[2008] FCAFC 9

Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9

The case concerned a method and apparatus for the production of organic plant grow media from sawmill waste.  At first instance it was held that Foxworth was a joint inventor in respect of the apparatus.  The contribution to the inventive concept was seen not to be merely be skill but inventive skill. For this reason, the case was not one involving the addition of mere common general knowledge to an inventive concept.


The court did make some reference to US and UK case law.  There was brief discussion of contribution of enough information by way of necessary enablement.  There was also a brief discussion, with respect to US law, regarding whether one of ordinary skill in the art could construct the apparatus without undue extensive research or experimentation.  Whilst there was a question as to whether the conception of the solution was sufficient to claim sole inventorship no evidence was filed.


The ‘but for’ test was noted in terms of whether the invention would have occurred without the involvement of Foxworth. It was noted that ‘the primary judge did not directly consider whether the concept was sufficient to enable the apparatus as described and claimed to be designed and built by the application of common general knowledge or ordinary skill. This gives rise to some difficulties.


It was noted that one criterion for inventorship may be to determine whether the person’s contribution had a material effect on the final invention


In terms of the claims, it was noted that ‘While the claims may claim less than the whole of the invention, they represent the patentee’s description of the invention sought to be protected and for which the monopoly is claimed.  The claims assist in understanding the invention and the inventive concept or concepts that gave rise to it. There may be only one invention but it may be the subject of more than one inventive concept or inventive contribution.  The invention may consist of a combination of elements.  It may be that different persons contributed to that combination.


Foxworth was seen as contributing inventive skill and therefore to be a joint inventor.  Neither party was seen to be entitled to the grant of the patent as sole inventor. There was no error in the primary judge’s finding.  It was not a case of adding common general knowledge to the inventive concept.

(Numbering and indentation issues may be present below)

Summary of Findings