Barry Francis Homan v Grovehill Pty Ltd Trading as GESSNER BROTHERS

[1993] APO 57

official notice

decision of a delegate of the commissioner of patents

Application        :   No. 614979 in the name of BARRY FRANCIS HOMAN

Title             :   Improved Blade Plough

Action:   Opposition under section 59 (Patents Act 1952) by GROVEHILL PTY LTD trading as GESSNER BROTHERS

Decision:   Issued            .  Opponent found not to have established locus standi.  Opposition to continue as a bar-to-sealing action.  Application to proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 614979 by BARRY FRANCIS HOMAN, and opposition thereto by GROVEHILL PTY LTD trading as GESSNER BROTHERS.

background

BARRY FRANCIS HOMAN lodged patent application 614979 on 28 July 1988 claiming at least partial priority from provisional applications PI 3427, PI 3428 and PI 4521 lodged on 30 July 1987, 30 July 1987 and 23 September 1987 respectively.

Acceptance of the application was advertised on 19 September 1991.  GROVEHILL PTY LTD filed a notice of opposition on 19 December 1991 and a statement of grounds and particulars was served on 19 January 1992.  Evidence in support was served on 15 April 1992; evidence in answer on 30 November 1992; and evidence in reply on 28 April 1993.

The opposition was heard in Brisbane on 6 September 1993.  The applicant was represented by Mr. C Anese of Cullen & Co., Brisbane while the opponent filed written submissions through its attorneys Grant Adams & Co, Brisbane.

As the application was lodged prior to but advertised accepted after commencement of the Patents Act 1990, the opposition is proceeding under Part V of the Patents Act 1952 with the procedures of the opposition governed by Chapter 5 of the Patent Regulations 1991.

the specification

The specification in suit relates to an improved blade plough with a variable operating width. The principle object of the invention is stated (on pages 2 and 3 of the specification) to be the provision of a blade plough having an operating width which can be varied relatively easily.  This is so that the efficiency of the plough can be maximised for particular operating conditions, for example soil resistance and the power of the tractive vehicle.

There are 21 claims, of which claims 1, 6, 11 and 18 are independent.  These claims read as follows:

1.  A blade plough comprising a generally horizontal blade supported between its ends, and a pair of blade extension members each of which is detachably connected to a respective end of the blade for extending the operating width of the plough, wherein the blade comprises a mouldboard member and the blade extension members are connected to respective free ends of the mouldboard member, further comprising at least one cutting edge member connected across a leading portion of the mouldboard member and at least one of the blade extension members.

6.  A blade plough comprising a wheeled frame, at least one leg depending downwardly therefrom, and a generally horizontal blade connected between its ends to the bottom of the leg(s), the blade plough further comprising a pair of blade extension members each detachably connected to a respective end of the blade for extending the cutting width of the blade plough, wherein the blade comprises a mouldboard member and the blade extension members are connected to respective free ends of the mouldboard member, further comprising at least one cutting edge member connected across a leading portion of the mouldboard member and at least one of the blade extension members.

11.  A blade plough comprising a generally horizontal blade supported between its ends, characterised in that the blade plough further comprises a pair of blade extension members each of which is detachably connected to a respective end of the blade for extending the operating width of the plough.

18.  A blade plough comprising a wheeled frame, at least one leg depending downwardly therefrom, and a generally horizontal blade connected between its ends to the bottom of the leg(s), the blade plough further comprising a pair of blade extension members each being detachably connected to a respective end of the blade for extending the cutting width of the blade plough.

STATEMENT OF GROUNDS AND PARTICULARS

The grounds and particulars as proposed to be amended by the statement filed on 14 April 1992 is reproduced below.  The applicant in a letter dated 13 May 1993 sought to oppose this amendment, however after some discussion at the hearing Mr Anese indicated the applicant would not pursue its objection.

"We, GROVEHILL PTY LTD trading as GESSNER BROTHERS, of Boundary Street, MS 144, Toowoomba, Queensland, 4350, Australia, provide the following information in support of the notice of opposition in relation to application No 614979 (20104/88) in the name of BARRY FRANCIS HOMAN.
The grounds and particulars of our opposition are as follows:

(i)    Section 59 (1) (e), (f),(g)

(a) The alleged invention is not novel and does not involve an inventive step in light of the blade plough, with detachable extensions on the plough blade, which was publicly demonstrated on the 25th March 1986 on "Belmore" Station, via Wentworth N.S.W. Australia, in the presence of the Station owner, Mr Brenton Martin and approximately 30 other invited guests. The blade plough was demonstrated by Mr Max Burr of West Ag Services, Renmark. The blade plough was towed by a Caterpillar D4 tractor supplied, and driven by Mr Martin who will declare that the blade had provision for extensions to extend the blade width from 10 feet to 12 feet, that the extensions were unbolted and the blade was cut down to an 8 foot width.

(b) That the alleged invention as claimed is not novel and does not involve an inventive step in light of blade ploughs made, offered for sale, and sold, prior to the priority date of the opposed application, by S.G & J.A. Kranz, of Port Lincoln, South Australia, where extensions were welded to, and cut off, the ploughblades.

(c) That as the application is not entitled to claim a priority date earlier than the filing of the complete specification i.e. the 28th July, 1988, the invention is not novel and does not involve an inventive step over blade ploughs made, offered for sale, and sold by the Patent Applicant, and his company Homan Industries Pty Ltd, incorporating the alleged invention before the priority date of 28th July, 1988.

(d) The alleged invention is not novel and does not incorporate an inventive step over blade ploughs made and sold earlier than the priority date by the said S.G. & J.A. Kranz on which interchangeable blades of different cutting widths were supplied.

(ii)   Section 59 (1) (i)

(a) That the claims are not fairly based on the complete specification as filed as in the latter the blade extension members were not an essential feature of the invention.

(b) That at least claim 1 is not fairly based on the description as it includes, inter alia, blade attachment shapes which do not continue the main profile of the blade but no disclosure is provided of such alternative shapes.

(c) That at least claims 6 and 18 are not fairly based on the description as the claims define "at least one leg depending downwards" from the wheeled frame but the only disclosure is of a single leg and there is no disclosure as to how the blade is connected to more than one leg.

(d) The claims are not clear as it cannot be determined if the feature that the blade comprises "a mouldboard member" is essential. In claims 1 and 6 this feature is essential but it is not included in claims 11 and 18."

evidence

The evidence in support of the opposition consists primarily of a declaration by Brenton Martin (Martin) together with a declaration by James Grant Adams, the patent attorney for the opponent.  The Martin declaration relates particularly to the alleged public demonstration referred to in para (i)(a) of the statement of particulars.

The evidence in answer includes a declaration by the applicant, Barry Francis Homan, which among other things presents an alternate interpretation of the event described by Martin including hearsay evidence attributed to a Mr Max Burr who was apparently present at the demonstration and was the manufacturer of the equipment demonstrated there.  Declarations are also made by Desmond Charles McNally and Lance Herbert Jones to the effect that they operate blade ploughs made by the applicant's company Homan Industries Pty Ltd and that they were not aware of any other company offering ploughs with bolt on extensions before September 1987.

The evidence in reply is a further declaration by James Grant Adams who provides hearsay evidence from a Mr Norman Scadding and a Mr Ken McNaughton in relation to the alleged public demonstration and a further public test said to have occurred "approximately 10 years ago". The applicant has objected to this evidence in reply on the grounds that it is further evidence and is not in reply to the issues raised in the evidence in answer.

Notably there appears to be nothing in the evidence to support the particulars referred to in paragraphs (i)(b), (i)(c) or (i)(d) of the statement of grounds and particulars.  I will give further consideration to the evidence as required in my decision.

Locus standi

At the hearing, Mr. Anese for the applicant stated that as a preliminary issue he wished to challenge the locus standi of the opponent. He pointed out that neither in the statement of grounds and particulars nor in subsequent evidence had the opponent indicated its locus.

In Mediline A.G.'s Patent [1973] RPC 91. Graham, J. sets out four principles in relation to the question of locus. They are:

"(1)   The circumstances of each case must be considered and it is wrong to lay down any hard and fast rule as to the precise nature or extent of the "interest" which justifies locus.

(2)    The onus of establishing locus lies on the opponent or applicant for revocation.

(3)    If the opponent or applicant for revocation can show he has some genuine interest which will be prejudiced and if the opposition or application to revoke is not frivolous, vexatious or blackmailing, then locus should be granted even if the patentee can throw some doubt on the exact extent of the opponent's interest.

(4)    It is in the public interest that genuine opposition to a revocation proceeding should be permitted, as normally an opponent or applicant for revocation assists the court or the Comptroller in ensuring that the scope of the patent attacked is properly examined and limited during the application and early stages of its life."

Having reviewed all the documents and submissions associated with the present application I can only agree with Mr Anese that the opponent has failed to provide any statement that demonstrates its interest as required under section 59 of the 1952 Act.  I also find that such an interest is not apparent indirectly from the evidence or any other document.

As indicated in the second principle from Mediline A.G.'s Patent the onus of establishing locus lies on the opponent.  While one may speculate on the reasons why no attempt has been made to establish the locus of the opponent it is difficult in the present circumstances to go beyond this principle.  Certainly the opponent has had sufficient opportunity to demonstrate its interest.

Accordingly I find that the opponent does not have locus standi and as a result, there is no longer an opposition.  However, while this finding ends the opposition, I am still obligated to consider the issues raised as a bar-to-sealing action - as in Indoor Cricket Arenas (Australia) Pty Ltd v Australian Indoor Cricket Federation (1987) AIPC 90-395 and Dricon Airconditioning v Waztech (1992) AIPC 90-894. The considerations in a bar-to-sealing action [which has its origin in Tate v Haskins (1935) 53 CLR 594], are explained in some detail in re Gould Inc (1989) AIPC 90-560.

BAR-TO-SEALING

Prior Publication and Novelty

It is apparent from the evidence that the only issue I need to consider in relation to prior publication and novelty is whether the demonstration of a blade plough at Belmore Station, via Wentworth, NSW on 25 March 1986 amounted to prior publication of the present claims.  In this regard the prior use referred to in Mr Adams' second declaration in relation Mr McNaughton is merely hearsay and provides insufficient detail to warrant further consideration.

Looking particularly at the Martin declaration I must agree with Mr Anese that there are certain ambiguities.  Most importantly it is not certain that the blade plough with extensions attached was in fact publicly demonstrated.  In paragraphs 6 and 7 Mr Martin indicates that a 10 foot blade "with the provision for extension pieces" was demonstrated but he fails to explicitly state that the expanded configuration referred to in paragraphs 8 and 9, ie blade with extensions attached, was actually displayed in the sales demonstration.  This leaves open the possibility, as suggested in Mr Homan's declaration, that the plough with extensions was used only in trials before the actual demonstration.  The evidence of a further witness such as Mr Scadding may have clarified this, however his recollections as reported in Mr Adams' second declaration are hearsay and must be given low probative value.  In this regard the contrary recollections of Mr Barr related in Mr Homan's declaration should also be given low probative value for the same reasons.

Nevertheless, in opposition cases it is normally expected that proof of prior user should be very clear (Seiller's Application [1970] RPC 103) and in bar-to-sealing actions even more so as the Commissioner must be satisfied that the patent, if granted, would be clearly invalid.  In the present circumstances I find that there is at least some doubt surrounding the evidence and consequently, as there is no clear and conclusive proof of prior use, a bar-to-sealing is not evident on these grounds.

Obviousness

In considering obviousness I am required to take into account what has been established as common general knowledge in the field of the invention in Australia at the priority date of the claims (Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Pty Ltd (1980) 144 CLR 253). As there is no direct evidence before me as to what at that date constituted common general knowledge I am not in a position to conclude that the claimed invention is obvious.

Section 40

Having reviewed the description and claims in light of the matters raised in part (ii) of the statement of particulars I have found nothing which suggest that the patent, if granted, would be clearly invalid.

CONCLUSION

I have found that the opponent has not established locus standi.  I have also found that there is nothing before me which amounts to a bar-to-sealing and consequently I direct the application proceed to sealing.

costs

Sub-section 210.(d) of the Patents Act 1990 provides that the Commissioner may award costs against a party to proceedings before him. There is no restriction in relation to the "interest" of that party.

The normal practice of the Commissioner is for costs to follow the event and therefore, having regard to all the circumstances, I award costs against the opponent, GROVEHILL PTY LTD.

PHILIP SPANN
Delegate of the Commissioner of Patents

Patent attorneys for the applicant :   G.R. Cullen & Co.,  Brisbane

Patent attorneys for the opponent :    Grant Adams & Co, Brisbane