Austoft Industries Ltd v Cameco Industries Inc

[1995] APO 65

official notice

decision of a deputy commissioner of patents

Application  :          No. 639579 in the name of AUSTOFT INDUSTRIES LTD

Title:          Base Cutter Assembly

Action:          Opposition by Cameco Industries, Inc

Decision:          Issued            .

Abstract:          Opposition based on several alleged prior users.

Much of the evidence unsatisfactory as it presents conclusions, rather than facts from which conclusions can be drawn.

A photograph produced in support of prior use could not be relied upon because of doubt as to its origin, and to what it actually showed.

With regard to whether a working of the invention 2 days before the priority date could be disregarded:

à   The working was not for the purpose of a reasonable trial; and

à   Where an applicant has some control over the extent of the public who might see the working of the invention, the working in public cannot be considered as reasonably necessary unless the applicant has taken reasonable steps to minimise the extent to which the working might be seen by the public. In this case it was not reasonably necessary for the working to be before the particular section of the public that was present.

à   Accordingly, the use could not be disregarded by reason of s24 of the Act, and the invention claimed was not novel.

à   Although use of the invention was admitted, the evidence of what was in fact used was far from satisfactory. Both parties allowed 1 month to serve and file definitive further evidence.

Having regard to the nature of the evidence, opponent not awarded costs in respect of evidence. Opponent had provided the Commissioner with a security against costs. No decision to release the security until the decision on prior use made.

patents act 1990

decision of a dePUTY commissioner of patents

Re:Patent Application No. 639579 in the name of AUSTOFT INDUSTRIES LTD, and opposition thereto by CAMECO INDUSTRIES INC.

background

Patent application 639579 was filed on 9 July 1991 as application 80302/91. The application was associated with provisional application PK1111, which was filed on 10 July 1990; and the parties agree that this date is the relevant priority date for the claims.

The application was advertised accepted on 29 July 1993. The opponent filed its notice of opposition on 27 October 1993. The evidence in the opposition was completed on 9 Jan 1995. The evidence of both parties incorporates, by way of reference, evidence served in an opposition to related application 635438. As the complete application was filed after the commencement of the 1990 Act, the transitional provisions of that Act are inapplicable.

Subsequent to the completion of the evidence, and following requests from the applicant:

-the opponent was required to provide a security against costs pursuant to s.219 of the Patents Act. A cash security was provided to the Commissioner on 30 May 1995; and

-summons for attendance at the hearing were issued in respect of two of the opponent's declarants.

The matter was heard in Sydney on 6 November 1995. The applicant was represented by Ms J Baird of counsel instructed by Mr C Marsh (patent attorney of F B Rice & Co, Sydney). The opponent was represented by Mr D Yates of counsel instructed by Mr I Millar (patent attorney of Spruson & Ferguson, Sydney).

The Specification

The invention relates to machines for harvesting sugar cane. Such machines have a device for cutting cane at ground level. There are several types of cutting devices; the particular type which the present invention relates to is called a 'leg base cutter assembly'. In a leg base cutter assembly, a rotating disk supporting the cutting blades is suspended from a gear-box and driving mechanism via a drive shaft.

With such leg base cutter assemblies, there is a problem with trash (leaves, etc) collecting around the drive shaft, particularly when harvesting green cane. If left uncleaned, trash can build up to an extent sufficient to prevent harvesting. The invention solves this problem by shaping the drive shaft so that the trash is urged towards an intermediate portion along the shaft, with cleaning means being arranged adjacent the shaft at the intermediate portion.

The specification ends with 12 claims. Claim 1 is in the following terms:

A base cutter assembly for a sugar cane harvester comprising:

a cutting means and an elongate drive shaft adapted to drive the cutting means; characterised in that the drive shaft is shaped such that, in use, trash wrapping round the drive shaft is urged to collect proximate an intermediate portion of the shaft;

and cleaning means positioned adjacent the intermediate portion of the drive shaft and adapted to remove the trash which is wrapped around the drive shaft.

Claims 2 to 11 are dependant claims, and claim 12 is an omnibus claim.

The Basis of the Opposition

At the commencement of the hearing Mr Yates indicated that while the statement of grounds and particulars identifies a number of grounds of opposition, only one ground would be pursued - viz lack of novelty based on prior use.

In dealing with the alleged prior use, it is appropriate to make an initial comment on the evidence in support of the prior use. The evidence of some declarants is in the nature of conclusions, as distinct from factual material on which I could draw conclusions. In particular some declarants used the generic terminology of the claims to purportedly describe their machines, rather than providing an actual description of their machine which I could compare against the claims. I consider that such evidence needs to be considered with great caution, as it may constitute no more than an assertion that 'the invention is old because I say so'.

It is also appropriate to note the comments of Graham J in Seiller's Application [1970] RPC 103 @ 106:

In my judgment it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.  Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case.

In the present case, the declarants are all from the sugar growing industry in southern Queensland and appear to know of each other to a greater or lesser degree. The opponent’s declarants prima facie provide corroborating evidence. Nevertheless, as the evidence is largely based on a recollection of events that occurred several years previously (as recent as 1990, but also as far back as the late 1970’s), I consider that I must examine it carefully before accepting it.

The opponent alleges invalidity on the basis of several discrete prior users. It is appropriate that I deal with these as discrete issues.

Prior user by Greaves

In his declaration in support of the opposition, one Mervyn Greaves alleges that he manufactured leg-base cutter style sugar cane harvesting machines, which were modified in about 1985. He states that as of 1985 each of these machines had the features which are set out in paragraphs (a) through to (g) of his declaration (which paragraphs mirror the wording used in claims 1 to 7 respectively.) He further states that he still owns one of the machines, it being on his property, partially disassembled. Finally he declares that he has personally observed the Toft 300 and Austoft 6000 cane harvesters as also each having the above features.

In evidence in answer, Malcolm Baker (the inventor) declares that he inspected the machine referred to by Greaves, and he did not see any features on the machine corresponding to the cleaning means. He also declares that he is familiar with the Toft 300 and Austoft 6000 cane harvesters, and to his knowledge no such machine has ever had the cleaning means.

In reply, Greaves states:

The reason that Mr Baker did not see the cleaning means is that the arms were no longer in my possession as they had been decommissioned some years ago, as I advised Mr Baker at the time.

He also provides some photographs of the machine in its present state, indicating some lugs where the supporting arms of the cleaning means were attached to the machine. He provides a diagrammatic representation of the cleaning means, but no photograph of any component of the cleaning means.

In considering the evidence relating to this alleged prior use, I note:

• In his first declaration Greaves states that each machine has the features of the listed paragraphs. In my view the terminology used is inconsistent with the terminology that one would expect of someone describing the details of a machine in their present or past possession. This is perhaps well illustrated by para (d) which specifies in terms corresponding to claim 4:

-‘First and/or second shape means which were conical members’.

This phrase is a rather odd description of an actual machine in his possession - just which shape means was in fact conical?.

The use of terminology parallelling the claims does not provide me with any structural information about the alleged prior machine which I can compare with the claims. This evidence fails to provide me with relevant factual information; rather it presents me with conclusions based on unknown facts combined with the declarant’s unknown knowledge of the meaning and scope of the claims. I am not prepared to rely on such evidence as establishing the existence of prior use.

• In his declaration of 19 Dec 1994, Greaves states that the relevant machine 'was decommissioned some years ago'. In a declaration dated 18 Apr 1994 (executed in relation to related application 635438) he states that the machine 'was maintained until it was scrapped at the end of the last sugar season (which I take to be spring 1993) - which is hardly 'some years ago' compared to Dec. 1994.

• Greaves declaration is supported by a declaration of Noel Dorran, who declares that he confirms the accuracy of Greaves'  declaration of 19 Dec 1994 in relation to the trash removal arm. He states:

‘It was I who fabricated this trash removal arm and fitted the arm to the cane harvesting machine depicted in ..... The work was done in 1985 when the Austoft 6000 gearbox and replacement leg-basecutter arrangement was fitted to the machine.’

but does not himself describe what he actually installed in 1985.

Against this I note Greaves' declaration of 18 Apr 1994 where he states:

‘In the period 1977 to 1980 I replaced the leg base cutter on the harvester with a double leg base cutter gearbox designed for a TOFT 6000 harvester.’

which indicates that the gearbox was fitted to the machine much earlier than suggested by Dorran, and casts doubt about what work Dorran in fact did on the machine in 1985.

In conclusion, the evidence in support of the prior use by Greaves is far from satisfactory, and  I am not satisfied that there is any material corroboration by Dorran. Thus although Greaves has asserted that he was a prior user of the invention, I do not consider the evidence sufficient to reasonably establish that the invention claimed was prior used by Greaves.

Prior Use by Neville Toft

Neville Toft executed two declarations in the present matter (and provided a copy of a declaration filed in the related opposition to 635438), and was called for cross examination.

In para 10 of his declaration of 14 Apr 1994, he states:

‘I owned Toft Model 4000, 5000, and 6000 cane harvesting machines. Each was a leg-base cutter style operated by me as early as 1980. Each had all the features referred to in paragraphs 5(a) to (g) above.’

I note that paras 5(a) to (g) correspond essentially to the wording used in claims 1 to 7. Like Greaves' declaration, Toft has not described the details of the machines actually in his possession, and the comments I made on this issue in respect of Greaves' declaration are equally appropriate.

I note that in his declaration of 14 April 1994 (and that of 29 Sept 1993 in respect of 635438) Toft states:

‘Since early 1992 I have been the Australian Manager for Cameco Industries, Inc.’

In cross examination he stated this was incorrect; he was a manager of Cameco Downunder Pty Ltd, not of Cameco Industries, Inc.

In his declaration of 19 Dec 1994, Toft attaches a photograph of a machine which appears to show the features of the invention claimed. In para 3 of that declaration he states:

‘Exhibited hereto and marked Exhibit T-2 is a photograph which I have located amongst my files, which I believe was taken in 1979 or 1980, is of the legs of my Toft 6000 machine, as I had modified those legs to operate in the 1979 season ....’

The applicant sought to obtain production of the negatives of that film, and/or copies of other photographs taken at the same time. On 20 Mar 1994 a declaration was filed by Toft stating inter alia:

1. The photograph which constitutes exhibit "T-2" ...  was located in November 1994, quite by accident, when I cleaned out a cupboard at my home.

1. That cupboard contained a number of photographs, movie films and other articles. I retained some of those articles but most were simply disposed of.

1. The photograph of Exhibit "T-2" was taken, to the best of my knowledge and belief, in 1979 or 1980. It was rarely my practice to retain the negatives of photographs.

1. I have searched my home and my office to the extent necessary to allow me to swear that I am unable to locate any other photographs which might be said to have been taken on the same roll of film as the photograph of exhibit "T-2" ....

Relevant to this matter, the cross examination of Mr Toft elicited the following:

BAIRDIn your second declaration of 19 Dec, you found a photograph?

TOFT             Yes

BAIRDAnd you say you found the photograph amongst your files?

TOFT             Yes

BAIRD          And then later you say you found it in the cupboard?

TOFTYou know what it was? I've gone through and done something up in memory of my dad, and it was going... I don't take photographs myself. I found it in, going through that, so - cupboard or a file, what’s the difference.

Then later in the examination:

HERALDThat photograph has got lots of scratches and stuff on the surface. Have you got any idea of how that photograph got scratched?

TOFT             No. They're just part of my junk file.

HERALD      Part of your junk file?

TOFT             Part of my dad's junk file.

The evidence of Toft is confusing. On the one hand he asserts that he found the photograph in 'his' files, but on the other hand it was in his father’s possessions which were in a cupboard. He declared that it was rarely his practice to retain the negatives of photographs (implying an involvement with their taking), but in cross examination stated that he doesn't take photographs himself (implying that it was his father that took the photographs). This leaves me in considerable doubt about where the photograph originated.

Additionally, in para 10 of his first declaration, Toft states that the cleaning means

‘was a piece of 1.5 inch shaft welded to the frame and terminating near the middle or narrow wasted portion of the base cutter shafts’

but the photograph shows the relevant shaft attached to a deflector plate, not the frame.

Finally, on close inspection of the photograph, I am not even sure of what is relevantly disclosed in the photograph. The photograph shows a leg base cutter, a deflection plate, and a finger forming the alleged cleaning means projecting from the plate. Mr Toft indicated how the machine had been modified by cutting off part of the end of the deflector plate so that it did not go as close to the leg, and the finger put in the middle. My interpretation of the photograph is that the finger extends perpendicularly from the rear of the plate; although the photograph is slightly out of focus at the region, and heavily scratched, it is clear to me that the finger shown is not coplanar with the plate. This seems to me to be contradictory to the arrangement indicated by Mr Toft. Further, and in any event, what is not clear from the photograph is the spatial positioning of the end of the finger to the leg. The photograph appears to show them in close juxtaposition. But what is not evident is the extent to which that juxtaposition is attributable to a real spatial juxtaposition, or an apparent juxtaposition arising merely from the viewing perspective. From a detailed consideration of that photograph, I am far from convinced that it shows the finger to be necessarily in close juxtaposition to the leg such that it would provide a trash-removal function.

Dennis Trebbin provided a declaration in support of Toft’s declaration and photograph. Whilst Trebbin’s evidence provides some corroboration of Toft’s evidence, it does not alter my view of what is (or is not) shown by the photograph.

In conclusion, much of the evidence of Toft is unsatisfactory for the same reasons as for Greaves’  evidence. With regard to the photograph, I have sufficient doubt about the origin of the photograph, and of what it shows, to be satisfied that I ought not rely upon it - nor accord it any significant weight as corroboration of Toft’s other evidence. And the corroborating evidence of Trebbin does not persuade me otherwise. Accordingly I am not satisfied that the evidence of Toft, supported by Trebbin, is sufficient to establish prior use of the invention claimed.

Prior Use in 1985, McNamara

Michael McNamara declares that he is familiar with and observed various Austoft model 6000 machines as early as 1985. He declares that they had each and every feature of an itemised list of features - corresponding to claims 1 to 7. Again, this evidence is deficient for the same reason that similar evidence from both Greaves and Toft is deficient. I am not satisfied that this evidence of McNamara is sufficient to establish prior use of the invention claimed.

Prior user by Austoft/Hodgett

The opponent alleges the invention was prior used by the applicant Austoft on the days of 8 and 9 July 1990 - that is, on the two days immediately preceding the filing of the provisional application. It is common ground that a machine incorporating the present invention was operated at Hodgett’s farm on July 8 and on Loeskow’s farm on July 9. The applicant argues that the use was for the purpose of reasonable trial, and must therefore be disregarded by reason of s24 and regulation 2.2(2)(d) - which provide as follows:

s24. (1) For the purpose of deciding whether an invention is novel or involves an inventive step, the person making the decision must disregard:

(a)any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee;  ...

reg 2.2(2) For the purposes of section 24 of the Act ("validity not affected by certain publication or use"), the following circumstances are prescribed:

(d)the working in public of the invention within the period of 12 months before the priority date of a claim for the invention:

(i)for the purposes of reasonable trial; and

(ii)if, because of the nature of the invention, it is reasonably necessary for the working to be in public.

The applicant does not deny that the invention was used on the two days as alleged. However, the exact constructional details of the invention as used is not readily apparent from the evidence of either the applicant or opponent.

McNamara declares the machine ‘incorporated all the features of the drawings in the specification of Australian Patent Application No 81597/91 and specifically those features listed in paragraph 10, above’. Paragraph 10 is an enumeration of features paralleling the claims, and has the problems previously discussed. As further illustration of the difficulty with this evidence, para (g) provides cleaning means in the form of a deflector plate located immediately adjacent the region to be cleaned. Para (h) [which repeats the obvious mistake in claim 8 of qualifying the deflector plate rather than the cleaning means] provides either a deflector plate in the form of a wheel (which is not contemplated by the invention) or a cleaning means in the form of a wheel. The evidence of McNamara is that the machine had ALL these features; I doubt this, as the features of  paras (g) and (h) are inconsistent with being present on the one machine.

Young declares that he was offered a machine having the features of Fig 3 of the specification - and that machine was subsequently purchased by Hodgett. His declaration sets out what he considers the specification describes, and asserts that the machine he was offered had all those features, as did the machine he saw operating on 8 July. Again, this declaration has the same difficulties as other declarations as discussed above.

Consequently, from the evidence I am unable to determine exactly what arrangement was used. But as there is no dispute between the parties that the use involved something that fell within the scope of the claims, I shall proceed to consider the issues relevant to the application of s.24.

In addressing the application of s24, there are thus three issues to be addressed: was the prior use a public prior use;  was it for the purpose of reasonable trial; and having regard to the nature of the invention was it reasonably necessary for the working to be in public?

Was the prior use a public prior use?

The working of the invention at Loeskow’s farm was alleged to have been observed by Douglas Young. The declaration of Young is merely a brief statement that he clearly recalls visiting the Loeskow farm on 9 July to assist in and watch more cutting operations with the machine. His evidence stands uncorroborated, and is greatly subordinate to the evidence of prior use at Hodgett’s farm. Although he asserts that the ‘operations were in no way experiments or trials of the machine in question’, the basis of this opinion is not apparent. I consider the evidence of Young is insufficient to establish that there was a public prior use at Loeskow’s farm, and will not consider this alleged prior use further.

The other alleged prior use was at Hodgett’s farm. Hodgett bought an Austoft 7000 machine, which was delivered to him on 29 May 1990. The machine was immediately returned to Austoft for replacing the ‘underslung gearbox’ with a ‘leg-base cutter box’ (including the device of the present invention) on the basis that the conversion would be done at no cost to him. If it did not perform to expectations, the machine would be returned to its former configuration at no cost to him; otherwise he would subsequently be charged 50% of the cost of conversion.

From the evidence, the working at Hodgett’s farm was observed by the following persons (with their affiliations indicated):

Neville Toft  Austoft
           Noel Searle  Austoft
           Donald Helmrich  Austoft
           Malcolm Baker  Austoft

Lewis Hodgett  machine owner
           Rodney Fox  the driver, and son-in-law of Hodgett

Douglas Young  harvesting contractor
           Michael McNamara               general manager of a dealer for Austoft
           Patrick McNamara                 the son of Michael McNamara
           Robert Woods  manager of Springhill plantation

The applicant does not assert that these people were unable to view and ascertain the invention as a result of the working (cf Boyce v Morris Motors Ld 44 RPC 104 @ 149, Lux Traffic Controls Limited v Pike Signals Limited and Faronwise Limited [1993] RPC 107 @134) and the evidence does not suggest that this might have been the case. It is also quite apparent from the evidence that Austoft took no steps to explain to any of the persons present that the machine was to be treated as confidential in any way. Clearly the Austoft personnel have an obligation of confidence as employees of the applicant. It might be argued that Hodgett had an implied obligation of confidence given the circumstances of the conversion of his machine, and that obligation of confidence might also flow on to Fox by reason of the familial relationship. But I can see no basis for imputing any obligation of confidence on the remaining four persons who were present (Young, M & P McNamara, and Woods). Consequently I conclude that there was a prior public use of the invention which rendered the invention publicly available.

Was the working of the invention for reasonable trial?

The opponent argues that the public use was not for the purpose of a reasonable trial, essentially on the basis that the harvesting that was done by the machine was the contractor’s commercial quota for the day in question.

It is of some interest that the wording of Reg 2.2(2)(d) has a minor difference to the corresponding provision in the 1952 Act [s158(1)(h)(ii)] which  refers to ‘reasonable trial only’. In my view the omission of the word ‘only’ is consistent with the view that the presence (or absence) of purposes other than a reasonable trial are not relevant; the question is whether the working is a reasonable trial in all the circumstances. I would observe that it might well be that a proper trial of an invention would entail its use in a ‘real life’ situation - that is, a trial is not incompatible with cutting a commercial harvest (see, for example, Perard Engineering Ltd. (Hubbard's) Application [1976] RPC 363).

Hodgett declares that he did not consider his use of the machine to have been any sort of trial or experiment, and that no notes or observations of the machine were ever made of the type which would indicate that the machine was being trialed. This evidence is corroborated to a greater or lesser degree by Young and M McNamara. Against this is the fact that four Austoft personnel were present on July 8, and the arrangement with Hodgett for fitting the leg base cutters to the machine which could imply some degree of experiment.

The applicant argues that the need for a trial was based on a range of factors, including such things as cane varieties and soil condition. I consider the evidence of the applicant establishes that they had in place a routine mechanism for ‘trialing’ new developments, and that the circumstances of the use on 8 July was part of that process. But merely conducting ‘trials’ is not sufficient to gain the protection of s.24 - one must have regard to the nature of those trials. Thus in Cave-Brown-Cave's Application [1958] RPC 429 the Patents Appeal Tribunal noted a distinction between matters associated with workings useful to the commercial exploitation of an invention and workings for reasonable trial purposes. Further, as discussed in Perard Engineering Ltd. (Hubbard's) Application (supra):

A trial may well be necessary before a specification can be drafted.  I think the subsection is designed to protect a potential applicant who wants to carry out a trial in order to enable him to determine exactly what form his application should take if he is forced by particular circumstances to carry out a trial in public.

It is then noteworthy that the provisional specification (filed two days after the use on July 8) states:

Preliminary trials were conducted in which the improved base cutter assembly of the present invention was mounted on one side of a sugar cane harvester, whilst a prior art base cutter assembly was mounted on the other side. In these trials the drive shaft of the improved base cutter assembly remained substantially free of trash accumulation whereas the drive shaft of the prior art base cutter assembly wrapped up with trash several times and required cleaning.

In my view the provisional specification outlines a reasonable trial of the invention to establish what form the application should take, and the evidence is inconsistent with that trial being the use which occurred on July 8.  This, together with:

• the evidence from Hodgett, McNamara and Young that they did not perceive the use of the machine on July 8 to have been any part of a trial, and

• the apparent failure by Austoft to communicate to anyone at the time that the use of the machine was part of a trial,

leads me to conclude that  the use of the machine on July 8 was not part of a trial to refine the technical details of the base cutter assembly. Rather it seems more likely that the trial (if that is what the use ought to be called) that occurred on July 8 was for the purpose of assessing the commercial acceptability of the new base cutter assembly. Such a trial is outside the scope of a reasonable trial within the context of reg 2.2, and consequently I cannot disregard it as a prior use of the invention.

Having regard to the nature of the invention, was it reasonably necessary for the working to be in public?

For a trial to be covered by reg 2.2(2)(d), the working that occurs must be one that is reasonably necessary to occur in public. However, I do not think this means that if it is necessary for the trial to occur before some members of the public, the applicant is entitled to the protection of s.24 for working of the invention before all members of the public. The scheme of the Patents Act involves a general requirement that the invention not be made public before the relevant priority date. Section 24 together with regulation 2.2(2)(d) provides a specific exception to this - but the exception must be read in the context of the general requirement. Thus I can readily accept that public working of a piece of agricultural equipment on a farm might be reasonably necessary, but I would not accept that it is reasonable for such working to (for example) be advertised for all to come and see.

For some types of invention, the applicant will likely have no control over who might see a reasonable public working of the invention. For other types of invention, the applicant may well have some control of the extent of the public who might see the working of the invention. In my view where an applicant has some control over the extent of the public who might see the working of the invention, the working in public could not be considered as reasonably necessary unless the applicant has taken reasonable steps to minimise the extent to which the working might be seen by the public.

In the present case, some evidence refers to the fact that a relevant machine was transported on public roads to the relevant farms. Assuming that the use on the farms was a reasonable trial, I consider it to have been reasonably necessary for the machine to be transported on public roads. That is, to the extent that the public saw the machine on public roads, that working of the invention was reasonably necessary, and the requirement of reg 2.2(2)(d)(ii) is met in respect of such use.

On the other hand, the working of the invention on the farm was before a number of people. I am satisfied that the employees of Austoft were not, in the circumstances, present as members of the public. There is a clear explanation for the presence of Hodgett and his son-in-law Fox - as the owner of the machine, and the driver - and a working before them would seem reasonably necessary. But I am unaware of the reason for the presence of Messrs Young, M & P McNamara, and Woods. There is nothing before me to show that the working of the invention before these members of the public was reasonably necessary, nor (given that the working was on a farm) that the applicant took reasonable steps to attempt to preclude those persons from seeing the trial, and viewing the machine and its components.

Thus, irrespective of whether or not the working was a reasonable trial, I do not consider that it was reasonably necessary for the working to have been before the public as present on that day. Accordingly, I cannot disregard this prior use of the invention.

Conclusion

The prior use of the invention that occurred on July 8 cannot be disregarded under the provisions of Reg 2.2(2)(d).

However, the evidence of exactly what was used on 8 July is far from satisfactory; but given the implicit admission that the use involved some form of the present invention, the balance of the evidence would suggest that the use was of a form of the invention corresponding to Fig 3. However, before making that conclusion I think it is appropriate in all the circumstances to provide both parties an opportunity to provide me with definitive evidence (such as engineering drawings, verifiable photographs) of what was in fact incorporated on the machine for the 8 July use.

Accordingly I allow both parties 1 month from the date of this decision to serve and file definitive evidence establishing the form of the invention present on the machine on July 8. Thereafter I will make my decision on anticipation by this prior use, after further hearing the parties on that extra evidence (if they so desire).

Costs

In actions before the Commissioner, costs normally follow the event. As I have mentioned several times in this decision, I have had difficulties with the opponent’s evidence. I do not think they should get their costs in respect of that evidence. Accordingly I award costs, other than costs in respect of evidence, against the applicant Austoft Industries Ltd.

The opponent provided a security against costs. Having regard to my findings I consider I should not make a decision to release the security until I have made my decision on anticipation by the prior use on July 8.

D Herald
Deputy Commissioner of Patents

Patent attorneys for the applicant    :  F B Rice & Co, Sydney

Patent attorneys for the opponent   :  Spruson & Ferguson, Sydney