Dennis Brian Moriarty v Michael Shane Collins
[1992] APO 56
•30 September 1992
official notice
decision of a delegate of the commissioner of patents
Application : Nos. 70826/91 and PK5720 in the name of DENNIS BRIAN MORIARTY
Title : WALL PANELS and ROOF FLUSH
Action: Request under Section 32 by MICHAEL SHANE COLLINS for his company (Dembridge Pty Ltd) to be joined as an applicant.
Request based on a handwritten agreement to create a company, and to assign the application to that company. That company was never created.
Decision : Issued . Request refused.
A person who claims to be entitled to the grant of a patent on an application can apply under Section 32 to have the application proceed in their name.
Mr Collins failed to establish any justification for his company to be joined as an applicant.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application Nos. 70826/91 and PK5720 by DENNIS BRIAN MORIARTY, and a request under Section 32 of the Patents Act 1990 by MICHAEL SHANE COLLINS for determination of a dispute between interested parties.
background
Patent application 70826/91 was filed as a provisional application on 9 February 1990 under number PJ8517, by D B Moriarty. That application was completed on 7 February 1991.
Patent application PK5720 was filed by Mr Moriarty on 22 April 1991. That application has lapsed without any complete application being associated with it.
On 4 November 1991 Michael Shane Collins filed, through his solicitors Cartwright Richardson & Stringer, a "REQUEST FOR DETERMINATION OF A DISPUTE BETWEEN APPLICANTS" together with copies of certain documents.
After some correspondence with the parties, and receipt of material from Mr Moriarty and a declaration from Mr. Collins, the matter was heard in Brisbane on 4 September 1992. Mr. Collins represented himself; Mr Moriarty did not appear.
The request also specified patent application PJ8517; however as that application was completed and matured into patent application 70826/90, I shall make no further reference to that provisional application per se.
the issues
Section 32 of the Patents Act 1990 provides:
32.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 1990 defines an interested party in the following terms:
"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 the request by Mr Collins is specified in his application as follows.
1.I am a partner with Dennis Brian Moriarty and the terms of our Partnership agreement were set out in a document dated 18th June, 1991, a copy of which I enclose.
2.Under the terms of the agreement Dennis Brian Moriarty and Dembridge Pty Ltd were to form a company called ECP Pty Ltd. The patent specifications lodged in the name of Dennis Brian Moriarty were to be transferred to the name of the new company.
3.However, the company has not been formed and Dennis Brian Moriarty has not transferred the Patent Application to the name of the company.
4.I seek to protect the position of Dembridge Pty Ltd as a partner of Dennis Brian Moriarty.
5.I therefore seek to have the name of the Applicant altered so that the Application proceeds in the name of D. Moriarty and Dembridge Pty Ltd.
6.In reliance upon the agreement signed 18th June, 1991, I have incurred costs of $16,058.23 as set out in the handwritten list attached to this application.
7.I also enclose with my application a copy of a letter from Butler McDermott & Egan dated 29th August, 1991 acting for Moriarty and a copy of my Solicitor's letter dated 27th August, 1991 and 30th August, 1991."
Attached to the application is a purported copy of the agreement. This document extends over two pages and is in handwriting. There are several alterations/deletions on the first page, none of which are initialled or otherwise endorsed. Both parties agree that the original of the document purported by Mr Collins to be the agreement, is written with different coloured ink on the two pages.
The purported agreement as supplied by Mr Collins is shown verbatim as follows. Deleted text is shown (as best I can read it, and with illegible characters indicated as `_') with a line through it; text subject to some form of alteration is shown underlined.
(first page)
This Agreement is made between D. Moriarty and Dembridge Pty Ltd. on the 18th June 1991.
It is agreed by the parties that
1.We will produce concrete
Drinking TanksWater Storage Tanks under a proposed company called E.C.P. P/L. Queensland. Patent Specifications have been lodge in the Name of D.B. Moriarty to be E.C.P. P/L2.We will produce a system called the roof flush of which patent specification have been lodged at the patents office Brisbane under the name of D.B. Moriarty To be E.C.P./P/L.
3.On signing of this agreement a $2,000.00 Deposit will be given to D.B. Moriarty.
4.A further $8,000. will be deposited in the proposed company account for working capital were 2 signatories will be needed to withdraw Funds
5.It is proposed that E.C.P. P/L will
endevaSEEK to acquire land through the Queensland Gov't to produces____ ____dproposed produc_6.$5,000 of monies already advanced to D. Moriarty is by way of a loan.
7.Shares of the proposed company will be one(1) to D.B. Moriarty and one(1) to Dembridge P/L.
(second page)
8.There will be 2 Directors
D.B. Moriarty + M. Collins
This agreement is the whole agreement.
Signed(DB Moriarty)
Signed(M Collins, under the seal of Dembridge Pty Ltd)
Witness (Luke Bracken)
The details of this agreement are disputed by Mr. Moriarty. He states that he was never given a copy of the original agreement, and disputes the authenticity of the purported agreement filed by Mr Collins. He states, inter alia, :
... I have since inspected the agreements claimed by Collins to be the original. It is a one page double-sided document which in no way resembles what I remember to be the two page agreement, handwritten by Collins, which I signed. The new document also contained extra and varied clauses to the original agreement.
... I believe Collins destroyed the first page of the true agreement and wrote a new page to remove evidence of his default of the terms of the true agreement as well as to favourably suit his financial interests.
Mr Moriarty provides the following as his recollection of the contents of the agreement. The document he filed purports to be his recollection of the agreement on 25 November 1991, and he refers to this as the `Real Agreement'.
(page 1)
"This agreement is made between D Moriarty and Dembridge Pty Ltd on the 18th June 1991.
It is agreed by the parties that
1.Dembridge will give D Moriarty $5000 by way of a loan;
2.Dembridge will provide the ECP business with $5000 for use as operating funds;
3.Dembridge will pay outstanding accounts of the ECP business totalling $5316, to be paid in two instalments, $2838 at the end of June 91, and $2478 at the end of July 91;
4.A new company will be formed to own and control the ECP business, which company will have D Moriarty and Dembridge as equal shareholders, and D Moriarty and M Collins as directors;
5. This new ECP company will own the concrete panels patents now owned by D Moriarty.
(page 2)
This agreement is the whole Agreement.
Signed D. Moriarty
SignedM Collins (For Dembridge Pty Ltd)
SignedLuke Bracken (witness)
Comparing these two versions of the agreement, I note that there is broad agreement between them - particularly in that ECP was to own the patents owned by Moriarty. The fundamental difference between them is the basis of paying money by Mr Collins.
Mr Moriarty claims that the agreement has been voided as Mr Collins failed to comply with the second part of the 3rd paragraph of the `Real Agreement". I note however that paragraph 3 of the `Real Agreement' has no equivalent in the purported agreement filed by Mr Collins.
decision
Having regard to the circumstances of this case, I 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.
Mr Collins' request under section 32 is for his company, Dembridge Pty Ltd, to be joined as an applicant. I take this as being also a request for that company to be joined as a nominated person. As a result, I am satisfied that Mr Collins (acting on behalf of his company) is an "interested party" in respect of the application, and the provisions of section 32 can be applied.
In my view 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 him of the right of that party to be so joined; where he is not reasonably satisfied of the existence of that right, the Commissioner cannot act to join that party.
I now consider the section 32 request in respect of each of the two applications.
pk5720
This application lapsed 22 April 1992. There is no record of any complete application having been associated with this application.
In the case of granted patents, it does not appear that there can be a valid assignment of a patent if the term has expired. See Re Usines de Melle's Patent 91 CLR 42 and In the Matter of a Petition by SANOFI for Extension of Term of Letters Patent 272333 at (1983) VR 25 and (1981) 51 AOJP 2142. In my view the same principles apply to an application that has lapsed.
It follows that I cannot make a determination of the type requested in respect of provisional application PK5720.
70826/91
For Dembridge Pty Ltd to be recorded as joint applicant, Mr Collins must clearly establish transfer of title by operation of law.
There are a number of issues relevant to my determination in respect of this application:
-Both `agreements' concur that there was an intention to assign the patent application to a (at that time nonexistent) company, E.C.P. Pty Ltd Queensland. Neither `agreement' indicates any intention to assign rights to Dembridge Pty Ltd per se.
-There is dispute over authenticity of the purported agreement as produced by Mr Collins. On this matter I note:
the uninitialled alterations
the use of ink of different colours on the different pages of the agreement
-At the hearing I indicated to Mr Collins that I wanted to see the original of the document he purported to be the agreement. This has not been supplied to the Commissioner.
-At the hearing I observed that, given the dispute over the authenticity of the agreement, it seemed unusual that neither party had provided a statutory declaration from the witness to the purported agreement (Mr. Luke Bracken). Mr Collins indicated that he would obtain a declaration from Mr Bracken. No such declaration has been forwarded to the Commissioner.
-Mr Collins asserts that he is owed a sum of over $16000 by Mr Moriarty. The solicitors for Mr Moriarty apparently acknowledge a debt of that amount. However I am not satisfied that this debt has come about from compliance with the agreement. For example, clause 4 of the purported agreement (per Collins) states:
A further $8,000. will be deposited in the proposed company account for working capital were 2 signatories will be needed to withdraw Funds
But there is nothing to show that Mr Collins ever deposited money into such an account; rather the monies paid by Mr Collins were apparently paid directly to Mr Moriarty.
-Both versions of the agreement refer to an intention to assign the invention to a company (E.C.P. Pty Ltd Queensland) which was to be formed. That company was never formed (although I note that another company of similar name has apparently been formed by Mr Moriarty and another person.)
The most I can conclude from these issues is that the company E.C.P. Pty Ltd Queensland may have an equitable interest in the invention. But that company never came into existence, and I cannot act under section 32 to join a nonexistent entity as an applicant.
I do not think either version of the agreement establishes an intention by Mr. Moriarty to assign any interest in the patent application to Dembridge Pty Ltd per se. Furthermore:
-I am not prepared to rely upon the purported agreement supplied by Mr Collins to establish that there has been a transfer by operation of law - noting particularly that I have only been supplied with a photocopy of that agreement, the absence of any testimony from the witness to that agreement, and the dispute between the parties as to its authenticity;
but, even if I had been supplied with the actual agreement, and testimony of the witness to that agreement:
-there is nothing in either version of the agreement which sets out the arrangements if a party defaults on the agreement;
-I am not satisfied that the monies admitted as owing to Mr Collins were necessarily paid in accordance with the terms of either version of the agreement; and
-in my view any rights of Dembridge in the invention were contingent upon the creation of the company E.C.P. Pty Ltd Queensland.
For these reasons I find there is no basis for me to conclude that any title in the invention has been transferred to Dembridge Pty Ltd by operation of law.
Finally, at the hearing Mr Collins submitted that the main reason for wanting to be recorded as joint applicant was to prevent the applicant from taking advantage of unsuspecting investors. Mr. Collins has allegedly lost money in his dealings with the applicant; he asserted that, by Dembridge Pty Ltd being recorded as joint applicant, he would be in a position to warn potential investors of the activities of the applicant. However I do not consider such altruism gives rise to an entitlement to be recorded as joint applicant.
conclusion
Mr Collins has failed to establish any justification for his company, Dembridge Pty Ltd, being recorded as a joint applicant in any of the applications referred to in his request under section 32. I therefore refuse his request.
costs
Costs in actions before the Commissioner usually follow the event. However, having regard to all the circumstances of this matter, I consider it appropriate for each party to bear their own costs - consequently I make no award of costs.
D. HERALD
Assistant Commissioner of Patents
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