Brabham Promotions Pty Ltd v David Shirley
[2001] APO 40
•17 August 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Petty Patent : No. 706808 in the name of BRABHAM PROMOTIONS PTY LTD
Title: MOULD PLATES FOR MAKING CHOCOLATE PRODUCTS
Action: Application for extension of term under section 69 of a petty patent; notice by DAVID SHIRLEY under section 28
Decision: Issued .
Abstract
The section 28 notice alleges that the patentee is not entitled to be granted the petty patent. The notice alleges that David Shirley is the inventor of the invention disclosed and claimed in the petty patent and that the named inventor Gary Brabham is not the inventor. The notice further states that David Shirley did not assign his rights in the invention to any other party.
The evidence shows that David Shirley submitted a business proposal to the patentee regarding the research and implementation of an alternative process for moulding chocolates. The evidence also shows that the patentee gave David Shirley the go ahead to seek regulatory approval for the alternative process and chemicals to be used in the manufacture of chocolate. However, the patentee did not proceed with the proposal. David Shirley did not divulge the details of the alternative process he had in mind and in fact took direct steps to shield details of the material to be used in his process.
It was undisputed that Mr Shirley disclosed that the process he had in mind was a photographic process in which the mould is etched rather than engraved. However, this did not have a material effect on the invention as described and claimed in the petty patent. The claimed invention involves a combination of steps that, on the available evidence, Mr Brabham arrived at through his own independent research.
On the available evidence, David Shirley has not proved that his contribution had a material effect on the final concept of the invention described and claimed in the petty patent.
Term of the petty patent extended.
There are no applicable costs to be awarded under schedule 8 of the Patent Regulations.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Petty Patent No. 706808 by Brabham Promotions Pty Ltd; application for extension of term of a petty patent; and section 28 notice by David Shirley
BACKGROUND
Brabham Promotions Pty Ltd are the patentee of petty patent 706808 (18443/99). Chocolate Images Pty Ltd originally filed the petty patent application on 25 February 1999, based on provisional patent PK7517 filed 4 December 1998. A patent was sealed on the application on 24 June 1999. The petty patent was subsequently assigned to Brabham Promotions Pty Ltd. Gary Brabham is the named inventor on the patent. The patentee filed a request for extension of the term of the patent on 5 January 2000.
Petty patent 706808 was in force immediately before the commencement day of the Patents Amendment (Innovation Patents) Act 2000. Therefore the saving and application provisions relating to petty patents set out in schedule 2 of that Act apply. Wherever there is a reference to the Patents Act 1990 ("the Act") in this decision, it is a reference to the "old law" as defined in schedule 2.
David Shirley filed a notice under section 28 of the Act that asserted that the petty patent is invalid on the ground that the patentee was not entitled to be granted the petty patent. The notice was filed on 24 May 2000, together with supporting evidence.
The patentee filed his evidence in answer on 19 September 2000.
The notifier filed further evidence on 2 January 2001. Following an invitation from a delegate of the Commissioner to the parties to provide comments on proposed directions relating to the further evidence, the notifier filed submissions regarding the relevance and timing of the evidence. The patentee did not file any comments or objections to the evidence. Subsequently, the further evidence was admitted under regulation 22.24. The patentee was allowed a period of one month to file any evidence and/or submissions in response to the further evidence, but did not file any response.
Both parties indicated to the Commissioner that they did not want to be heard on the matter but would instead rely on the material on file. The patentee advised that they would be relying on the material filed on 19 September 2000. The material filed on 19 September 2000 includes evidence in answer and submissions in answer to the section 28 notice. The notifier advised that he would be relying on the submissions filed 17 January 2001 and the evidence filed in relation to the section 28 notice. I note that the submissions filed on 17 January 2001 deal principally with the further evidence filed by the section 28 notifier.
SPECIFICATION
The specification is directed to producing chocolate products by moulding images thereon, particularly images of photographic quality. The prior art involved the use of engraving techniques to form the required design on the mould plates. However, this was labour intensive and costly. Also, the tolerance or sharpness of the moulds is not very high and engraving the mould is limited to producing a single tone logo design on the chocolate. The specification describes "a more efficient and effective method" involving the use of photopolymeric mould plates to produce the image. The claims are as follows:
A method of reproducing an image from a film on a chocolate product, the method including:
providing an image on a film of the he (sic) design to be reproduced, the image contrasting with the film background, one of the image and background being transparent and the other of the image and background being dark, and also providing a photopolymeric plate having a polymer which cures and hardens on exposure to UV radiation;
positioning the film between a UV source and the photopolymeric plate with the film substantially in alignment with the printing plate;
irradiating the film with UV radiation such that the radiation passes through the transparent areas of the film and irradiates the corresponding portion of the photopolymeric plate, and radiation is blocked by the dark areas on the film so that the corresponding portion of the photopolymeric plate is not irradiated;
washing the photopolymeric plate so as to remove soft uncured polymer from the printing plate so as to define a relief mould and then drying and post exposing the photopolymeric plate to provide a suitably hard relief mould surface;
using said photpolymeric plate as a first mould plate together with a second complementary mould plate in a mould assembly for moulding chocolate;
introducing flowable chocolate of the first colour into the mould cavity of the first mould plate and then wiping off excess chocolate;
placing the second mould plate over said first mould plate substantially in alignment with the first mould plate;
introducing flowable chocolate of a second colour into the mould cavity of the second mould plate such that it covers the exposed chocolate in the first mould plate; and
cooling the chocolate in respectively the first and second mould plates to (sic) as to permit the two colours of chocolate to solidify and harden and adhere to each other and then removing a chocolate product having a design in chocolate of the first colour thereon from the mould plates.A method according to claim 1, wherein the image on the film is dark and the background is transparent, and wherein said second mould plate is bendable or deformable, and wherein one of the chocolates is of a light colour and the other chocolate is of a dark colour, and wherein the plates are washed for a duration of 350 to 450 seconds during said washing step.
A method according to claim 1 or claim 2, wherein the positive film is a half tone film which produces a profile of varying depth in the photopolymeric plate, the depth at any given point on the plate corresponding to the tone or level of darkness on the corresponding point on the half-tone film.
SECTION 28 NOTICE AND EVIDENCE
The section 28 notice alleges that the patentee is not entitled to be granted the petty patent. The notice alleges that David Shirley is the inventor of the invention disclosed and claimed in the petty patent and that Gary Brabham is not the inventor. The notice further states that David Shirley did not assign his rights in the invention to any other party.
The evidence in support of the section 28 notice includes declarations by David Shirley; Christine Shirley; Allison Brabham; John Alexander Woods; and Maxwell Alan Edgar Mohr.
David Shirley states that he is a qualified lithographic printer and plate maker. In 1997, David and his wife Christine Shirley ran a company, Cardline Pty Ltd, which operated a promotional and graphic design office under the name of Cardline Graphic Design Studio.
Allison Brabham is the former wife of Gary Brabham and, until recently, was a 50% shareholder in Chocolate Images Pty Ltd. Ms Brabham states that her shareholding in Chocolate Images Pty Ltd has since been transferred and that the form of transfer of those shares is currently under dispute.
John Alexander Woods is the father of Allison Brabham and the former father-in-law of Gary Brabham.
Maxwell Alan Edgar Mohr is a former employee of Chocolate Makers (Gold Coast) Pty Ltd. He was employed on a consultancy basis as a Director of Marketing. The principal of Chocolate Makers (Gold Coast) Pty Ltd was Gary Brabham.
The evidence in answer comprises declarations by Gary Brabham; Ernst Roemuss; Robin Jeffrey Burke; and George Kenneth Hubbard.
Gary Brabham is the General Manager of Brabham Promotions Pty Ltd, the patentee of the petty patent at issue. He is also the Director of Chocolate Images Pty Ltd, which he says is in the business of making and selling chocolates having logos or pictures on them. He is also the Director of Elite Chocolates Pty Ltd, which was previously in the business of making and selling chocolates under licence from Chocolate Makers International Pty Ltd, but has ceased active trading. Gary Brabham is the named inventor of the petty patent.
Ernst Roemuss states that he is working for Chocolate Images Pty Ltd, and that the principal shareholders in Chocolate Images are Gary Brabham and Lady Betty Brabham. Mr Roemuss states that he has worked for Gary Brabham since August 1997, first for Elite Chocolates Pty Ltd until it ceased trading, then for Chocolate Images Pty Ltd.
Robin Jeffrey Burke is an artist who states that he commenced work with Gary Brabham in early 1998 to develop a new process to produce chocolates and more specifically a new system for producing relief moulds for chocolates.
George Kenneth Hubbard is a graphic artist who states that he spent some time in 1998 working with Gary Brabham.
The further evidence filed by the notifier comprises statutory declarations by Pieter Scheelings; Timothy Burchell; and David Shirley.
Pieter Scheelings holds a PhD in chemistry and is employed as a Senior Scientist at the Food Commodity Section of Queensland Health Scientific Services.
Timothy Burchell was a technical sales representative employed by Printing Technologies Pty Ltd. One of the products Printing Technologies Pty Ltd sold was photopolymer plates.
RELEVANT LAW
The section 28 notice asserted that the petty patent was invalid on the ground that the patentee is not entitled to be granted the petty patent. This ground arises from sub-section 28(1)(a) of the Act.
Section 15 of the Act sets out who may be granted a patent in the following terms:
Subject to this Act, a patent for an invention may only be granted to a person who:
(a) Is the inventor; or
(b) Would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) Derives title to the invention from the inventor or a person mentioned in paragraph (b); or
(d) Is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).
A patent may be granted to a person whether or not he or she is an Australian citizen.
The issue of entitlement has been dealt with in a number of Patent Office decisions, particularly those dealing with sections 32 and 36 of the Act. A summary of the facts and principles derived from these decisions is set out in Row Weeder v Nielsen 39 IPR 400. Section 15 was also considered by the AAT in Upham v Commissioner of Patents AAT No 13418 [1998] AATA 852 (3 November 1998). In that decision, Mr McMahon also gained guidance from the Patent Office decisions and stated:
"Section 15 sets out the categories of persons who may be granted a patent. It makes a distinction between the inventor in paragraph (a) and a person who would be entitled to have the patent assigned under paragraph (b). Some of the relevant decisions deal with the test relevant to paragraph (a), while others deal with the question of entitlement. Although obviously there is a distinction to be made between the two concepts, the observations made in relation to invention or entitlement can be mutually illuminating."
As stated in Row Weeder, the common theme emerging from Patent Office decisions on entitlement is that a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the final concept of the invention. Further, one of two inventors each responsible for a part of an invention cannot claim a patent over the total invention (Stack v Davies Shephard [2001] FCA 501).
The legal burden of proof in matters such as this rests with the notifier. In the present case that is Mr Shirley. However, the evidentiary burden may shift according to the state of the evidence from time to time. This will depend on the circumstances of the case and the likelihood of the facts being within the knowledge of, or more readily available to, one side or the other. (Dunlop Holdings Ltd’s Application [1979] RPC 523).
Further, the Commissioner is not bound by the rules of evidence but is entitled to act on any material that is “logically probative” of the issues under decision. The standard of proof required is the normal standard of proof required in civil litigation, that is the balance of probability (Dunlop Holdings Ltd).
DECISION
Gary Brabham is the Director of Elite Chocolates Pty Ltd (Elite Chocolates). Elite Chocolates made and sold logo chocolates under a licence agreement with Chocolate Makers International Pty Ltd. The licence agreement covered Australian patent 583969, which involves computer-aided engraving of the chocolate moulds. Mr Brabham states that this business was unsatisfactory and that he was searching for an alternative process that would not be covered by the licence agreement.
Christine Shirley visited the factory of Elite Chocolates in February 1997. The visit was a "cold call" to generate graphic design and advertising work for Cardline Graphic Design Studio (Cardline). Ms Shirley was introduced to Max Mohr, whose responsibilities included handling promotions for Brabham's company. As a result of this visit, it was agreed that Cardline would work on a submission containing recommendations for promoting the company and a number of follow-up meetings were held to this end.
David Shirley attended the factory on 19 March 1997 and met with Max Mohr and Gary Brabham. During this visit, Mr Shirley was given a detailed tour of the manufacturing facilities, including the drill engraving process used to make chocolate moulds. According to Mr Shirley, this process was slow and noisy, and generated considerable dust. Mr Shirley states that he suggested to Mr Brabham that he may have an idea for an alternative mould production method that could be an improvement over the process being used. Mr Shirley states in his first declaration:
"As I thought about the process, it suddenly occurred to me that this might be an opportunity for applying a photopolymer process although I did not say that at the time. Rather, I said that I had an idea for a more efficient process."
Mr Mohr states that Mr Shirley had said that he "could possibly come up with another process using film technology" and that "it would take a considerable time to develop". According to several of the declarants, Mr Brabham was quite excited at the prospect of a new process. Mr Shirley states that Mr Brabham asked him to look into it further. Mr Brabham says in his declaration that he does not deny this, as he was looking to explore alternative technologies.
Mr Shirley says in his first declaration that although he believed the process he had in mind would do the job, he had concerns about food safety and whether the material to be used would stand up to the physical requirements of the job.
On 2 April 1997, Christine and David Shirley attended a meeting with Mr Brabham. Mr Brabham told David and Christine Shirley that the description under his current licence was worded as "computer aided engraving" and asked whether the new method could be considered similar. Mr Shirley told Mr Brabham that the new process was not computer aided engraving, as it was a form of photographic process. In the process, the mould is etched rather than engraved.
Mr Mohr apparently contacted Mr Shirley on 11 April 1997. They discussed Mr Shirley's realisation that the method was originally designed for the printing industry and had not been used for food preparation before. There is no indication whether or not Mr Mohr passed any of this on to Mr Brabham. I note that Mr Brabham has a diary entry stating that he fired Mr Mohr on 3 April 1997. Mr Mohr states that he left some time in May 1997. In any case, there is no indication of the disclosure of any technical details of the method during the conversation between Mr Shirley and Mr Mohr, whenever that conversation may have taken place.
Another meeting between Mr Shirley and Mr Brabham was held on 14 April 1997. Mr Shirley states that they discussed research equipment, feasibility, sourcing materials and related issues of the new technology. Mr Shirley was asked to prepare an estimate for the services discussed. Mr Brabham agrees that this meeting occurred, but denies that there was any disclosure of the technical content of the technology other than it was a photographic process. I note that Mr Shirley does not indicate in his declaration that any specific technical information was disclosed, but instead refers rather vaguely to "the alternative method of production".
Mr Shirley submitted a proposal to Mr Brabham on 10 May 1997. The proposal includes 2 phases. The first phase refers to research consisting of testing of alternative systems and in the area of requirements for meeting food health and safety standards. Phase 2 refers to sourcing and installation of equipment if phase 1 establishes that the objectives are viable. The proposal does not include any detail on the "alternative systems".
Mr Shirley then received a letter from Jim Ferguson, who was the replacement for Max Mohr. The letter gives Mr Shirley "the go ahead", providing the first step in his research is regulatory approval for the process and the chemicals to be used in the manufacture of chocolate. The letter states that without this approval, it would be pointless to proceed. Mr Shirley responds by letter agreeing with the need to satisfy governing bodies. He also states that his investigations "have taken me to explore the method I wish to utilise in greater depth".
Around September and October 1997, Mr Shirley received reports from Dr Scheelings of the Queensland Health Laboratory on an analysis of Nyloprint polymer for use in contact with foods. (According to Timothy Burchell, Nyloprint plates are photopolymer plates). Mr Shirley also received a quotation for plate room equipment. The quotation includes quotes for equipment including a film recorder, water washable photopolymer platemakers and film processors. It appears that none of these reports were passed on to Mr Brabham or anyone associated with his companies at this time.
It appears from the evidence that Mr Brabham had believed that he would own the intellectual property to any process that he paid Mr Shirley to develop. However, Mr Roemuss wasn't satisfied that the written proposal from David Shirley vested ownership of any technology. Mr Roemuss therefore instituted preparation of a deed of assignment to clarify ownership of any new technology before any money was spent.
Some time in October 1997, Ernst Roemuss gave David Shirley a deed of assignment to sign. The deed refers to "an invention relating to chocolate making machines and apparatus". Mr Roemuss states that they "used this generic and rather meaningless title because at that stage we had no idea what the technology entailed." Mr Roemuss states that at the two meetings he had with Mr Shirley regarding the deed, Mr Shirley did not communicate any details of the proposed new technology to him. Mr Shirley refused to sign the deed of assignment and it appears to be at this point that negotiations between the parties broke down.
There was then some dispute over the refusal of Mr Shirley to divulge the details of the report from the food technologist. Apparently Mr Roemuss was “incensed” that they had paid $500 to David Shirley to pay for the report yet they were denied access to the report. Mr Shirley states that he was not prepared to divulge the entire contents of the report. Instead, he prepared an extract of the findings for Mr Brabham. According to Mr Shirley, "The exact description of the material being tested was deliberately omitted in the absence of a signed agreement". I note that this extract refers only to a “plastic mould” and the removal of “contaminant compounds”, whereas the original report referred to “the NYLOPRINT plastic mould” and identified specific contaminants, particularly methacrylamides. Mr Shirley then had no further contact with anyone from Chocolate Makers or Elite Chocolate.
Mr Brabham states in evidence that he had conducted many enquiries for alternative chocolate making processes. During a visit to Queensland Manufacturing Institute (QMI) in the last quarter of 1997, he met Mike Naylon. In subsequent visits to QMI he discussed different technologies with Mike Naylon which could be used to produce logo chocolates. They discussed several possible materials for moulds. Mr Naylon suggested silicone moulding and gave Mr Brabham a silicone mould having the QMI logo. However, Mr Brabham says that he did not seriously consider silicone moulds for “a variety of reasons”. Mr Roemuss confirms that Mr Brabham was researching and exploring other ways of making moulds.
Mike Naylon introduced Mr Brabham to Rob Burke, who had moulded plastic articles such as belt buckles using relief moulds. Rob Burke showed Mr Brabham his belt buckle technology, which apparently employed photopolymeric plates. Mr Brabham says he suggested to Mr Burke that he wanted to use the photopolymeric plates for making chocolate moulds. Mr Burke told Mr Brabham that photopolymeric plates had been around for a number of years and used in a number of applications (such as printing and plastic and pewter moulds), but there was not much published literature on them. According to Mr Brabham, this was the first time he became aware of the existence of photopolymeric plates and their possible use to produce chocolate moulds.
Mr Brabham states that he did some crude experiments and felt that the technology was promising and worthy of further experimentation. Shortly thereafter, Mr Brabham says he made the commitment to embark on a process of research and development to develop a process that used these photopolymeric plates to produce moulds for moulding chocolates. He states that he realised there was an enormous amount of work to be done, and engaged Rob Burke and George Hubbard on a consultancy basis to assist in the R & D. The declarants for the patentee declare that over a period of several months, they did extensive bench scale test work on making moulds from the photopolymeric plates and on integrating the use of these plates in a chocolate manufacturing process.
Exhibited with Brabham's declaration are some documents that Mr Brabham states are internal reports generated over the period of development. (The documents are undated apart from two document dated 9/11/97 and 19/11/97, respectively.) These documents further detail some of the development work carried out by Mr Brabham and his employees.
It is clear from the available evidence that Mr Brabham expended considerable time and effort in developing the process to the point of being a commercially viable process. This is supported by the declarations of Robin Burke and George Hubbard, both of who worked on the development of the process with Gary Brabham after signing consultancy agreements dated 27 October 1997.
According to the patentee, all David Shirley disclosed was that he had in mind a technology that used a photographic process of images on film e.g. photographic film. The patentee asserts that Mr Shirley never disclosed the use of photopolymeric printing plates, far less a detailed process of actually using these plates to make chocolate moulds. The patentee says that David Shirley put a business proposal to Gary Brabham, which involved Mr Shirley developing a photographic process. The patentee acknowledges that they were interested in entering into an agreement with David Shirley at the time, but they insisted that the process be approved for use with food products prior to entering into an agreement. However, the proposal was never proceeded with.
It appears from Mr Shirley's first declaration that he was very guarded throughout his dealings with Mr Brabham against disclosing any significant details about the process he had in mind. During his initial visit to the factory, he states it occurred to him that a photopolymer process might be applied, but he told Mr Brabham only that he had an idea for a more efficient process. None of the proposals or letters between Mr Shirley and Mr Brabham or his staff disclose any details of the process Mr Shirley had in mind. As late as November 1997, in his last contact with anyone from Mr Brabham's companies, Mr Shirley deliberately omitted details of the material being tested. In fact, the only reference in Mr Shirley's first declaration of the disclosure of any technical information is that he told Mr Brabham that the new process was not computer aided engraving as it was a form of photographic process, in which the mould is etched rather than engraved.
Mr Shirley states in conclusion to his first declaration that the "method as described in claims 1, 2 and 3 is exactly the method I invented and disclosed to Gary Brabham". He further states "In addition, the description on pages 1 to 10 also embodies my invention with no significant differences or additions". However, this does not accord with his detailed discussion of events, in which it appears that Mr Shirley consistently withheld any significant details of the process he had in mind.
In his further evidence, Mr Shirley states that it was necessary to provide some details of the process in order for Mr Brabham to understand how it worked and to ensure him that the process was not one that could be described as a "computer aided engraving". Mr Shirley states (inconsistently to his assertions in his first declaration that he had disclosed "exactly the method" of claims 1, 2 and 3) "I did not disclose all the details of the process or the details of the suppliers I had researched". Mr Shirley states that he recalls disclosing the following details: the process was photographic; the mould image is etched, not engraved; ultraviolet light was used for exposing the light sensitive material; the process was adapted from established methodology used in the printing industry; the process required a film master to facilitate imaging onto the plate; and the moulding material was washed out in water and no chemicals were used in the processing of moulds. In his view, once the basic idea of applying the existing technology to chocolate moulding was conceived, the additional processes related mainly to establishing the degree of safety of the process to food and working out the most effective application of known processes to produce the chocolate imaging.
The parties dispute whether or not Mr Shirley disclosed the use of photopolymeric plates. The notifier relies on the evidence of Dr Scheelings in this regard. Dr Scheelings produced a number of reports for Mr Shirley relating to an analysis of Nyloprint polymer in contact with foods. These reports are dated between August and October 1997. These are the reports of which Mr Shirley provided an extract to Mr Brabham. Dr Scheelings states that he subsequently did a further report for Mr Shirley, which he believes was at least a year later. None of the evidence elaborates on this further report. Dr Scheelings also states that Mr Roemuss contacted him sometime after he commenced testing for Mr Shirley seeking to obtain a copy of the reports. However, Dr Scheelings did not give Mr Roemuss a copy of the reports as the reports had been produced for Cardline as the paying client.
Dr Scheelings states that Mr Roemuss indicated in discussions that he wanted the laboratory to do some work on similar moulds to those of Mr Shirley. It is not clear from Dr Scheelings’ declaration when Mr Roemuss requested copies of the reports done for Mr Shirley. However, the request from Mr Roemuss for some further analytical work appears to be about a year after the relevant reports were done for Mr Shirley. The letter from Dr Scheelings to Mr Roemuss exhibited in evidence is dated 16 September 1998, approximately a year after the relevant testing for Mr Shirley. This letter refers to a telephone request from Mr Roemuss to test chocolate samples moulded by “the NYLOPRINT process”. The letter also states that because of the previous work the laboratory has undertaken with Cardline, it would be inappropriate for the laboratory to undertake the work.
The notifier points to this letter as being independent evidence that is in direct conflict with the assertions of the patentee that Mr Shirley did not disclose the use of photopolymer plates. However, all that Dr Scheelings states in evidence is that Mr Roemuss “indicated that he wanted us to do some work on the same or similar moulds to those of Mr Shirley and wanted to build on the work we had already done”. As I have noted above, Mr Shirley deliberately omitted all reference to Nyloprint and the specific compounds tested for in the extract he prepared for Mr Brabham, presumably in the belief he had not previously disclosed this information. Mr Roemuss knew from the extract provided by Mr Shirley that Dr Scheelings had carried out some work on “plastic” moulds. Dr Scheelings does not elaborate in his evidence whether the reference to “the NYLOPRINT process” in his letter is the result of a direct reference from Mr Roemuss to Nyloprint or was merely the name Dr Scheelings had come to associate with the work he had done for Mr Shirley. In my view, this evidence is inconclusive.
The notifier also argues that Dr Scheelings regards the process developed by Mr Shirley and about which Mr Roemuss is enquiring to be a single process, due to the reference to “the Nyloprint process” in Dr Scheelings letter. I do not see that this follows. Dr Scheelings was contracted to analyse certain materials for Mr Shirley. Dr Scheelings carried out some literature reviews and did some solvent extraction work on the Nyloprint polymer. There is no evidence from Dr Scheelings regarding any details of the process other than to the mould plate material that he tested for Mr Shirley.
I note here that there is also some evidence relating to a plastic mould plate that Mr Shirley showed Mr Brabham. Max Mohr states that he saw David Shirley arrive at a meeting with what looked like a mould plate. Both Mr Brabham and Mr Roemuss confirm that Mr Shirley had produced a plastic mould that had clearly been etched rather than engraved. However, they assert that the mould did not work as the raised design of light chocolate was severely damaged when the chocolate was removed from the mould. Curiously, Mr Shirley makes no mention of the mould plate in his evidence in support. Presumably this plate is the Nyloprint sample plate that Mr Burchell says in further evidence he lent Mr Shirley for a limited time. In further evidence, Mr Shirley disputes the comments regarding the suitability of the mould and says Mr Brabham was delighted with the results. Importantly, there is no evidence that Mr Shirley disclosed any information about the mould, or that Mr Brabham recognised the mould as anything other than a plastic mould that had somehow been etched.
It appears to be undisputed that Mr Shirley disclosed that the process he had in mind was a photographic process in which the mould is etched rather than engraved. The notifier contests that, once the idea of applying existing technology to chocolate moulding was conceived, all that remains is to establish the degree of safety of the process and work out the most effective application of the known processes. I note here that United States Patent 4,668,521, (which was published in 1987 and cited during examination of the petty patent), describes a process for forming a photographic image on chocolate including steps that are "similar to those used in the printing art in that an etched halftone image" is produced on a photopolymeric plate by the use of ultraviolet light. Although there is no suggestion that any of the parties were aware of the US patent, it discloses each of the details that Mr Shirley asserts that he disclosed to Mr Brabham. However, the process described in the US patent is otherwise quite different from the process described and claimed in the petty patent. Therefore, it does not necessarily follow that once the basic idea of adapting existing technology to chocolate making is conceived, all that remains is to work out the most effective application. In any case, none of this is relevant to the question of inventorship. The rights in an invention do not flow from an assessment of the inventiveness of respective contributions, but rather from an objective assessment of the contribution simpliciter to the invention (Commonwealth Scientific and Industrial Research Organisation et al 31 IPR 67).
It is possible that Mr Brabham actively pursued researching the use of photopolymer plates for moulding chocolate as a result of the suggestions of a photographic process by Mr Shirley. However, there is insufficient evidence to come to this finding. Mr Brabham states that he continued to seek alternative processes and only decided to research the use of photopolymer plates after meeting with Mr Burke. Other declarants for the patentee corroborate that Mr Brabham was researching and investigating alternative processes. The notifier acknowledges that he deliberately withheld the details of his proposed process from Mr Brabham, including details of the materials he had tested. Even in the evidence for this matter, the notifier has not outlined the precise method he had in mind or claims to have developed. Mr Shirley has not proved that any contribution he made had a material effect on the final concept of the invention. Therefore, Mr Shirley has failed to establish to the requisite standard of proof that he is an inventor of the process described and claimed in petty patent 706808.
CONCLUSION
The evidence shows that David Shirley submitted a business proposal to the patentee regarding the research and implementation of an alternative process for moulding chocolates. The evidence also shows that the patentee gave David Shirley the go ahead to seek regulatory approval for the process and chemicals to be used in the manufacture of chocolate. However, the patentee did not proceed with the proposal. David Shirley did not divulge the details of the alternative process he had in mind and in fact took direct steps to shield details of the material to be used in his process.
It was undisputed that Mr Shirley disclosed that the process he had in mind was a photographic process in which the mould is etched rather than engraved. However, this did not have a material effect on the invention as described and claimed in the petty patent. The claimed invention involves a combination of steps that, on the available evidence, Mr Brabham arrived at through his own independent research.
On the available evidence, David Shirley has not proved that any contribution he made had a material effect on the final concept of the invention as described and claimed in the petty patent. Therefore, I extend the term of the petty patent.
COSTS
The patentee submitted that the section 28 notice should be dismissed with costs. The power for the Commissioner to award costs is provided by section 210(d) of the Act. The costs that may be awarded are set out in schedule 8 of the Patent Regulations. The issue of costs in relation to a notice filed under section 28 was considered in Ronald Howard Thomas & Helmut Stohr v Eric Russell Chappell & Jeffrey John Yates [1993] APO 6 (28 January 1993). In that decision, the delegate of the Commissioner held that a notice under section 28 did not equate to a notice of opposition. The delegate also held that material accompanying a section 28 notice did not equate to evidence in support, and material filed in response to an invitation by the Commissioner did not equate to evidence in answer. Schedule 8 does not set out costs allowable for receiving and perusing further evidence. In any case, the patentee has not given any indication that it has even considered the further evidence. Therefore I do not consider it appropriate to award any costs relating to the further evidence. It follows that as there was no hearing on the present matter, there are no applicable costs to be awarded under schedule 8. Therefore, I make no award of costs.
BRENDAN BOURKE
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Pizzeys, Brisbane
Patent attorneys for the opponent : Fisher Adams Kelly, Brisbane
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