Compri Technic Pty Ltd v Pneumatic Systems International Pty Ltd

[1999] APO 39

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 663294 in the name of COMPRI TECHNIC PTY. LTD.

Title:          Improved Pneumatic Gun and Projectiles Therefore

Action: Opposition under sec. 59 of the Patents Act 1990 by PNEUMATIC SYSTEMS INTERNATIONAL PTY LTD

Decision:          Issued            .

Abstract

The opponent did not file any evidence in support, and declined to be heard.  The only evidence on file from the opponent was evidence filed in relation to a request by the applicant under regulation 5.5 for dismissal of the opposition.  That request had been refused.

The grounds of opposition were those of obtaining and lack of novelty due to prior use.  Due to want of evidence these grounds were not upheld.

The opposition was dismissed.

Costs awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 663294 by Compri Technic Pty. Ltd. and an opposition thereto by Pneumatic Systems International Pty Ltd under section 59 of the Patents Act 1990.

BACKGROUND

Compri Technic Pty. Ltd. (“the applicant”) filed International Application PCT/AU91/00352 on 9 August 1991, claiming priority from Australian provisional applications PK 1710 and PK 3364 filed on 10 August 1990 and 15 November 1990, respectively.  PCT/AU91/00352 designates, inter alia, Australia, and after entering the national phase as application 83338/91 it was advertised accepted on 5 October 1995 and given the six-figure number 663294.  The inventor of record is Jeffrey Bruce Fowler.

A notice of opposition to application 663294 was filed on 2 January 1996 by Pneumatic Systems International Pty Ltd ("the opponent").  The grounds of opposition were that the nominated person is not entitled to a grant of a patent for the invention, and that the invention is not novel as a result of prior use.

On 29 April 1996 the applicant applied under regulation 5.5 for "summary" dismissal of the opposition.  Dismissal was sought on the basis that the alleged prior use that had occurred had taken place after the priority date of the claims, and that even if the person which the opponent alleged to have been the inventor (David Wayne Casella) had actually been so (and this was not conceded), the nominated person would still have been entitled to the invention by virtue of Mr Casella having been the employee of the nominated person.  In relation to the prior use, on the last working day before the hearing on the dismissal action the opponent filed a statutory declaration which had the effect of amending the allegation of prior use to having been one year earlier, which placed it before the priority date of the claims.

The request for summary dismissal was refused.  The hearing officer found that determining the relationship of Mr Casella to the nominated person was a matter of evidence, and it would not be appropriate to do so in summary dismissal proceedings.  He also accepted that the opponent could have made a clerical error in its statement of grounds and particulars when stipulating the dates on which the prior use was alleged to have occurred, and he therefore allowed this ground of opposition to proceed as well, providing the opponent amended its statement of grounds and particulars.

The opponent did not serve any evidence in support.  However, the applicant served evidence in "answer", as it was entitled to do under regulation 5.8(3).

The matter was set down for hearing on 11 June 1999 in Perth.  However on 4 June 1999 the opponent advised that it did not intend to appear at the hearing or file written submissions. In light of these circumstances the applicant was advised that the hearing would be adjourned, and would only be reconvened if upon consideration of the evidence in the matter the Commissioner was disposed to find against the applicant.  This turned out not to be the case, and so the hearing did not need to be reconvened.

THE SPECIFICATION

The detail of the specification is not material to this decision.

THE EVIDENCE

The evidence in answer consists of statutory declarations by:

·Rolf van Wollingen, patent attorney for the applicant

·Jeffery Bruce Fowler, the inventor of record and a director of the applicant company

·Robert G Tondut, a former employee of the applicant company

·Les Parr, a director of a company which had a commercial relationship with the applicant company in the relevant period

·Robert Gerald Woods, a former employee of the applicant company

The only other evidence on file is that filed in respect of the regulation 5.5 dismissal action.  The evidence from the applicant on that consists of statutory declarations by:

·Michael Harding, who was the external accountant for the applicant in the relevant period

·Richard Sydney Thorp, who was a shareholder in, and an accountant for, the applicant company

·the Jeffery Bruce Fowler mentioned previously

The opponent's evidence in respect of the regulation 5.5 dismissal action consists of four statutory declarations by David Wayne Casella.  Three of these constitute responses to the each of three declarations filed by the opponent in respect of the dismissal action.  The fourth is the one which I have previously adverted to as having been filed on the last working day before the hearing on the dismissal action, and which shifted the time the prior use was alleged to have occurred back by a year.

DECISION

Law

In proceedings before the Commissioner the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523), but it is incumbent upon the opponent to make its case. In the case of prior use, some corroboration is usually required. For example, in Seiller's Application, [1970] RPC 103, Graham J said at 106:

"In my judgment it is necessary that proof of prior user in opposition cases should be very clear.  Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable.  Such corroboration is often best found in documents contemporary with the fact to be proved.  Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."

Another case on this point is Windsurfing International Inc v Petit; Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135, in which it was stated:

"It is essential that an allegation of prior public use should be strictly proved.  Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care.  The Court must be satisfied that the proof is sufficient in the circumstances having regard to the gravity of the allegation."

Prior use

No question arises over the priority claim made in respect of this application.  The claims are entitled to a priority date of 10 August 1990.

The opponent in its originally filed statement of grounds and particulars referred to instances of prior use in mid-1991.  While this is before the filing date of the application, it is after the priority date of the claims.  However, as I have already related, in his statutory declaration filed just prior to the hearing on a request for summary dismissal of the opposition, Mr Casella revised this to mid-1990.

The opponent has put forward no evidence other than Mr Casella's assertions to substantiate the time of prior use having been in 1990.  The applicant, on the other hand, has provided considerable declaratory and documentary evidence which strongly points towards the "prior use" to which Mr Casella refers actually having occurred in 1991.

Accordingly I find that the ground of lack of novelty as a result of prior use is not established on the evidence.

Entitlement

The opponent alleges that Mr Casella, who is a principal of the opponent company, is the inventor of the present invention, and is thus entitled to the invention.  The only evidence for this comes from Mr Casella.  Mr Casella is the inventor of an earlier version of the present device which has been patented in the United States and Canada, the patentee being the present applicant (although there is evidence from the applicant casting doubt on whether Mr Casella was in fact the sole inventor of that earlier invention).

The evidence against Mr Casella being the real inventor is overwhelming.  While none of the applicant's declarants seem to be entirely independent from the applicant, by and large I consider their evidence to be very convincing.  It is consistent and it is supported by strong documentary evidence, including  a deed signed by Mr Casella stating that the intellectual property rights in the present invention belong to Compri Technic Pty. Ltd., the present applicant.  Clearly there is insufficient evidence to support a finding that the present applicant is not entitled to the invention.

Accordingly I find that the opposition is not successful on its ground of opposition that Compri Technic Pty. Ltd. is a not entitled to a grant of a patent for the invention.

CONCLUSION

I have found that neither of the grounds of the opposition have been established, and so I dismiss the opposition filed by Pneumatic Systems International Pty Ltd.  I direct that the application proceed to sealing, subject, of course, to any appeal being filed to this decision.

COSTS

In accordance with the general principle that costs follow the event, I award costs against Pneumatic Systems International Pty Ltd.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :   Griffith Hack, Perth

Patent attorneys for the opponent  :  H.R. Hodgkinson & Co., Sydney