In order to determine whether Ambrosia has the ability to patent her invention, the elements in s.18Patents Act(1990) (Cth) must be met.
In order to determine whether Ambrosia has the ability to patent her invention, the elements in s.18Patents Act(1990) (Cth) must be met.
As outlined in s.18(1)(a) of the Act,the manner of manufactureis the first step needed to obtain a patent. Following the rules for interpreting the manner of manufacture, in the case ofNational Research Development Corp V Commissioner of Patents (1959)102 CLR 252 it that there needs to be an economically useful result. Therefore, for something to be patentable, there must be a new industrial or commercial application as well as a clear connection to the product or process of development.
Here, Ambrosia has created a new honey collection system by using a pipe apparatus to collect the honey without disturbing the hive. This can be seen as generating an economically useful result. The methods used extends to splitting the honeycomb and inserting a pipe to drain out the honey into containers. As such, it can be established that ambrosia has satisfied the first element.
Next, the element ofnoveltymust be satisfied as outlined in s.18(1)(b)(i) of the Act. Novelty is defined in S.7(1) of the Act, stating that the invention is not to beanticipatedby the prior art. This means that the invention has been disclosed in the prior art, before registering the patent, known as the priority date, as seen in the case ofWindsurfing International Inc v Petit [1984] 2 NSWLR 196. To determine if the features of novelty have been met, the reverse infringement test is applied. This means that the prior art information must disclose all of the essential features of the invention as stated in the case ofMeyers Taylor v Vicarr Industries [1977] HCA 19. It requires three elements to be satisfied.
Firstly, Ambrosia has not disclosed her honey collection system in a prior patent application or public document therefore satisfying the first two elements. Next is to prove that there has not been disclosure by an act. Here, there is a slight discrepancy, as Ambrosia did show Jonah, her neighbour, the invention before filing the patent. This is seen as an act that will amount to public use as she provided an explanation and demonstration of the invention to him. As this element has not been met, the requirement of novelty has not been satisfied in this scenario.
The third element is known as theinventive stepas mentioned in s.18(1)(b)(ii) of the Act. An invention that seems to lack an inventive step is said to be obvious.For an invention to be patentable, it must seek to expand the current knowledge existing before the invention.To determine if there has been an inventive step, the test for obviousness is applied. This asks, would a non-inventive skilled person regard the invention as being obvious or not, as seen in the case ofMinnesota Mining & Manufacturing v Beiersdorf (Australia) Ltd (1980) 144 CLR 253.The non-inventive skilled person is to assess the invention against common general knowledge within the relevant area of the patentable invention. A non-inventive skilled person is described as someone who holds knowledge and experience in the relevant field of invention.
In this case, the non-inventive skilled person would be Ambrosias neighbour, Jonah who is a professional beekeeper, having worked in honey production for 20 years. In assessing inventiveness, some factors such as the invention provides a solution to an existing problem, Ambrosias system can attest to this. The current collection system has beekeepers wear protective clothing and smoke the hives, whereas her system does not put the beekeeper in harms way. Her system has cut down the time on the collection of honey, whilst making it a more simple and safer process for the beekeeper. Her invention can also be seen as a solution to a problem, similar to the case ofMinnesota Mining. Ambrosia has been developing this new system for the past ten years, outlining that it has been an issue within this industry. Additionally, her neighbour Jonah stated that her invention is revolutionising honey harvesting. Therefore, the inventive step has been satisfied.
As only two of the relevant steps in s.18 of the Patents Act have been satisfied, Ambrosia does not have the ability to patent her honey removal system.
Homework Exercise 2 Duty of confidence questionHagar is a furniture designer who has worked as the head of furniture design with a major manufacturer ABCD Pty Ltd ABCD for 20 years. She develops, draws, designs and sources ideas for new furniture, locally and internationally.
ABCD makes the furniture Hagars designs for their clients. Hagars skills and knowledge are important to the company. Hagar maintains a specialist encrypted database. This database includes draft and final drawings and specifications for client furniture designs, the costings for the manufacture of clients' furniture, the contacts Hagar used in the project, material providers, and manufacturers of specialist materials, used in each furniture item made and sold by ABCD. Only Hagar, her assistant designer Kalilia, and senior management of ABCD have access to this database. This database includes draft and final drawings and specifications for client furniture designs, the costings for the manufacture of clients' furniture, the contacts Hagar used in the project, material providers, and manufacturers of specialist materials, used in each furniture item made and sold by ABCD. A client project often starts two years before the furniture is released to the public.
Recently, the project involved a new furniture range for a major international retailer Haakon Industries. Kalilia has been involved for nine months and has assisted in designing and developing the furniture range.
Kalilia is approached by a competing firm Gunhilda Furniture to be head designer. They believe she will give them a competitive edge because of Hagars contacts within the industry and clients. She accepts their offer as there is no career progression at ABCD. Before she leaves ABCD, she downloads a copy of Hagars specialist database to an external hard drive, as it will be useful to her in her new job.
Kalilia commences working at Gunhilda Furniture. She approached clients including Haakon Industries saying that she could complete their project more cheaply and quickly without any changes to the drawings or specifications of the range needing to be made. Harkon Industries and other clients contacted Hagar about Kalilias claim.
Explain to ABCD whether an action for breach of the duty of confidence in equity exists against Kalilia and Gunhilda Furniture. Explain using appropriate cases from the lecture slides and Chapter 3 of the textbook p 99-118.
In your answer do not discuss, actions arising under contract law either as express or implied terms, restraints of trade in employment law, privacy, company law, crime or other legislation.
