Charles Genn v Ross William Bain

[2000] APO 39

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 696142 in the name of CHARLES GENN.

Title:          Infusion apparatus.

Action:          Request by ROSS WILLIAM BAIN under section 32 of the Patents Act for a determination of the commissioner as to the name in which the application is to proceed and the manner of proceeding with that application; and opposition by ROSS WILLIAM BAIN under section 59 of the Patents Act that the nominated person is not entitled to a grant of a patent for the invention.

Decision:          Issued  .

Abstract:The applicant and opponent were found to be joint inventors of the invention. Consequently both parties are jointly entitled to the grant of a patent on the application. This means section 32 could be applied to join the parties.

The opponent expressed concern at any determination to grant a patent to the parties jointly.  The opponent stated he did not expect to receive any cooperation from the applicant.  In correspondence to the Patent Office the applicant stated he did not want to spend further on the application. 

On the other hand a lack of interest, including the desire not to spend further, on the application is insufficient to displace the applicant from being a party to the grant of a patent.  Such determinations against a party have ordinarily only occurred where there have been obstructions or breaches of agreement by that party.  There was no evidence of this type of activity by the applicant in the present case.

It was determined that a patent may be sealed on the application, after thirty (30) days from the date of this decision, naming the applicant and opponent as joint patentees and as joint inventors.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent application 696142 by CHARLES GENN, and a request by ROSS WILLIAM BAIN under section 32 of the Patents Act for a determination of the commissioner as to the name in which the application is to proceed and the manner of proceeding with that application; and opposition by ROSS WILLIAM BAIN under section 59 of the Patents Act that the nominated person is not entitled to a grant of a patent for the invention.

BACKGROUND

Charles Genn filed patent application 696142 on 19 May 1997.  The application claims priority from an Australian provisional application, PO6785, dated 21 May 1996.  Mr Genn converted the latter application from a petty patent application, 52416/96, to provisional application PO6785 shortly before filing the present complete application 696142.  The petty patent application was in the names of Charles Genn, the present opponent Ross William Bain, and a Domenica Owen.

Patent application 696142 was advertised accepted on 3 September 1998. Mr Bain filed a notice of opposition to the grant of a patent on the application on 3 December 1998. On 3 March 1999 he filed a statement of grounds and particulars in support of the opposition. In this statement Mr Bain contends that the nominated person, Charles Genn, is not entitled to a grant of a patent for the invention in his name alone. On 8 March 1999 Mr Bain also filed a request under section 32 for the commissioner to determine the person who may proceed with the application and the manner of proceeding with that application.

Mr Bain filed evidence in support of his section 32 request and section 59 opposition on 8 March 1999 and 27 May 1999 respectively. The evidence in the two actions is substantially identical. Mr Genn did not file evidence in support under section 32. On 18 August 1999 he filed evidence in response under section 32 to Mr Bain's evidence. Mr Genn did not separately file evidence in answer under section 59 to Mr Bain's section 59 evidence.

In view of the facts and issues of entitlement in this case being apparently the same under sections 32 and 59, due to Mr Bain's evidence in support being substantially identical under the two sections, a delegate of the commissioner proposed a direction on 31 August 1999. The delegate formed the view Mr Genn intended the one copy of his evidence to apply under both sections 32 and 59. The delegate noted Mr Genn advised the commissioner on 16 June 1999 that he was seeking the consent of the opponent for evidence in answer in relation to sections 32 and 59 to be filed concurrently. If Mr Genn's evidence was not to apply under both sections 32 and 59, the commissioner may be in the position of having to decide the same issues of entitlement under these two sections but only be able to refer to evidence under one of those sections. The delegate noted this situation could lead to different findings on the same facts. Consequently the delegate proposed a direction for Mr Genn's evidence in response under section 32 to be also used as evidence in answer under section 59.

Mr Bain's attorney resisted this proposal but did not formally object or request a hearing on the proposed direction. The commissioner proceeded to issue the direction on 23 September 1999 together with a direction that any evidence filed in reply by the opponent will constitute evidence in reply to the applicant's evidence in response under section 32.

On 22 October 1999 Mr Bain filed evidence in response, under section 32, to Mr Genn's evidence. Mr Bain's attorney still contended that Mr Genn had not properly filed any evidence under section 59. However the attorney requested that, if Mr Genn's evidence is considered to be filed under section 59, then Mr Bain's latest evidence should be treated as evidence in reply under section 59.

The section 32 and section 59 actions came to a hearing in Canberra on 24 March 2000. In the week before the hearing, Mr Genn's attorney advised he would not attend the hearing nor file any submissions. Mr Claude Anese, patent attorney of Cullen & Co, represented Mr Bain at the hearing by telephone.

SPECIFICATION

The specification describes the invention as relating to infusion apparatus.  In particular the invention has application to infusion apparatus for infusion of tea contained in tea bags.

The object of the invention is to provide apparatus by which tea bags can be temporarily stored for re-use without deteriorating significantly in flavour and without leaving an undesirable mess.

Claim 1 of the specification reads as follows:-

Infusion apparatus including:

retaining means for retaining a tea bag to be infused in a container, and squeezing means for squeezing said tea bag after infusion,

said retaining means including a perforated housing defining a chamber or recess and said squeezing means including a squeezing head adapted to co-operate with a first wall of said housing to squeeze said tea bag thereagainst,

said squeezing head being movable from a retracted position in which said squeezing head forms a second wall of said housing and is spaced from said first wall and an operative squeezing position in which said squeezing head is adjacent said first wall,

said housing having access means for providing access to said chamber or recess,

the apparatus being characterised in that said access means includes an opening into said chamber or recess,

said opening being located so as to allow placement of a tea bag in said chamber or recess between said first wall and said squeezing head when said squeezing head is in the retracted position.

Prima facie this claim is somewhat broader than the invention described in the body of the specification.  In its broadest form the invention described in the specification resides in a hand held infusion apparatus.  The squeezing means is in the form of a plunger with a plunger head movable towards and away from the first wall.  The plunger head is normally biassed towards the retracted position.  In all other respects the broadest form of the described invention is as claimed in claim 1.

EVIDENCE

Mr Bain's evidence in support firstly consists of a hand-written marketing, profit sharing and development agreement between Mr Genn, Mr Bain and Ms Owen in respect to a sunscreen applicator. 

In respect to the present invention Mr Bain includes drawings of a tea bag infuser and squeezer.  He maintains these are drawings of an alternative version of an infuser and squeezer he designed after discussing ideas of a tea bag squeezer with Mr Genn.  Mr Bain acknowledges Mr Genn initiated the idea of a tea bag squeezer.  However Mr Bain asserts Mr Genn's proposal of a folded piece of plastic in which a tea bag could be squeezed is a simplistic design with a number of disadvantages.

Mr Bain points out that Figures 1-4 of the drawings accompanying petty patent application 52416/96 are derived from his original drawings.  He also notes the patent request for the petty patent application names him as the actual inventor, and that application is in the names of Mr Genn, Mr Bain and Ms Owen.

Mr Bain states the conversion of petty patent application 52416/96 to provisional application PO6785 occurred without his knowledge or approval.  He presumes the attorney acted on the instructions of Mr Genn alone.  Mr Bain also states the filing of the present complete application 696142 occurred without his knowledge or approval.

The drawings of specification 696142 are substantially equivalent to Mr Bain's original drawings.  However Mr Bain notes the patent request and notice of entitlement for application 696142 name Mr Genn as the sole inventor even though the invention in this application is the same as that in the petty patent application.

Mr Bain states he did not assign his rights in the invention at any time.  He maintains he is the actual inventor and that the statements in the notice of entitlement are false and misleading.

In his evidence Mr Genn states the tea bag infuser he initially had in mind was a hinged gripper which would enable the user to squeeze a bag and leave it for later use.  He also states a spring loaded coffee plunger is illustrative of his further ideas in this area and that he and Mr Bain discussed these ideas.  Mr Genn includes in his evidence two very rudimentary drawings of both variants of his ideas.

Mr Genn acknowledges that Figures 1-4 of the drawings of the petty patent application substantially reproduce the embodiment of Mr Bain's drawings.  On the other hand Mr Genn says Figure 5 of the application reproduces his drawing of the hinged gripper.  He asserts his exclusion as inventor from the petty patent application was incorrect.

In subsequently converting the petty patent application and filing the complete application 696142, Mr Genn states he felt justified in excluding Mr Bain from inventorship because Mr Bain's contribution was to draw, albeit ably, the version Mr Genn had described to Mr Bain.  Mr Genn also states that Mr Bain would not have had any interest in tea bag infusers or any contribution to make if Mr Genn had not introduced Mr Bain to the subject.

In his evidence in response Mr Bain asserts he made his original drawings and showed them to Mr Genn before Mr Genn made the drawings accompanying Mr Genn's evidence.  Mr Bain also maintains he took it upon himself to draw his alternative version as it was a much better version than Mr Genn's design.  Mr Bain also states Mr Genn only mentioned the coffee plunger analogy after seeing Mr Bain's drawings.

APPLICABLE LAW

Section 59(a) provides that a person may oppose the grant of a standard patent on the ground that the nominated person is not entitled to a grant of a patent for the invention.

Section 32 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.

The dictionary to the Patents Act defines an interested party as follows:

"interested party", in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person.

The nature of Mr Bain's request is specified in his evidence as follows:

I request that the Commissioner direct that the standard patent application be amended to identify me as the inventor, and that the standard patent application proceed in the names of Genn, Owen and myself, providing that if Genn and Owen waive their rights or do not agree to contribute to the maintenance of the standard patent application, the standard patent application is to proceed in my name alone.

Mr Bain claims to be entitled to the grant of a patent on the application. In accordance with the dictionary to the Patents Act, Mr Bain is then clearly an interested party. This means section 32 may be applied.

The case, Re Applications by Dennis Brian Moriarty, 26 IPR 21 at 24, sets out the following principle. The Commissioner can only act under section 32 to join a party as a joint applicant or nominated person where the material before the Commissioner reasonably satisfies the Commissioner of the right of that party to be so joined. Where the Commissioner is not reasonably satisfied of the existence of that right, the Commissioner cannot act to join that party.

On the basis of the material in the present case, if I am reasonably satisfied Mr Bain is entitled to the grant of a patent for the invention then section 32 can be applied to join him as a party to the application.

In determining Mr Bain's entitlement to the invention I am guided by the principles set out in the Administrative Appeals Tribunal decision, Upham v Commissioner of Patents, [1998] AATA 852.

• Primarily there must be an objective assessment of Mr Bain's contribution simpliciter to the invention (Re Applications by CSIRO and Gilbert and Others, (1995) 31 IPR 67, (the Gilbert and Hazlewood case)).

• In assessing the weight to be given to that contribution, one should ask whether his contribution beneficially affected the final concept of the claimed invention and, secondly, whether that final conception would have been less efficient without his contribution (Mueller Brass Co v Reading Industries, (1972) 176 USPQ 361).

• It is also legitimate to ask whether the invention would have occurred without the claimant's involvement (Harris v CSIRO, (1993) 26 IPR 469).

DECISION

APPLICATION OF SECTION 59

Mr Anese noted the evidence in support shows that Mr Bain, Mr Genn and Ms Owen were involved in a joint venture in the development of an earlier invention relating to a sunscreen applicator, known by its proposed trademark Natureshade.  Mr Anese submitted the intention between the parties was for the same arrangements to apply for the present invention, and any subsequent invention made or developed by the parties. 

The agreement presented before me only concerns the marketing and financial arrangements in respect to the development of the sunscreen applicator.  There is no mention of any extension of that agreement to any other invention.  While the equivalent petty patent application for the tea bag infuser may have originally been in the names of Mr Genn, Mr Bain and Ms Owen this does not establish any formal agreement between the parties in respect to the tea bag infuser.  I find there is insufficient evidence before me of an intention for formal arrangements to apply between the parties in respect to the present tea bag infuser.

Mr Bain's drawings show a tea bag infuser and squeezer having a spring loaded plunger, that can return automatically, and a perforated housing with a hinged door for easy access and removal of a tea bag.

Mr Genn's drawings consist of two sketches.  One of the drawings appears to relate to a hinged device.  The other drawing shows a tea bag squeezer with rudimentary details including a plunger in a 'U' shaped compartment within a container.

Mr Anese noted that Mr Bain's arrangement is equivalent to the invention described and claimed in the present application.  On the other hand Mr Anese contended that Mr Genn's drawings do not show a perforated housing as claimed nor such a housing with an access means as claimed.  He stated the door, which is only shown in Mr Bain's drawings, is the access means and is the characterising feature of the invention.

I accept that Mr Genn's drawings do not clearly show a perforated housing and door.  On the other hand claim 1 and the description, in its broadest form, are silent in requiring the access means to be a door.  The claim and the description broadly define the access means as only including an opening into the chamber or recess to allow placement of a tea bag in the chamber or recess when the squeezing head is in the retracted position.  In Mr Genn's drawings the plunger appears capable of sliding within the U-shaped compartment.  The plunger also appears capable of being completely removed from the compartment.  The removal of the plunger provides an access means to the compartment in the way as presently described and claimed.  Consequently the broadest form of the invention as described and claimed encompasses Mr Genn's illustration in respect to the access means.

On the other hand Mr Genn's drawings do not contemplate a perforated housing and cooperating squeezing means in the way described and claimed in the present case.  His drawings show a rudimentary hinged device and an alternative rudimentary plunger arrangement.  However Mr Bain's drawings clearly illustrate the perforations of the housing and the cooperative details of the housing with the squeezing means or plunger arrangement. 

The Costa v GR & IE Daking Pty Ltd decision, 29 IPR 241, found two people to be joint inventors since the invention in that case only occurred because of the involvement of both. The invention resided in a machine for picking vegetables, being a conveyor arrangement mounted laterally on a trailer. One person had a general idea of what was required to solve the problems of tilting of the conveyor boom and providing different heights for different crops. However that person did not necessarily know how to give effect to those ideas. The creation of the invention required the input of the other person.

Mr Anese stated that Mr Bain maintains the hinged gripper is Mr Genn's idea.  Mr Anese also stated that Mr Bain's evidence shows that the housing and plunger arrangement is Mr Bain's idea. 

Mr Anese's latter submission overlooks Mr Genn's rudimentary drawing of a plunger arrangement.  While Mr Bain states Mr Genn made this drawing after seeing Mr Bain's drawings I am not satisfied this is the case.  The rudimentary nature of Mr Genn's drawing suggests this drawing is a precursor to Mr Bain's drawings.  This scenario also suggests Mr Genn was responsible for the basic idea of the plunger arrangement as well as that of the hinged gripper.  The evidence from both parties also consistently establishes that Mr Genn initiated discussions with Mr Bain about developing tea bag infusers.

From Mr Genn's basic idea Mr Bain appears to have developed the detail the subject of the present application.  Furthermore this detail provides greater enhancement to the present invention.  Consequently Mr Bain has made a contribution that beneficially affects the final concept of the invention.

The present circumstances are similar to the Costa (supra) case.  I am satisfied Mr Bain would not have produced the tea bag infuser that is the subject of the present specification without Mr Genn having discussed the basic idea with Mr Bain.  While Mr Genn may have had a general idea of what may meet the objects of the invention, my view is he did not necessarily know how to give effect to that idea.  The lack of detail in Mr Genn's sketches of two variants of the idea supports this view.

Mr Bain's drawings are a substantial modification of the basic idea and form the basis of the present specification.  The creation of the invention also required the input of Mr Bain. 

I conclude the invention only occurred because of the involvement of both Mr Genn and Mr Bain.  Consequently I find Mr Genn and Mr Bain are joint inventors of the invention.

APPLICATION OF SECTION 32

In accordance with the Moriarty (supra) decision, my finding that Mr Bain is jointly entitled to the grant of a patent for the invention means that I can apply section 32 to join the parties.

In Mr Bain's initial request for determination he asserts the present application should proceed jointly in the names of Mr Genn, Mr Bain and Ms Owen.  However I cannot make any finding for Ms Owen.  The primary evidence that involves Ms Owen is a hand written marketing, profit sharing and development agreement between Mr Genn, Mr Bain and Ms Owen in respect to a sunscreen applicator.  This is an entirely unrelated invention from the present infusion apparatus.  Furthermore the issue of entitlement to an invention through the respective contributions or assignments of parties to the invention is entirely separate from marketing or profit sharing arrangements.  In any case if Ms Owen believes she has some entitlement to the present invention then she may bring separate action under the Patents Act.

At the hearing Mr Anese stated that Mr Bain does not expect to receive any cooperation from Mr Genn because Mr Genn and Mr Bain are no longer on friendly terms.  Mr Anese also said Mr Genn has advised Mr Bain that Mr Genn does not have any further interest in the application.  Consequently Mr Anese suggested that unless Mr Genn confirms his interests in the application then I should direct the application to proceed in the name of Mr Bain alone.

In correspondence with the Patent Office, Mr Genn's attorneys have similarly advised that Mr Genn does not want to spend further on the patent application because more work is required to make the invention commercially successful.

I am against taking Mr Genn's lack of further interest in the application into account in determining whether he should be displaced as a person in whose name the application is to proceed.  A more appropriate avenue for Mr Bain to explore in such circumstances is to seek an assignment from Mr Genn.  Furthermore there are several cases that outline strict conditions on when a person may be displaced as a party to an application or patent.

The case, ReMilward-Bason and Burgess, (1988) AIPC 90-475, is a decision under the provisions of section 63 of the previous Patents Act 1952. Nonetheless the issues in that case are of some relevance in the present case. In that case the hearing officer determined that a series of patent applications and a patent, held jointly by the parties, should proceed in the name of one of the parties only. The hearing officer made this determination on the basis of unauthorised assignments and breaches of agreement by the other party that led to disputes between the parties in the progress of the applications and patent.

The case, Re Applications by Carroll and Harper, 1 IPR 537, is also a decision under the previous Patents Act 1952. In that case the hearing officer determined that two patent applications proceed in the name of only one of the parties because of breaches of agreement by the other party.

The case, Re Application by Stephenson and Donner, 24 IPR 108, involved a request for an application to proceed in only one party's name because the other party was refusing to sign a notice of entitlement, meaning the patent application could not be accepted.

The above cases all involve determinations favouring one of the parties because of breaches or obstructions by the other parties.  Such breaches or obstructions by Mr Genn are not evident in the present case.  Firstly there is no agreement before me in place between Mr Genn and Mr Bain in respect to application 696142.  Consequently there cannot have been any breach of agreement. 

Secondly Mr Genn's lack of further interest, including the desire not to spend further, on the application falls short of obstruction on his part to proceed with the application.  The hearing officer in the Milward-Bason (supra) case adopted a similar position on this point.  He found that a party's general lack of interest or reluctance in processing an application could not be construed as a refusal to proceed with the application.  An obstruction in the present case would amount to Mr Genn either refusing to undertake the necessary actions to allow the application to progress or to allow the management of any subsequent patent, or frustrating the undertaking of those actions by any other valid interested party. 

It may be argued that Mr Genn has isolated Mr Bain from the present application.  However this falls short of Mr Genn obstructing the processes necessary to progress the application.  Mr Bain has also not presented evidence to show Mr Genn has been obstructive in the progress of the application. 

Even if one of the parties does obstruct or frustrate the process at any future time there is a remedy available under section 17 concerning co-owners of patents.

I conclude at this stage that patent application 696142 should proceed jointly in the names of Mr Genn and Mr Bain. 

DETERMINATION

I have found Mr Genn and Mr Bain to be joint inventors of the invention. Consequently Mr Genn and Mr Bain are jointly entitled to the grant of a patent on the application. Accordingly Mr Bain's opposition under section 59 is successful.

Since Mr Bain is jointly entitled to the grant of a patent for the invention, I can apply section 32 to make a determination to join the parties.

I have found patent application 696142 should proceed jointly in the names of Mr Genn and Mr Bain.

I determine that application 696142 may be sealed, after thirty (30) days from the date of this decision, naming Charles Genn and Ross William Bain as patentees, and Charles Genn and Ross William Bain as inventors. 

If the Commissioner of Patents is served with a notice of appeal from this decision, I direct that sealing not occur until the appeal has been decided or discontinued.

COSTS

Costs normally follow the event.  I see no reason to depart from this practice in this case.

I award costs against Charles Genn.

M.G. Kraefft

Delegate of the Commissioner of Patents

Attorneys for the applicant  :  Intellpro, Brisbane

Attorneys for the opponent  :  Cullen & Co., Brisbane