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.




Whilst the term ‘inventor’ is not
defined in the Act, current Australian
case law takes the ‘inventor’, for the
purposes of s 15(1)(a) of the Act to be
a person who materially contributes
to the ‘inventive concept’.

The notion of the ‘inventive
concept’ has been used in
Australian case law as the tool of
analysis for determining questions
of entitlement. In Polwood v
Foxworth 2 , a leading authority in
Australia, the Full Court specified
that the inventive concept should
be discerned from the whole
specification, including the body
of the specification and the claims.

However, the Full Court clarified that
not everyone who contributes to the
invention is an inventor. For example,
a person will not establish a claim
to entitlement where their claimed
contribution to the inventive concept
is merely making a vague proposal
or suggestion. Nonetheless, it is
generally accepted that the invention
may reside in the conception of an
idea, without the need for reduction
to practice.

It was also noted that when it came
to the question of entitlement, the
law in Australian diverges from the
law in the UK, with developments
in UK case law suggesting that
inventiveness in the context of
claim validity may have a role in
determining questions of entitlement.

The Full Court confirmed that rights
in an invention are determined by
objectively assessing contributions
to the invention, rather than
assessing the inventiveness of
respective contributions. The
inventive concept is to be discerned
from the whole of the specification,
not just the claims. Thus, the
question of entitlement is separate
to, and distinct from, the question
of patentability assessed by
reference to the patent claims.

Findings of the Full Court
The Full Court found that the primary
judge erred by confining the inventive
concept of the 708 application to the
embodiments closely reflecting the
device claimed in claim 1. This was
in part due to the primary judge’s
finding that the reduction of the
concept to a working apparatus
involved solving the manual entry
problem in a way that balanced
power saving considerations.

The Full Court noted that the
specification did not identify a
manual entry problem, nor was
the invention described directed
to providing a solution to a manual
entry problem. The Full Court
determined that the specification
was of far greater breadth, and
seats the invention as an automated
parking enforcement system that
provides advantages over a manual
parking enforcement system.

...the Full Court
clarified that not
everyone who
contributes to
the invention is
an inventor.

In particular, the Full Court accepted
submissions by VMS that the
inventive concept was broader than
that determined by the primary
judge, and included the idea of
an integrated automated parking
enforcement system in which
magnetic sensors are able to
output a sensor signal caused by
the occupancy of a vehicle space
by a vehicle, and in which details
pertaining to a notifiable event are
pre-populated into infringement
issuing software.

However, when considering the
quality of Mr Welch’s contribution
to the inventive concept, the Full
Court found that Mr Del Papa, and
other industry professionals already
knew how the POD system worked
in broad terms due to information
published in an industry journal
article prior to Mr Welch’s proposal.

Mr Gladwin also gave a presentation
at an industry conference shortly
after the proposal from Mr Welch
discussing the use of the PODs
system at Maribyrnong. The
evidence showed that Mr Gladwin
had telephoned Mr Del Papa before
Mr Welch’s proposal, seeking to talk
about whether the POD system’s
software could be run on the
PinForce device.

Considering this, the Full Court
was not persuaded that Mr Welch’s
proposal, which conveyed the broad
workings of the POD system, the
idea that the POD system should
be integrated with SARB’s PinForce
software, and that data items
pertaining to a notifiable event
should be communicated in a format
suitable for pre-population into the
infringement issuing software, was
significant enough to be taken to
be a material contribution to the
inventive concept. It was therefore
concluded that Mr Welch should
not be named as an inventor in
the 708 application.

Conclusions So, can a high-level concept in a
proposal give rise to entitlement
to an invention as a co-inventor?
Unfortunately, there is no straight
forward answer, and each case
must be considered based on its
own merits. Whilst the Full Court
acknowledged that the invention may
reside in the conception of an idea,
without the need for reduction to
practice, this may not always be so.

In this case, while the Full Court
reached a conclusion that the
inventive concept was broader
than that determined by the primary
judge, it was nevertheless found
that Mr Welch’s contribution to the
inventive concept was either known
to Mr Del Papa from other sources
prior to Mr Welch’s proposal, or
not significant enough to warrant
a finding of material contribution.

13 Helen McFadzean | Senior Associate
BE(Hons) Mechatronics MIP FIPTA
helen.mcfadzean@pof.com.au 2
Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9
Inspire March 2022
Inventive Concept