Patent Ownership Disputes: Stake your correct claim early
1/06/2009

The first patent ownership dispute of its kind in South Africa shows how important it is to keep accurate and detailed records of any invention process – and to act without delay when there is a dispute.

Southwood J, sitting as the Commissioner of Patents, recently ruled in this dispute.
Galison Manufacturing (Pty) Ltd sought an order in terms of Section 28 of the Patents Act 57 of 1998 that Set Point Industrial Technology assign to it South African patent number 98/4753 entitled “Discharge Rail Hopper”. The invention in dispute concerned a wide door hopper which is extensively used in South African mining.

The central issue was whether two Galison employees, Thorburn and Skelton, had devised the invention of the patent or whether the original applicant, Crause, was the sole inventor and was therefore entitled to apply for registration of the patent. These events occurred between 1995 and 1997 and, as can be expected from a dispute of this kind, the versions of the parties as to who had devised the invention were mutually destructive.

As there was no South African precedent dealing with this issue, the approach set out at 326 lines 12-13 in the judgement in Stanelco Fibre Optics Ltd’s Applications [2005] RPC 15 (Ch. D) was accepted:

“The task of the court is to identify the inventive concept of the patent or application and identify who devised it … The court is not concerned with issues of validity or inventiveness: merely with the concept as described.”
The dispute was a factual one. Galison bore the onus and could only succeed if it satisfied the court on a preponderance of probabilities that its version was true and accurate and therefore acceptable, and that the other version advanced by the defendant was false or mistaken and had to be rejected.

The court noted that in deciding the primary issue of who had devised the invention of the patent, it had to be borne in mind that the witnesses were testifying about events that had taken place between 10 and 12 years previously, a long time for a memory to be reliable and accurate even if there was no motive to misrepresent the facts.

As the dispute involved patent rights that could be worth a great deal of money, the court felt that it would have been naïve not to accept that the main witnesses did not have a motive to at least colour their evidence so that it would be considered more favourably.
For these reasons Southwood J was of the view that the documentary evidence and the probabilities played a very important role in assisting the court to make findings as to the witnesses’ credibility and reliability. He stated that the documentary evidence was the most objective means of determining whether the witnesses could be believed and whether what they said was accurate. Depending upon the circumstances, he considered the probabilities of equal importance.

Accordingly the background of allegations previously made by Galison and its legal representatives regarding the ownership and inventorship of the invention was considered important.

There were various contradictions and inconsistencies in Galison’s conduct. It was not possible to reconcile the statements and actions and there was no explanation for the contradictions and inconsistencies, which went to the heart of the dispute.

Southwood J found that all these factors showed that Galison’s evidence (ie that of Thorburn and Skelton) was unreliable and could not be accepted at face value. This was exacerbated by the probabilities arising out of Galison’s failure to take action when apprised of the existence of the patent and by the action that Galison did take.

Crause’s evidence on the key issue was not shown to be untrue. His evidence was further corroborated and there was important circumstantial evidence which supported his version.

There was thus no basis for finding that Galison’s version was true and accurate and Crause’s version was false and had to be rejected. Galison did not discharge the onus resting on it and its claim was dismissed. The patent remained in the name of Set Point.
The matter emphasises the importance of record-keeping and of having accurate and reliable facts if there is any dispute regarding inventorship or ownership of an invention.

Danie Dohmen
Patent attorney and partner
Adams & Adams
danie@adamsadams.co.za