C T O'Neill v C W StGeorge - [1994] APO 65

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1994] APO 65
Decision Date: 4 November 1994

CaseChat Overview and Summary

In the case of C.T. O'Neill v C.W. StGeorge, the applicants of patent application 59510/90, filed under the Patent Cooperation Treaty as PCT/AU90/00298, engaged in a dispute regarding the continuation and management of the application. The application, originally filed in the names of C.T. O'Neill and C.W. StGeorge, lapsed due to non-compliance with the national phase entry deadline. O'Neill subsequently requested an extension of time to enter the national phase under section 223 of the Patents Act 1990, which was granted. StGeorge sought to have O'Neill removed as a co-applicant, while O'Neill claimed sole inventor status and requested StGeorge's removal as co-applicant. The Deputy Commissioner of Patents had to decide whether to remove either applicant and how to regulate the application's proceedings.

The court examined the evidence presented by both parties, including their assignments, communications, and financial dealings. StGeorge argued that O'Neill should be removed due to irreconcilable differences and a lack of communication, while O'Neill claimed sole inventorship based on an employer/employee relationship and an earlier assignment of rights. The Deputy Commissioner found that discrepancies in the documentation, including conflicting statements and unverified claims, inhibited the exercise of discretionary powers. Consequently, the court directed that the application proceed in the names of both StGeorge and O'Neill as joint applicants and nominated persons, with joint and individual responsibility for maintaining the application and corresponding with the Commissioner. Costs were not awarded to either party.

In summary, the Deputy Commissioner ruled that the application should proceed with both applicants as joint applicants, each bearing joint and individual responsibilities for maintaining the application and corresponding with the Commissioner. The court's decision was influenced by the discrepancies in the evidence provided by the applicants, which inhibited the exercise of discretionary powers.

Orders