individual is not considered to be an actual inventor, they derive title by way of the collaboration.'

18. It is true that the above observations relate to entitlement under paragraph 15(1)(b) rather than invention under paragraph 15(1)(a). Nevertheless, the concept of collaboration is, in my view, helpful in determining whether there is more than one person who is the inventor and, if so, the extent of that person's "contributions simpliciter" to the invention.

19. A review of the facts of these decisions and the principles to be derived from their consideration was set out in a decision of a delegate of the Commissioner in Row Weeder Pty Ltd v Neilsen and Ors (1998) AIPC 91-438. The delegate was dealing with the question of invention but largely based his decision on the observations made by Mr Herald in the Gilbert and Hazlewood case, which was concerned with a collaborative arrangement and its effect on ultimate ownership rather than invention. Nevertheless, as I have said, an examination of collaborative circumstances can assist in throwing light on the question to be determined. The delegate may have relied upon the headnote in the Gilbert and Hazlewood report which takes an extract from the decision out of context and puts it forward in a slightly misleading way. Nevertheless, his summary, in my view, helps to delineate the task before the decision maker. At pages 37,515 and 37,516 the delegate said:

`The Harris v CSIRO decision [1993] APO 43; (26 IPR 469) decision (sic) puts forth a number of questions to consider. These are:- (1) what the invention(s) is/are of the person making the Section 36(1) request; (2) what the invention(s) disclosed in the specifications is/are of the person who made the patent application; and (3) whether one person has any rights in the invention of the other, and vice versa. The decision also suggests a more significant question of whether the invention would have occurred without a particular person's involvement.

The Costa v GR & IE Daking Pty Ltd decision [1994] APO 23; (29 IPR 241) found two people to be joint inventors since the invention only occurred because of the involvement of both. The invention resided in a machine for picking vegetables, being a conveyor arrangement mounted laterally on a trailer. One person had a general idea of what was required to solve the problems of tilting of the conveyor boom and providing different heights for different crops. However that person did not necessarily know how to give effect to those ideas. The creation of the invention required the input of the other person.

The CSIRO v Gilbert and Hazlewood decision ((1995) AIPC |P91-171; [1995] APO 16; 31 IPR 67) stated the key issue in that case was not one of inventiveness but of entitlement. The rights in an invention do not flow from an assessment of the inventiveness of respective contributions but rather from an objective assessment of the contribution simpliciter to the invention. The decision held that a consequence of collaboration between parties is that entitlements to any inventions, associated with the collaboration, are shared between the parties.

The Falkenhagen et al v Polemate Pty Ltd et al decision (unpublished decision on application 84712/91 dated 16th June 1995) stated that a second person, engaged because of that person's expertise to construct a device based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device. This holds true even if the second person suggests ways to aid its design or operation. However if the second person's suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device. The result or advantage would need to be a material one so that the resulting device is an improved one not merely a preferred workable embodiment of the original concept.

The common theme from the above decisions is that a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the final concept of the invention. A secondary issue is whether that person's contribution involved a key inventive step.'

20. In coming to my conclusions, I have therefore, been guided by the following principles to determine whether Mr Upham should be regarded as a co-inventor:

* Primarily, there must be an objective assessment of his contribution simpliciter to the invention (Gilbert and Hazlewood).

* In assessing the weight to be given to that contribution, one should ask firstly whether his contribution beneficially affected the final concept of the claimed invention and secondly, whether that final conception would have been less efficient without his contribution (Mueller Brass).

* It is also legitimate to ask whether the invention would have occurred without the claimant's involvement (Harris).

* Evidence of collaboration is useful in assessing objectively whether there has been a relevant contribution.

21. In essence, the patentable subject matter disclosed in the application for patent is firstly, the valve and secondly, the combination of the valve with a stepper motor and possibly the combination of both of them with electronic control. As the evidence developed during the course of the hearing it became apparent that Mr Upham had a greater connection with, and made a greater contribution to, the valve, rather than the electronic control. There was dispute between the parties as to all three elements. Ultimately, Mr Upham's case relied principally upon his contribution to the development of the valve as adopted in its final form and its combination with a stepper motor. The Vrubels, who are electronic engineers and are specialists in the field of electronic control are, as Mr Upham acknowledged, probably more responsible for that element of the invention than he was.

22. Evidence was given that Mr Upham has been interested in automotive engines since his early teenage years. Since 1972, he has carried on business in partnership with his wife under the name of Caringbah Automotive Research, to develop advanced fuel systems. In 1973 he lodged the first of many patent applications in this field, in which he disclosed an invention of a fuel metering device for carburettors using vaporised petrol and a rotary metering valve having a shaft with a "flat" on it. Between 1973 and 1988, Mr Upham developed mechanical fuel injection systems using vaporised petrol and made dozens of prototypes using rotary metering valves and fitted them to a single cylinder four stroke engine.

23. After 1988 Mr Upham began turning his attention to gas fuel injection. He continually searched in the patent office against applications covering fuel injection, automotive gas metering and valves. I accept that he would have purchased many copies of patent specifications and would have made photocopies of them. I see no reason to reject his evidence that a particular patent application by Teledyne Industries Inc, describing the invention of one form of rotary metering device driven by a stepper motor controlled by electronics, came to his attention in this way. It was the very type of device which he was seeking. It was logical that it would have made an impact on his continuing research. The Teledyne device, however, dealt only with liquid fuel. I have no reason to reject Mr Upham's evidence that this information gave him the idea for a gas injection system using his existing rotary valve prototypes and driving and controlling it with a stepper motor and electronics to interface to the existing electronic control unit of a motor vehicle.

24. Between 1989 and 1991, he continued his experiments and development using liquid petroleum gas and a single cylinder engine as he developed various designs of mechanical fuel injection systems. A major problem to solve was enabling the flow of relatively large volumes of vapour through a valve at such a speed so as to run an automotive engine at high speed and to have that valve open very fast against a significant vapour pressure.

25. To assist in solving this problem, Mr Upham approached Mr Victor Vrubel in late 1990. Mr Vrubel, at that time, was carrying on an independent business as an electronic engineer. He accepted a commission from Mr Upham to develop a pulse generator for a solenoid injection valve to be tested on single cylinder engine.

26. At the beginning of 1992, Mr Upham again approached Mr Victor Vrubel and commissioned him to develop digital electronic control equipment to control a stepper motor suitable for driving a new rotary metering valve of a type which Mr Upham said he had then developed. This rotary valve was said to have derived directly from the ideas contained in the Teledyne patent document. Mr Upham had used this valve previously in a mechanical injection system. To use it in vehicles, however, it was apparent that electronic control was required.

27. There followed a period of close interaction between Mr Upham and the Vrubels. Mr Vrubel had designed an electronic circuit to control a servo motor to drive Mr Upham's rotary metering valve in an LPG injection system that he had fitted to his own vehicle. In May 1992, Mr Upham approached Go-Gas Australia to test his vehicle fitted with the gas injection system. Mr Shepherd from that company visited Mr Upham in June 1992, when Mr Upham's vehicle was tested. On 6 July 1992, he signed an agreement with Go-Gas Australia to provide him with sponsorship which included the use of a VN Holden Commodore fitted with electronic petrol injection. The electronic gas injection system fitted to his own 1982 GMH Commodore vehicle was removed and fitted to the Go-Gas vehicle. With the help of the Vrubels, the vehicle was interfaced electronically with the vehicle's original electronic control unit.

28. By that time, some monies were available to pay the Vrubels for some of the work they had done. Nevertheless, it was agreed that their future rights, if the invention were to be exploited, should be protected. In November 1992, a letter agreement was signed with Mr Vrubel at his insistence. It does not deal with entitlement in the Patents Act sense. It deals only with the way in which proceeds of exploitation were to be dealt with. Omitting formal parts, the letter was in these terms:

`I refer to our recent discussion and wish to confirm this Agreement in the following terms of our agreement (the "Agreement").

(1) This Agreement commences on the 10th of November 1992 and shall continue until terminated by mutual agreement.

(2) Electronic Advance agrees to develop electronic control equipment for the operation of the Automotive LPG Vapour Injection (the "Project") at its own cost.

(3) Caringbah Automotive Research agrees to provide to Electronic Advance sole Australian manufacturing rights of the electronic control equipment of the Automotive LPG Vapour Injection System (the "Project").

(4) Clause 2 represents the total commitment Electronic Advance has to Caringbah Automotive Research for the purposes of the Agreement.

(5) Clause 3 represents the total commitment Caringbah Automotive Research has to Electronic Advance for the purposes of the Agreement.

(6) The terms and conditions of this Agreement and all information, records and other data or documents relating to the activities undertaken by Electronic Advance and Caringbah Automotive Research pursuant to this Agreement (the "Information") shall be confidential.

(7) No information shall be disclosed to any third party without the consent of the other party.

(8) The terms of this Agreement shall represent the entire agreement between the parties.'

29. Electronic Advance was the business name under which the Vrubels operated and Caringbah Automotive Research was Mr Upham's firm. The letter was headed "Automotive LPG Vapour Injection" which identifies the project upon which both of them collaborated.

30. Mr Vrubel continued to work on the project after the Go-Gas test run to Queensland, at the end of 1992. About that time he effected a significant improvement in the electronic control of the stepper motor. At that time, the movements were, as he put it, "coarse or rough". There were only 100 steps to cover 90 degrees. The form of control was not sufficiently accurate to give the fine control which the valve needed in its rotation. Mr Vrubel gave evidence that he found out how to increase the number of steps to cover the 90 degrees and devised a cheaper and simpler way of doing it. The other commercial devices that would have been available to carry out the same task were micro controllers which were more expensive and had other disadvantages. I have no reason to reject this evidence of Mr Vrubel.

31. After Christmas 1992, wishing to test this refined form of control, he ordered a motor from an importer. Even though Mr Vrubel had ordered it, Mr Upham paid for it and picked it up for delivery to Mr Vrubel. I take this as an example of the constant cooperation between both parties, at that time, in the development of the whole project. Mr Upham offered the view at the hearing before me, that making a stepper motor rotate in micro stepping mode required no inventive contribution. In my view he is not qualified to offer such an opinion and certainly, as a party to these proceedings, could not be regarded as a witness on the subject upon whose evidence reliance could be placed. The contribution made by the Vrubels in regulating the stepper motor must have been integral to the development of the subject invention, whether or not that particular aspect of their endeavours was inventive in the patent law sense.

32. The earliest date for the subject patent is 6 August 1993. Mr Vrubel was asked in evidence why, if he considered he was the sole inventor of this crucial aspect, did he delay from January until August 1993 in protecting his idea by way of a provisional patent application. His reply was that firstly he wished to test his idea in practice, but secondly, and importantly in the present context, he assumed that he and Mr Upham would continue to collaborate in accordance with their previous agreement. He said "I believed we were working together on the whole system. My task was to look into the control part of the system".

33. From May 1993, however, this cooperation began to unravel. Mr Upham had had meetings with Mr Huntsman, the patent attorney for Go-Gas and had come to the conclusion that only he was primarily responsible for development of the whole system.

34. In July 1993, Mr Upham had a prototype valve manufactured by Mr Metham, an engineer. In evidence before me, there was a copy from a page of Mr Vrubel's log book containing a sketch, dated 23 May 1993, of components that bore a close resemblance to the Metham drawing. Having regard to the history of events, I am left in no doubt that the development of the valve over a long period was attributable to Mr Upham's efforts and that the plans provided for Mr Metham were based on his plans. I am not surprised that Mr Vrubel dealt with a similar valve in his May sketch. It is not necessary to impute bad faith to either party. They were closely cooperating and had been for the previous year. It is not to be wondered at that their minds dwelt on similar crucial features for the whole system. In this application before me, it is not necessary to decide whether one or the other was the sole inventor. Mr Vrubel regarded himself as such. He said that even if Mr Upham had not been involved, the whole system would have been developed by his firm. This contention, in my view, is quite contrary to the weight of the evidence.

35. Mr Vrubel did not have the background in developing the valve which Mr Upham had over many years. Attempts to establish this background were not convincing. He said that his father in Prague after the Second World War had been interested in developing such a system. Mr Victor Vrubel would have been quite a young man at that time and the technology was quite different and not to be compared with modern day technology. Mr Vrubel said that his mind had turned to a gas injection system in 1990 and again in the autumn of 1993, when a friend suggested to him that this would be a useful invention to develop. However Mr Vrubel's evidence was that on both occasions he had neither the time, nor the money to continue development. Mr Upham's background in this area is much more likely to have led to the development of the value by him. Even Mr Vrubel had to agree that the idea could have evolved out of Mr Upham's experience with carburettors for petrol engines.

36. Between April and July 1993 Mr Upham made several provisional patent applications. The Vrubels wished to be included as co-applicants. In Mr Upham's view, they had no right to be included and he refused their request. The business association between the two parties deteriorated and eventually the manufacturing agreement was terminated and the Vrubels were denied access to the Go-Gas car. Mr Vrubel said in evidence that he had not previously filed a provisional application because "I believed we were working together on a project - a gas system - I want to stress the word system". Nevertheless, after the breakdown of the relationship, he did file the application which is the subject of the present review and refused subsequently to have Mr Upham's alleged interest recognised.

37. I am satisfied that Mr Upham has made significant contributions to the development of the invention, particularly in relation to the valve. I accept his evidence of the history and provenance of the valve idea. In doing so, I do not exclude the possibility of Mr Vrubel's contribution to the development of the same idea. In fact, their close working relationship during the relevant period is the best evidence of joint contributions. As Mr Vrubel said, speaking of the first half of 1993, "I was talking to him basically every day about this time". They discussed the proposal to remove a pressure valve from a system. They discussed where the outlet in the valve should be. In Mr Vrubel's opinion, it should have been centralised as it was in a Dutch patent specification which he had seen. In Mr Upham's view it should be treated in a different way. Between them, clearly the invention as presently described, has evolved.

38. The use of the stepper motor probably came from Mr Upham. Mr Vrubel had previously been restricted to servo motors. His improvement of the performance of the stepper motor, however, was his own work. Once again, their cooperation led to the present stage of development of the system. The electronic controller is probably almost entirely the idea of the Vrubels. Possibly (according to the Go-Gas attorney) the electronic component of the stepper motor control alone is not suitable for patent protection. Nevertheless, in conjunction with the other elements of the invention, it forms an important part.

39. Mr Upham is entitled to succeed in his application because of the extent of his contribution to the development of the invention disclosed in the patent application. The likelihood is that the invention would not have occurred without Mr Upham's involvement. That involvement was sufficiently material to result in a beneficial effect on the final concept, particularly through the development of the valve.

40. Accordingly, the decision under review is set aside and in substitution therefor, there will be decision that the applicant should be regarded as a co-inventor and co-applicant with his business partner and wife Ronda Upham to patent application number 64822/94.

I certify that this and the 16 preceding pages are a true copy of the decision and reasons for decision herein of

Signed: .....................................................................................

Solicitor for the Respondent Australian Government Solicitor