Austgen Biojet Holdings Pty Ltd v Mervyn Goronszy

[1997] APO 49

official notice

decision of a deputy commissioner of patents

Application  :          No. 560510 in the name of AUSTGEN BIOJET HOLDINGS PTY LTD

Title:          Effluent Treatment

Action:          Request under s.32 by Mr M GORONSZY

Decision:          Issued            .

Abstract

In 1995 the Commissioner found that the patent application had been obtained, Mr Goronszy being a joint inventor of the invention, and being jointly entitled with Austgen Biojet Holdings Pty Ltd to the grant of a patent.

A subsequent application under s.33 was not able to proceed. A patent granted on such an application can only be granted to the opponent, and Austgen Biojet Holdings was not an opponent.

Austgen Biojet Holdings was requested to amend the request form to record Mr Goronszy as a nominated person. No such amendment was forthcoming. Consequently Mr Goronszy sought a determination under s.32.

Application was directed to be sealed with Mr Goronszy and Austgen Biojet Holdings Pty Ltd as patentees. In the circumstances of the case, there was no need to seek amendment of the request form under s.104 to record Mr Goronszy as a nominated person.

patents act 1990

decision of a deputy commissioner of patents

Re:Patent application 560510 in the name of AUSTGEN BIOJET HOLDINGS PTY LTD, and a request under s.32 by Mr M GORONSZY

background

Patent application 560510 was filed in 1981 as a divisional application based on 51383/79, and the term of any patent granted thereon will expire in approximately 2 years time. The present matter arises from an unreported decision of the Commissioner dated 28 July 1995, in an opposition by a Mr Goronszy. That decision found that the invention had been obtained from Mr Goronszy, who was held to be a joint inventor. The decision found the inventors to be:

• Stephen George Burch Jones

• Arthur David Brown

• Mervyn Charles Goronszy

The decision further found the patent should properly be granted jointly to Austgen Biojet Holdings Pty Ltd (the assignee of Jones and Brown), and Mr Goronszy.

Subsequent to the decision, and consistent with a clear suggestion in the decision, Mr Goronszy filed patent application 34509/95 in reliance upon s.33, naming both Austgen Biojet Holdings and himself as the nominated persons. However s.33 only enables the Commissioner to grant a patent to ‘the opponent’. In this case, Austgen Biojet Holdings was clearly not the opponent.  Consequently, despite the option of an application under s.33 being referred to in the 1995 decision the Commissioner formed the view that a patent could not be granted on application 34509/95.

Mr Goronszy then pursued the other option indicated in the 1995 decision - viz an amendment of the patent request to include him as a nominated person. On 20 Jan 1997 the Commissioner requested the parties to so amend the request form. Austgen Biojet Holdings, as the applicant of record for the present application has failed to propose any such amendment. As a result, on 19 March 1997 Mr Goronszy sought a determination under s.32 of the person who may proceed with the application, and the manner of proceeding with the application.

The request under s.32 was advertised on 1 May 1997. Under reg 3.6(4) each party has 2 months to notify the Commissioner if they wish to be heard. Mr Goronszy filed a statutory declaration, but did not ask to be heard. Austgen Biojet Holdings did not ask to be heard. Accordingly I consider that I can proceed to make relevant determinations of the manner in which the present application is to proceed, having regard to the findings of the decision of 28 July 1995.

Person who may proceed

The scope of s.32 in this regard is discussed in Re O’Neill & Anor (1995) AIPC ¶91-150 @ page 39391, 30 IPR 637 @ 638. There I observed that the precedent showed that where one of joint applicants frustrates the processing of the application, the Commissioner may direct the application proceed in the name of the other applicant alone.

The present case differs from these precedents in that there is currently only one applicant. What has been sought is the addition of Mr Goronszy as an applicant, and the deletion of Austgen Biojet Holdings; that is, a complete transfer of the application from one party to another. I expressed concerns regarding whether the Commissioner in fact has the power to make such a direction (it having the appearance of being the exercise of a judicial power rather than an administrative power) to the attorney for Mr Goronszy, who has advised me that Mr Goronszy “is happy for the determination under s.32 to be made that the patent be issued in the joint names of Mervyn C Goronszy and Austgen Biojet Holdings Pty Ltd as joint nominated persons”.

Having regard to all the circumstances of this case, I consider the application should proceed jointly in the names of Mr Mervyn Goronszy, and Austgen Biojet Holdings Pty Ltd.

Manner of proceeding

A patent application includes a patent request, and a notice of entitlement. In the present case, both of these documents as originally filed do not make reference to Mr Goronszy. The question arises of whether those documents require amendment before the application can proceed to grant. I consider they do not. The issue of inventorship and entitlement was fully explored in the Commissioner’s 1995 decision. Consequently by following that decision the Commissioner must be satisfied that the patent has been granted to an entitled person falling within the class of person listed in s.15. It follows that no useful purpose is served by requiring the patent request and notice of entitlement be amended to be consistent with that decision, and I can find nothing in the Act or Regulations which mandates amendment of these documents before a patent can be granted. Accordingly I consider that I can direct the application proceed straight to grant.

Determination.

Having regard to the findings in the decision of a delegate of the Commissioner, dated 28 July 1995, and the failure of Austgen Biojet Holdings Pty Ltd to include Mr Goronszy in the patent request as a nominated person, I make the following determination of the manner in which this application is to proceed.

• upon payment of the sealing fee (and there being no outstanding continuation fees), the application is to be sealed naming:

  Mervyn Charles Goronszy

  Austgen Biojet Holdings Pty Ltd

as patentees; and

Stephen George Burch Jones

Arthur David Brown

Mervyn Charles Goronszy

as inventors.

The date for sealing needs to be set under regulation 6.2. I note the sealing fee has apparently not yet been paid, and a continuation fee payment is due on or before 2 October 1997 – and that sealing cannot occur if relevant fees have not been paid.

• in anticipation of the sealing fee, and the continuation fee due by 2 Oct 1997 (and any extension fees associated therewith), being paid within 1 month from the date of this determination, under regulation 6.2(1)(b) I hereby direct that the end of the period for sealing the patent be 17 November 1997.

D Herald
Deputy Commissioner of Patents

Patent attorneys for Mr Goronszy  :  Shelston Waters, Sydney

Patent attorneys for Austgen Biojet Holdings Pty Ltd    :  F B Rice & Co, Melbourne