Can a high-level
concept in a proposal
give rise to entitlement
to an invention?
Inspire March 2022
The Full Court decision in Vehicle Monitoring Systems v SARB
Management Group 1 has given detailed consideration to the notion
of “inventive concept” in the context of determining entitlement to an
invention. The case relates to Australian Patent Application no. 2013213708
entitled “Vehicle Detection” in the name of SARB. which describes
systems and methods for detecting vehicle parking infringements.

12 The applicant, Vehicle Monitoring
Systems (VMS) contended that its
managing director, Fraser Welsh was
entitled to be named as an inventor
for the invention the subject of the
708 application. Further, as the
respondent, SARB had not derived
title to the invention from Mr Welch,
VMS was not a person who could be
granted a patent under s 15 of the
Patents Act (the Act).

In early 2005, the Maribyrnong City
Council had commenced a trial for
a system called the Parking Overstay
Detection System (the POD system)
developed by VMS using in-ground
sensors to monitor vehicle
non-compliance with parking
restrictions. The sensors detected
changes in the Earth’s magnetic
field when a vehicle entered a parking
bay. The POD system was invented
by Mr Welch.

1 The trial revealed a problem, in that
the issuing of parking infringement
notices required the parking officer
to manually enter the details into a
ticket issuing machine, which led
to a degree of frustration among
parking officers and errors in
transcription that could invalidate
the infringement notices. This was
referred to as the “manual entry
problem” by the primary judge.

The Manager of Parking and Local
Laws at Maribyrnong City Council,
Mr Gladwin, was aware that SARB
had expertise in ticket issuing
machines with the Council having
previously purchased SARB’s ticket
issuing device called PinForce. Mr
Gladwin facilitated contact between
Mr Welch and Mr Del Papa, who was a
senior salesman for SARB at the time.

In a telephone conversation in or
around August 2005, Mr Welch
communicated a proposal to
Vehicle Monitoring Systems Pty Ltd v SARB Management Group Pty Ltd [2021] FCAFC 224
Mr Del Papa, which involved
integrating the POD system with
a ticket issuing device so that
the infringement details were
automatically entered into a ticket
issuing software application.

Findings of the Primary Judge
The primary judge found that whilst
the proposal of Mr Welch led Mr
Del Papa and SARB to develop the
invention the subject of the 708
application, the information conveyed
to Mr Del Papa was a high-level idea.

The primary judge determined that
the invention was the reduction of
the high-level concept to a working
apparatus, which provided a solution
to the manual entry problem.

As Mr Welch did not play a role in
arriving at the solution, it was found
that Mr Welch should not be named
as a co-inventor.