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  • Steve Davey

How can I avoid claims of co-ownership or co-inventorship of my invention?

Updated: Sep 16, 2021

The case of Kafataris v Davis [2016] FCAFC 134 shows that you only disclose your invention to interested third parties under a confidentiality agreement or consultancy agreement to avoid claims of co-ownership or co-inventorship.

In this case, Mr Davis filed a provisional patent application for a new method of playing card games.

He subsequently had conversations with Mr Kafataris regarding his invention, in which Mr Kafataris suggested additional embodiments of the invention.

Mr Davis then filed an international patent application and included the additional embodiments.

Consequently, Mr Kafataris claimed that he should be listed as a co-inventor on the international patent application.

The primary judge accepted that Mr Kafataris had made a contribution to the invention but rejected the notion that his contribution amounted to "co-inventorship."

The test for inventorship was whether Mr Kafataris had made a contribution that was "material, tangible or qualitative."

Mr Kafataris appealed, but the Full Federal Court of Australia unanimously dismissed the appeal.

The Full Court stated that the proper test for co-inventorship is the person's "contribution to the conception of the invention."

The Full Court agreed with the primary judge that Mr Kafataris had failed to demonstrate that he had made a material contribution to the inventive concept disclosed in the international patent application. Mr Kafataris had merely provided another example of an application of the invention. This contribution was insufficient to amount to inventorship. The Full Court found that the inventive concept was substantially unchanged from the provisional application to the international patent application.

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