C T O'Neill v C W StGeorge
[1994] APO 65
•4 November 1994
official notice
decision of a DEPUTY commissioner of patents
Application : No. 59510/90 in the name of C.T. O'Neill and C.W. StGeorge
Title: Security Grill
Action: Request under s.32 by C.W. StGeorge for determination of a dispute between applicants.
Decision: Issued .
Abstract: Discrepancies in the documentation inhibited the exercise of discretionary powers.
The following directions were made:
1.The application is to proceed in the names of Mr StGeorge and Mr O'Neill as joint applicants and joint nominated persons.
2.Mr StGeorge and Mr O'Neill have the responsibility, jointly and individually, to pay any fees required to maintain the application in force.
3.The Commissioner will send any examination reports to both applicants at their last known address for service.
4.In addition to any other requirements set out in the Patents Act, any correspondence to the Commissioner in relation to:
-examination reports;
-amending the patent request, complete specification, or any other filed document, under the provisions of s.104 of the Patents Act; or
-recording an assignment under s.113 of the Patents Act
must be personally signed by both Mr StGeorge and Mr O'Neill, and indicate the agreement between the parties as to the substance of the correspondence.
patents act 1990
decision of a DEPUTY commissioner of patents
Re:Patent Application No. 59510/90 by C.T. O'Neill and C.W. StGeorge, and a Request under s.32 by C.W. StGeorge for determination of a dispute between applicants.
background
Application 59510/90 was filed under the Patent Cooperation Treaty as PCT/AU90/00298 in the names of C.T. O'Neill and C.W. StGeorge (formerly C.W. Giorgio); the application claimed priority from provisional application PJ5210 by the same applicants.
The due date for the application to enter the national phase (following preliminary examination) was 12 Feb. 1992, but this did not occur by that date. On 4 June 1992, the requirements for entering the national phase, and a request for an extension of time under s.223, were filed by O'Neill. The declaration in support of the s.223 request stated inter alia, that
"my co-patentee ... and myself have no form of communication between us, due to irreconcilable differences."
The request was advertised, and following no opposition being filed, was granted on 2 Sept. 1992.
On 15 April 1993, the file records a telephone call from StGeorge indicating that he did not agree to the reinstatement of the application. The following day a further telephone call ascertained that StGeorge wanted the application to proceed, but not with O'Neill as co-applicant.
On 15 Sept. 1993 StGeorge filed a request under s.32, seeking a direction that the patent application proceed in his name only. The request was advertised (reg 3.6), and both StGeorge and O'Neill requested to be heard. After the completion of evidence, the matter was heard in Sydney on 24 Oct. 1994. Both parties represented themselves at the hearing.
The Request
At the commencement of the hearing, I sought to establish what each party sought to obtain in the determination.
StGeorge reiterated that he sought to have O'Neill removed as an co-applicant for the patent.
O'Neill stated that he wished to be recorded as an inventor, as the sole inventor, and for the application to proceed in his name only. I note that O'Neill had not previously stated this explicitly, but it is reasonably apparent from the material he filed; it is appropriate that here I deal with his request.
the Evidence
Both parties put copies of many documents as evidence. However almost all of the evidence was uncertified copies of documents. At the hearing I asked both StGeorge and O'Neill whether they accepted that the material before me were true and correct copies of the documents they purport to be; they both agreed - with the exception of some documents submitted by StGeorge to the extent that they had some matters obliterated.
I do not propose to go through the evidence in any detail - apart from some limited references in dealing with the requests of each party. Suffice it to say that the relationship between StGeorge and O'Neill has been somewhat acrimonious, with allegations of unauthorised dealings, failure to pay moneys or meet obligations, bankruptcy, fraud, etc... . And although there have apparently been some periodic reconciliations, the documents put before me do not appear to be in any manner conciliatory in respect of their differences.
Relevant Precedent
Section 32 of the Act provides:
If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.
which clearly gives the Commissioner wide latitude in the determination that may be made. There are relatively few reported decisions concerning the determination by the Commissioner of disputes between co-applicants or co-patentees; those of which I am aware are:
Moriarty v Collins 26 IPR 21
Stephenson v Donner 24 IPR 108, (1992) AIPC 90-888
Milward-Bason and Burgess (1988) AIPC 90-475
Magee v. Farrell (1985) AIPC 90-296
Application by Willems, Fritz, et al 21 IPR 569
Tribe v Ranken 1 IPR 561Carroll v Harper 1 IPR 537
From these cases I would make the following general observations:
Where one of the applicants frustrates the processing of the application, the Commissioner may direct the application proceed in the name of the other applicant alone; and
otherwise, adding or deleting a person as co-applicant requires clear evidence in justification - such as clear evidence of a failure to comply with a contractual obligation lying behind an assignment.
but would add that these cases do not appear to circumscribe the full range of determinations that the Commissioner may make under s.32. I would also note that the Commissioner only has power to determine matters in relation to the administration of the Patents Act; he has no power or authority to determine issues that fall under civil, criminal, or other jurisdictions.
The s.223 request
As will become evident later in this decision, the request under s.223 for an extension of time to enter the national phase is relevant background to the exercise of my discretion in the present matter.
The application was due to enter the national phase on 12 Feb. 1992, but did not do so - and consequently lapsed. On 4 June 1992, O'Neill took the necessary action to enter the national phase, including a request for an extension of time under s.223. Accompanying that request was a statutory declaration by O'Neill executed on 4 June 1990, which states:
"... the following circumstances delayed the correct renewal of the PCT application and renewal in Australia.
1. That my co patentee Charles Georgio/Charles StGeorge and myself have no form of communication between us, due to irreconcilable differences.
2. That the patent attorneys R. Maxwell & Associates Paramatta, who were working for both parties did not pass information to me at my correct address. My correct address was 119 Prahan Ave Davidson. Maxwells had this as 19 Prahan Ave Davidson. Consequently there was no mail forwarded to me.
3. I have changed address from 1, Jarrah Pl Belrose to 119 Prahan Ave Davidson in Feb 1991 and from this address in Jan 1992 to my present address in 3 Yanco Cl Frenchs Forest.
4. I became aware of a problem 2 weeks ago when I rec'd a letter from the European Patents Office, correctly forwarded on, stating that the European Patent Applications were late. This letter went from 1 Jarrah Pl Belrose, to 119 Prahan Ave, to my present address.
I immediately contacted Maxwells and another patent attorney to check my position and was told that I must enter a s.223 request for extension and then renew the application.
I have not rec'd any communication stating that there was a problem with the patent application or that it must be renewed. And I have no desire to withdraw the application.
I am not aware if my co-patentee has withdrawn the application. If such action has been taken it was without my permission and knowledge."
On the basis of this declaration, the delegate of the Commissioner advertised the s.223 request, and subsequently granted it in the absence of any opposition.
The Request of Mr ST.George
The right of O'Neill to be recorded as a co-applicant prima facie arises from an assignment dated 11 July 1990 - where an assignment of a part interest in the invention is made to O'Neill for the consideration of $1. The deed of assignment is totally silent on whether there were any other equitable considerations. Although StGeorge has suggested that the assignment was in consideration for funding from O'Neill (and that such funding never materialised), such is not referred to in the assignment, and there is insufficient evidence to establish whether such an agreement was behind the assignment, nor whether relevant moneys were paid. Consequently there is a clear basis for O'Neill to be recorded as a joint applicant in the invention.
On 30 July 1991, StGeorge faxed a letter to the solicitors for O'Neill stating, in part:
" .... By this disclosure, plus possible known prior art, the Patent cannot be granted in its present form and therefore of no further commercial value.
"Having borne all related costs to date (Plus all design work and specification requirements) I have now notified my Patent Attorney that I have no further interest in proceeding with the Patent Application and as far as I am concerned, it can lapse."
At the hearing, StGeorge confirmed that from this date, until he became aware that the application had been restored, he had no intention of keeping the application alive. (At the hearing, he equivocated somewhat, referring to monies owed to the patent attorneys and difficulties in raising funds, but clearly he did not actively seek to maintain the application.) It is thus manifestly apparent that, if it were not for the action of O'Neill seeking an extension of time to enter the national phase, there would not now be a current patent application.
Finally, I note that the file clearly demonstrates that O'Neill wants the application to proceed - that is, there is no basis for removing O'Neill as co-applicant through frustration of the prosecution of the application.
For these reasons, I do not consider Mr StGeorge has made out a case for removing Mr O'Neill as a co-applicant.
The REquest as sought by Mr O'Neill
The request of O'Neill is somewhat more complicated. At the hearing he made the point that previously he had no desire to remove StGeorge from the application; however he now claims to be an inventor, the sole inventor, and he also requests the StGeorge be removed as co-applicant.
Inventorship
O'Neill's claim to inventorship arises from an assertion that the invention was his 'idea'. In support of this I was referred to an undated advertising brochure of StGeorge which states that a certain product was "... conceptualized and developed by Chris O'Neill...", and various comments from StGeorge referring to the 'idea' of O'Neill. However there is little information to definitively tie the device of the brochure to the invention the subject of the patent application, nor what the substance of the idea was.
On the other hand, StGeorge and O'Neill signed an assignment agreement which is dated 11 July 1990 - the day the present application was filed as a PCT application. That agreement refers explicitly to the present application (by way of its PCT application number). Paragraph A of that agreement states:
"The assignor is the actual inventor of an invention entitled SECURITY GRILL."
the assignor being StGeorge. Paragraph B states:
"The assignor and Assignee have agreed to the transfer to the Assignee of a part interest in the right title and interest of the Assignor in and to the invention."
the assignee being O'Neill.
Furthermore, in an advertisement in the Financial Review of 16 April 1993, O'Neill stated:
"Any further applications are subject to the assignment dated 11 July 1990 between the original co-patentees."
which is indicative that in April 1993 O'Neill considered the assignment to be a valid document.
The assignment was purportedly executed at a far closer date to the relevant events than much of the other evidence that has been put before me, and for that reason I place great reliance upon it. I note that it clearly acknowledges StGeorge alone as the inventor. Further, the evidence does not establish what, in relation to the subject of the patent application, was the 'idea' of O'Neill nor provide any substantiation of such; nor is there any distinction between the subject of the idea and the contribution of StGeorge. I am therefore not satisfied that O'Neill has established that he was either a joint inventor, or sole inventor, of the invention the subject of the application.
Applicant
O'Neill's claim to sole applicant arises from an alleged employer/employee relationship with StGeorge. In support of this I was referred to some accounts, and a number of statements by third parties.
With respect to the third party statements, I attach very little weight to them. Apart from StGeorge contesting their veracity, the substance of the statements is properly categorized as hearsay.
With respect to the payments, there is little information to definitively tie the payments to the invention the subject of the patent application. Further there is no evidence relating to any contract of employment nor any other relevant contemporary evidence of their arrangements. Additionally, I note that at the relevant time StGeorge was apparently employed full time by the C.S.I.R.O., and that the work done by StGeorge was thus in his 'spare time'.
Finally, I note the assignment (referred to above) which assigns O'Neill a right to be joint applicant, and which was apparently freely signed by O'Neill.
In my view, the evidence provided by O'Neill falls a long way short of establishing any right to claim sole applicant status.
Removal of StGeorge as Co-applicant
A further matter relates to whether StGeorge should be removed as co-applicant through frustrating the processing of the application. While that may have been the case in 1991, I note that StGeorge apparently wants the application to continue. Given this, and status of StGeorge as the actual inventor, I do not consider Mr O'Neill has made out any case for removing Mr StGeorge as a co-applicant.
Discretionary Powers
Before making directions on how this application should proceed, there are certain aspects concerning prior exercise of the Commissioner's discretionary powers in this case, that merit attention.
In the declaration accompanying the s.223 request, O'Neill refers to the patent attorney as having his address recorded incorrectly. However O'Neill has provided in his present evidence a copy of a letter from that patent attorney dated 16 August 1991 - which letter has the address 119 Prahan St - ie. the correct address. At the hearing I asked O'Neill what was the basis of his assertion that his attorney had his address incorrect - he stated that it was a telephone call.
I note that the letter from that patent attorney is dated well before the application lapsed. It states that the attorney will cease representing him unless their accounts were paid in full by 27 Aug. 1991. It also indicates the date for entering the national phase.
The declaration accompanying the s.223 request was dated 4 June 1990 (the date the s.223 request was filed.) In para 6 of that declaration, O'Neill states that he became aware of a problem '2 weeks ago' - ie about mid May 1992. However, a file note on the file of PCT/AU90/00298 (which I showed to Mr O'Neill at the hearing, and sought comments) records as follows in chronological order (the spatial order is different):
8/3
Joint Pat Holder PCT AU90/00298
E.P.O.
Chris O'Neal
02 955 5566
12 March
Joint applicant.
Dispute between applicants.
Other has appointed own attorney
other has now decided not to proceed with appln.
Chris O'Neill wishes to maintain the application
Advise please
Phoned - am: No answer
Phoned again 3 pm. Not available. Mr O'Neill to phone me on his return. EW 6/5/92
He phoned 3.35. I advised him to see attorney. He already has an appointment tomorrow. EW 6/5/92
The file notes suggest that O'Neill may have been aware in early March that StGeorge was not proceeding with the application. But in any case it indicates that O'Neill had an appointment to see a patent attorney on 7 May regarding the matter - rather more than 2 weeks before his statutory declaration. Yet his declaration infers that he only became aware of a problem in mid-May.
Additionally, I note that StGeorge advised O'Neill on or about 30 July 1991 that
".. I have now notified my Patent Attorney that I have no further interest in proceeding with the Patent Application and as far as I am concerned, it can lapse."
which is almost 1 year before O'Neill executed his declaration.
On 24 July 1990, the Patent Office (in its capacity as a Receiving Office under the PCT) received a letter from the applicants' patent attorney, a copy of which is in the evidence of O'Neill. That letter states (in part)
"... As discussed on the telephone, one of the applicants is seriously ill and the other applicant (O'Neill), has placed before us your Invitation to amend and deal with certain informalities .... We are taking full instructions but in the meantime would, and as discussed on the telephone, seek an extension of time for a period of one month ..."
As a result of that letter, further time was allowed. At the hearing StGeorge denied ever being seriously ill, and O'Neill denied giving any instructions vis-a-vis StGeorge being ill.
I also note the assignment dated 11 July 1990. It purports to have been executed on the same day as the PCT application was filed, and includes the statement that "The parties hereto desire to record and reduce to writing the said agreement." It states
THIS DEED dated 11 June 1990 ...
and before the signature block:
IN WITNESS WHEREOF the Assignor and Assignee have hereto set their hands the day and year first above written.
The assignment refers to the PCT application by its application number. However:
-Patent Office records indicate the application was filed in the Sydney sub-office on 11 July 1990. This means that, in the normal course of events, it would not have reached Canberra (where the application number is allocated) until at least the following day - after over-night courier; and
-normal processing within the Patent Office usually results in the allocation of the application number some days after filing.
That is, there is prima facie reason for me to believe that the assignment document was not executed on the date it purports to have been.
Subsequent to the hearing I raised this matter with both parties and invited their comments. O'Neill stated:
"(A) That both parties validated that the evidence produced before the hearing was correct.
(B) That the assignment was prepared to confirm the verbal agreement and was deemed to be effected as of the date of the allocation of the number PCT/AU90/00298"
which appears to confirm my belief.
From the above it is apparent that there are some significant and unexplained discrepancies in the documentation before me, including in relation to material supplied to support past exercises of discretionary powers by the Commissioner. Such matters are relevant to the exercise of discretionary powers. As was stated in Imperial Chemical Industries (Whyte's) Patent (1978) RPC 11, "the court will not assist a wrongdoer"; similarly, in considering the allowability of an amendment the High Court in the judgement of Menzies J. in Sly v. United Development Corporation Pty. Ltd. 106 CLR 633, stated:
"There is, however, clearly enough a discretion to disallow an amendment which does fall within s.71 and is not forbidden by s.78. The conduct of the person seeking to amend is something to be taken into account, see Raleigh Cycle Co. Ltd. v. H. Miller & Co. Ltd. (1951) A.C. 278"
In the present case, a determination that one or other of the applicants is to have responsibility for the prosecution of the application would likely facilitate its processing. However I consider the discrepancies in the documentation before me to be sufficient to inhibit me from exercising my discretionary powers in that manner.
Determination
Having regard to all the circumstances of this case, I make the following directions with regard to the manner in which this application is to proceed.
The application is to proceed in the names of Mr StGeorge and Mr O'Neill as joint applicants and joint nominated persons.
Mr StGeorge and Mr O'Neill have the responsibility, jointly and individually, to pay any fees required to maintain the application in force.
That is, if either of the applicants fails to timely pay a fee, one applicant will not be entitled to rely on the failure of the other applicant to pay the fee as justification for an extension of time to pay the fee.
The Commissioner will send any examination reports to both applicants at their last known address for service.
As usual, it will be the responsibility of each applicant to advise the Commissioner of any change of their address for service.
In addition to any other requirements set out in the Patents Act, any correspondence to the Commissioner in relation to:
-examination reports;
-amending the patent request, complete specification, or any other filed document, under the provisions of s.104 of the Patents Act; or
-recording an assignment under s.113 of the Patents Act
must be personally signed by both Mr StGeorge and Mr O'Neill, and indicate the agreement between the parties as to the substance of the correspondence. This will apply even if one or both parties use the services of a patent attorney or other representative.
I particularly note that a consequence of the fourth direction is that the application will inevitably lapse unless the applicants can reach agreement between themselves on how the application is to proceed.
Costs
Both parties represented themselves at the hearing. I do not consider that either party has won its case. In all the circumstances, I make no award of costs.
D Herald
Deputy Commissioner of Patents
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