Anthony James Magee v Jonathon Edward Farrell

[1985] APO 33

In the Matter of the Patents Act 1952

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In the Matter of Application Nos. PG6074 and PG6928 by ANTHONY JAMES MAGEE

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In the Matter of a Request under Regulation 76 by JONATHON EDWARD FARRELL to Amend Each Application

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In the Matter of Objection by the Said ANTHONY JAMES MAGEE to those Requests.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Patent applications PG6074 and PG6928 were lodged on 18 July, 1984 and on 4 September, 1984, respectively, each being accompanied by a provisional specification.  On 18 July, 1985 an application for a Petty Patent, Patent application No. 45170/85 was lodged under the provisions of section 51 of the Patents Act as a further application in respect of application PG6074.  On the same date an International Application under the Patent Co‑operation Treaty was lodged (PCT/AU85/00156) which claimed priority from PG6074 and PG6928.  The applicant in all cases was Mr. Anthony James Magee.
         On 26 July, 1985 a Mr. Jonathon Edward Farrell lodged a request under sub‑regulation 76(3) in respect of each of applications PG6074 and PG6928.  Both requests were expressed in similar terms. They read as follows:

"I, JONATHAN EDWARD FARRELL, Fire Protection Engineer of 8 Chomley Street, Cranbourne in the State of Victoria, hereby request that the Patent Application No. 6074 lodged 18 July

1984 and any applications claiming priority therefrom be amended to note my interest as inventor or co‑inventor of the subject invention as the case may be.

My reasons for making this request are set out in my accompanying declaration."

"I, JONATHAN EDWARD FARRELL, Fire Protection Engineer of 8 Chomley Street, Cranbourne in the State of Victoria, hereby request that the Patent Application No. 6928, lodged 4 September 1984, and any applications claiming priority therefrom be amended to note my interest as inventor or co‑

inventor of the subject invention as the case may be.

My reasons for making this request are set out in my declaration made on the 23rd day of July 1985 accompanying the Regulation 76(3) Application filed in respect of Patent Application PG6074."

Accompanying these Requests was a letter from Mr. Farrell's solicitors, Kennedys, addressed to the Commissioner of Patents, which reads as follows:

"Dear Sir,

We act for Mr. Jonathan Edward Farrell the Applicant under Regulation 76(3) of the Patent Regulations who claims an interest in Patent Applications PG6074, PG6928 for the reasons set out in the accompanying declaration.

Our client is concerned that his interests in the device referred to in the subject Patent Applications and currently being marketed by Mr. Magee might be prejudiced by action taken unilaterally by Mr. Magee, to dispose of the subject Patent Applications and/or the technology, or otherwise let the Patent Applications lapse.

Accordingly, we request an expedited investigation of our client's Applications and await your further notice."

In a letter dated 20 August, 1985, the Patent Office wrote to Kennedys informing them of several deficiencies in the regulation 76 request:

"I refer to your letter dated 25 July 1985, and enclosed applications under Regulation 76(3).

You are advised that those requests are deficient, in that they do not state which documents are to be amended, and they also attempt to amend documents not yet lodged by using the words "and any applications claiming priority therefrom".  If the intention was to amend the applications then the require‑

ments of Regulation 76(4)(a) are applicable and the requests shall be accompanied by amended copies of the applications."

Subsequently, a letter from Kennedys dated 16 August, 1985 was received in the Office requesting that the regulation 76 request be brought to a hearing:

"We refer to our letter 25th July 1985 requesting an expedited investigation of our client's Applications and respectfully request an expedited hearing of the Subject Applications more particularly as our client has been advised by Mr. Anthony James Magee two days ago that he now intends to let the subject Application PG6928 lapse on the due date for filing the complete specifications i.e. 4 September 1985.

We shall be pleased if you could fix a date for the hearing of the subject applications as a matter of urgency.  Kindly advise if any additional action is required at this stage."

Accordingly, a hearing date of 2 September, 1985 was set down for this matter.  As required by regulation 85 of the patents regulations, but in any event in the interests of natural justice, Mr. Magee was also offered an opportunity, which he accepted, to be heard in this matter.  For administrative convenience the parties were  heard concurrently.
         The hearing was convened before me in Canberra on 2 September, 1985.  Mr. Farrell was represented by Mr. D.F. Kennedy, solicitor, of the firm of Kennedys, Melbourne, instructed by Mr. Keith Leslie, Patent Attorney, of the firm of Davies & Collison, Melbourne.  Mr. Magee was represented Mr. Noel T. Brett, Patent Attorney, of the firm of Clement Hack & Co., Melbourne.
The Action
         This action arises out of a dispute between Mr. Magee and Mr. Farrell as to the degree to which each can rightfully claim inventorship of the invention which is the subject of applications PG6074 and PG6928.  Mr. Magee, the present sole applicant, contends that Mr. Farrell made no contribution to the making of the present invention.  Mr. Farrell, on the other hand, maintains the contrary.  As such, the present action is rather in the nature of an obtaining action ‑ albeit an unusual one, since obtaining actions are not usually brought on at this stage of the prosecution of an application.  I will have more to say on this aspect of the matter presently.
         At the commencement of the hearing there was some uncertainty as to how the matter should proceed, given the peculiarities of the situation.  Mr. Brett submitted that there was no proper regulation 76 request on file.  He drew my attention to a number of irregularities in the two regulation 76 requests made by Mr. Farrell.  Several of these irregularities had already been drawn to the attention of Mr. Farrell's solicitors in the letter from the patent office dated 20 August, 1985 (supra).  In addition, Mr. Brett drew my attention to the fact that application PG6074 had already lapsed, and to the provisions of sub‑regulation 76(6) and regulation 77 which require, inter alia, that the document in relation to which the request is made be made open to public inspection before the Commissioner may make the amendment which is the subject of the request.  Accordingly, Mr. Brett asked for my ruling, at the outset, as to whether the requests were proper, and as to whether the action should proceed.
         In response, Mr. Kennedy informed me that the requirements of sub‑regulation 76(4)(a) had now been met by the lodgement that day of amended copies of the application forms.  Mr. Kennedy thereupon produced copies of these documents.  The main difference from the application forms originally lodged with applications PG6074 and PG6928 was the substitution of Jonathan Edward Farrell's name as applicant for that of Anthony James Magee.  This clearly went beyond the terms of the original requests, which merely required that:

"any applications ..... be amended to note my interest as inventor or co‑inventor of the subject invention as the case may be."

Taken at face value, what is expressed here is not actionable if only because there is presently no document on file having, or required to have, any details of inventorship.  In the light of this and the other prevailing circumstances, it did not come as any surprise that the real intent of Mr. Farrell was to have himself supplant Mr. Magee as the applicant in the documents on file, or, more specifically, in the application forms.  Therefore, while I accepted as valid the point made by Mr. Brett that the requests now before me were different from the ones in relation to which he had been invited to attend the hearing, I informed Mr. Brett that I was prepared at this hearing to consider the whole matter of the entitlement of the respective persons to be applicants.  In regard to this, I expressed the opinion that section 34 might be a more appropriate vehicle with which to achieve a change of name of the applicant, as this section is concerned with who may apply for a patent.  However upon reconsideration of the matter after hearing the parties I take the view that section 34 is not relevant in the circumstances existing here.  I will elaborate upon this at a later stage in the decision.
         The next matter which occasioned discussion concerned a basic under‑
lying difficulty, viz., that Mr. Farrell was alleging "obtaining" without having specific knowledge of the contents of the Magee specifications.  I proposed to overcome this by allowing Mr. Leslie access to the specifications in question under the provisions of sub‑section 55(1)(e).  Mr. Brett immediately objected to this, whereupon I proposed an alternative course of action, which was to allow access to the specification by an independent party  who would inform me of the existence of any overlap between what Mr. Farrell claimed to have invented and what was disclosed in specifications PG6074, PG6928 and 45170/85.  This was acceptable to Mr. Brett, as a result of which an assessment was made in this manner.  It was the conclusion of the independent party that overlap did exist.
          The final matter raised before the question of obtaining was considered, concerned a protest by Mr. Brett that he had not had the full ten days provided by sub‑regulation 85(2) in which to prepare his evidence, and as a result the evidence he was going to present at the hearing was not complete.  I informed Mr. Brett that, if necessary, he would be given sufficient opportunity to provide all his evidence, the early timing of the hearing having been brought about in consideration of the imminent lapsing of PG6928.
         Both parties made extensive submissions as to who was the true  inventor of the invention in suit.  However, I am spared here the need of a detailed consideration of these submissions and the associated evidence by virtue of the manner in which I have determined I ought to proceed in this matter.
Regulation 76
         The Act has provisions specifically relating to obtaining.  These provisions are set out in sub‑section 59(1)(a), opposition to grant; sub‑sections 68B(3) and 68B(5), refusal to grant an extension of the term of a petty patent where the Commissioner has been informed of relevant facts; and sub‑section 100(1)(b), revocation of grant.  There does not, however, exist any area of the Act in which specific regard is had to the situation where obtaining is alleged prior to acceptance.
         Mr. Farrell has sought relief via the medium of regulation 76.  It is my opinion however that regulation 76 is not appropriate for this purpose.  Mr. Leslie has contended that the words "or otherwise" in sub‑regulation(3) of regulation 76 mean that the sub‑regulation is not limited in the generality of its application.  In addition, Mr. Leslie pointed out that the person making the request is not necessarily required to be the applicant for the patent.  This second contention is not in dispute.  However I note that such requests have only been allowed where the applicant‑of‑file has consented, and appropriate evidence has been supplied.
         I have considerable difficulty with Mr. Leslie's first proposition.  It would seem to me that regulation 76 is only concerned with matters in the nature of a clerical error or obvious mistake.  I consider that the broadening of sub‑regulation (3) by the use of the words "or otherwise" merely takes account of unforseen eventualities which are nonetheless broadly identifiable with that category of deficiencies and defects in the formalities requirements, relating to applications for patents, which are exemplified by clerical errors and obvious mistakes.  It would be remarkable indeed that if regulation 76 was in fact intended to be a vehicle for obtaining actions, this did not warrant a separate and specific mention in the regulation given the gravity of an obtaining action and the diverse nature of obtaining compared with the dominant pre‑occupation of regulation 76 with clerical errors and obvious mistakes.  Furthermore, where the Act empowers the Commissioner to deal with questions of obtaining, it also empowers him to provide a remedy where obtaining is found (cf. sub‑sections 60(3) and 68B(14)): in each case that remedy is to grant to the person concerned a patent or a petty patent (as the case may be) "... on application made in accordance with the provisions of this Act ...".  That is, the remedy requires a new application to be made by the person from whom the invention was obtained, and does not involve transfer of title to the rights of the application in suit.  There are no such provisions in the regulations.  The consequence of this is not that all avenues of redress are now closed off to Mr. Farrell.  It is rather a matter of determining the correct course of action to be followed.  This was put by Mr. Leslie as follows:

"It's important that natural justice ought to be done in these matters.  Of course we would proceed by whatever means were appropriate to procure that result if it were determined that there was some substance to our case."

I agree with these sentiments.  I am, however, compelled to work within the constraints imposed by the Patents Act.
Section 34
         I turn now to a consideration of the applicability of section 34 in the present circumstances.  The relevant portions of section 34 read as follows:

"34.(1) Any of the following persons, whether a British subject or not, maymake an application for a patent:

(a)the actual inventor;

(fa)a person who would, if a patent were granted upon an application made by a person referred to in any of the preceding paragraphs, be entitled to have the patent assigned to him;

(4) Where, at any time before a patent has been granted, a person would, if the patent were then granted, be entitled, by virtue of an assignment or agreement made by the applicant or one of the applicants for the patent, or by operation of law, to the patent or to the interest of the applicant in the patent or to an undivided share in the patent or in that interest ‑

(a)the Commissioner may, upon a request being made as prescribed, direct that the application is to proceed in the name of the person or in the names of the person and the applicant or the other joint applicant or applicants, as the case requires; and

(b)upon such a direction being given, this Act applies as if the person were the applicant or one of the joint applicants, as the case requires."

Sub‑section 34(1) is concerned with the class of persons who are entitled to apply for a patent.  An obvious inclusion in the class is set out in sub‑paragraph (a) ‑ i.e. the actual inventor.  A not so obvious inclusion is set out in sub‑paragraph (fa).  Historically, sub‑paragraph (fa) was introduced to cover employer/employee situations where an employee's invention was made in the course of his normal work, and rightfully belonged to his employer.  Thus the employer becomes, in this situation, the kind of person specified in that sub‑paragraph and is entitled to make application for a patent on that basis. However, the import of the sub‑paragraph is not, on a plain reading, limited to that particular situation. 
         The question arises, does Mr. Farrell belong to the class of persons which falls within the scope of sub‑paragraph (fa)?  On behalf of Mr. Farrell, Mr. Kennedy has put a number of submissions, which if accepted, would lead to the conclusion that Mr. Farrell was inventor of at least part of the subject matter of the applications in suit.  If this were the case, it is irrelevant whether Mr. Farrell would be a person specified in sub‑paragraph (fa), as he would clearly fall within sub‑paragraph (a), and consequently, would be entitled to apply for a patent.  However, Mr. Farrell has chosen not to apply for a patent.  In any case, the section does not specify any procedure to be followed in situations where a patent has been applied for but a person specified by sub‑paragraphs (a) or (fa) has been omitted from the application.  It seems to me that the only procedures provided by the Act in such a case are firstly, where the omission was by error, an action under regulation 76 supported by the appropriate evidence from the actual applicant(s), and secondly, in other circumstances, an obtaining action.  In contrast to sub‑section 34(1), sub‑section 34(4) does specify a procedure to be followed.
Sub‑section 34(4) is concerned with an assignment or agreement made by an applicant for a patent, or by operation of law.  In this case the question is one of inventorship rights, not of assignment : as to the term "agreement", I take the view that the "agreement" of this sub‑section is analogous to assignment, and not concerned with inventorship rights.  Operation of law is concerned with specific situations exemplified by inheritance, or company mergers.  If Mr. Kennedy's submissions are correct, then Mr. Farrell is at least a co‑inventor and as such he has rights inherently provided by the law, rather than by the operation thereof.  There remains the possibility that the Commissioner is empowered to hear an obtaining action prior to acceptance and in consequence thereof, if obtaining were to be found, direct a compulsory assignment between the parties, and then take action under sub‑section 34(4).  I do not think that the sub‑section may be operated in this way.  Firstly, sub‑paragraph (a) thereof recites that "the Commissioner may, upon a request being made ... direct that the application is to proceed ...".  This does not seem procedurally a proper statement where the Commissioner has already directed a compulsory assignment.  Secondly, as I have pointed out above where the Act specifically provides for obtaining actions and empowers the Commissioner to provide a remedy where obtaining is found, in each case that remedy is to grant a patent or a petty patent (as the case may be) on a new application  made by the person from whom the invention was obtained.
Conclusion
          It would seem therefore that there are but three forums provided by the Patents Act in which the matter of obtaining may be pressed, and to which I have already referred: sub‑section 59(1)(a), sub‑section 68B(5) and sub‑section 100(1)(b).  The implication is that a person who has his rights in an invention alienated, must wait for a stage at which one or another of those sub‑sections would become applicable. 
         There is, of course, a significant danger to Mr. Farrell in waiting until acceptance before proceeding further in this matter.  Mr. Magee's application may lapse or be withdrawn, in which case Mr. Farrell would lose his priority rights, and prior‑publication may occur.  The fact remains, however, that there is nothing in the Patents Act which I consider would justify my transferring such rights and privileges to which Mr. Magee is currently entitled under the Act, to Mr. Farrell.  This conclusion applies also to any transfer of rights sought by Mr. Farrell in relation to Petty Patent application No. 45170/85.  As far as the International Application (PCT/AU85/00156) is concerned, until this application enters the "national phase" and becomes subject to the Australian laws, no request under the Act can be relevant.
         Accordingly, I determine that the applications concerned shall remain in the name of Mr. Magee.  I award costs against Mr. Farrell.

(J.L. ROVETA)