Whether someone is a co-inventor will be determined by
their qualitative contribution to the inventive concept. Parties
should put arrangements in place before entering into discussions
regarding the invention to clarify if the person is intended to be
purely a consultant or a co-inventor.
When does picking someone's brains turn into co-inventorship
of a patent? The recent Full Federal Court decision in Kafataris v
Davis  FCAFC 134 provides useful insight into when
co-inventorship will arise and raises the question of how one
should manage a consultation process to avoid (or confirm)
Mr Kafataris antes up
The patent in suit related to an alternative manner of playing
card games. The player could play a primary game while at the same
time exercising betting options on a secondary or auxiliary game,
either separately from the primary game or in co-operation with the
Mr Kafataris sought to be recognised as a co-inventor as the
invention disclosed in the provisional application, prior to his
involvement, had been limited to supplementary betting options in
the game of baccarat. However, after his involvement, the PCT
application included a supplementary betting option for the game of
Mr Kafataris asserted that the "invention" indeed went
further and applied to all casino table card games, and that the
evolution of the invention from the provisional application to the
PCT application evidenced his contribution and entitled him to
The primary judge disagreed and the Full Federal Court of
Australia also unanimously dismissed the appeal.
The patentee's trump card: quality, not quantity
At first instance, the primary judge accepted that:
Mr Kafataris had made a material contribution by identifying a
supplementary betting option within the game of blackjack; and
the parties were working together to forge an "ongoing
However, the primary judge rejected the notion that Mr
Kafataris' contribution amounted to co-inventorship. The test
for the primary judge was not whether there was a quantifiable
contribution to the invention, but whether Mr Kafataris had made a
contribution that was "material, tangible or
qualitative." In particular, the contribution had to be geared
towards the "concept, design or perhaps method" and be
objectively seen as part of the invention.
In this case, the Full Court approved of this analysis and
further stated that the proper inquiry for co-inventorship is to
the person's "contribution to the conception of the
The Full Court agreed with the primary judge that the inventive
concept was the supplementary betting option and held that the
primary judge was correct in finding that Mr Kafataris had failed
to demonstrate that he had made a material contribution to this
inventive concept. Mr Kafataris had taken the concept, as applied
in baccarat, and provided another example of its application in
blackjack. This contribution was insufficient to amount to
inventorship. Baccarat and blackjack were simply alternative
embodiments of the one invention, with the inventive concept
"substantially unchanged" from the provisional
application to the PCT application. As the Full Court succinctly
concluded, "there is nothing novel about the game of
blackjack, nor was there anything novel about the secondary bet
option for blackjack".
Should inventions be kept close to the chest?
The issues in Kafataris were relatively
straightforward. However, the case is a strong reminder of the grey
area that can exist when a patent application involves multiple
contributors. Unlike Kafataris, the inventive concept,
design or method is not always clear and may require close scrutiny
of the specification and the prior art.
Therefore, as a matter of practice, an inventor should ensure
that appropriate contractual arrangements are in place before
consulting with other parties. This is not only useful to avoid
disputes but ensures each party is aware of its entitlements and
obligations. It can also help to avoid disclosures of the invention
that may impede valid patent protection.
Inventorship will always be a complex process. Pre-empting such
issues may ensure that, while the inventor's patent application
can evolve, the number of claimed inventors does not.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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