Donald Roy Crawley v Victor George Bennett
[2001] APO 6
•8 February 2001
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No 29855/95 in the name of Donald Roy Crawley
Title: A Method for Recycling and Disposing of Waste Materials
Action: Request under Section 36 by Victor George Bennett
Decision: Issued .
Abstract
A decision by the Comptroller of the UK Patent Office had already decided the issue of ownership for the subject matter of this application. The requestor filed the same evidence before the Commissioner. The applicant was uncontactable and thus provided no evidence to support his claim to ownership. As the application had lapsed, the Commissioner required an undertaking from the requestor to grant royalty-free licences to any persons who availed themselves of the invention between the date the application had lapsed and the date any new application which is filed as a result of the section 36(1) declaration becomes open the public inspection. The requestor was declared to sole eligible person in relation to all the patentable subject matter in the application.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 29855/95 by Donald Roy Crawley and a Request under Section 36 by Victor George Bennett
BACKGROUND
This patent application corresponds to PCT application PCT/GB95/01686 (WO 96/02373) which was made in the name of European Environmental Recycling Ltd, giving Donald Roy Crawley as the sole inventor. A change to the applicant was later recorded indicating Donald Roy Crawley to be the sole applicant and nominated person.
On 3 April 2000, Victor George Bennett filed an Application for Declaration of an Eligible Person under Section 36(1) of the Patents Act 1990 and filed evidence to support this application on 30 May 2000.
The Commissioner must give the nominated person a reasonable opportunity to be heard. Mr Crawley was provided with an opportunity to be heard in this matter through his Address for Service in Australia. Following advice from that address that they no longer acted for Mr Crawley, this opportunity to be heard was extended to his address in Andorra along with a request for a new Address for Service within Australia. No response was forthcoming.
THE EVIDENCE
As Mr Crawley was not contactable, no evidence was filed to support his entitlement to this application.
The material provided by Mr Bennett in his Section 36 application most notably includes a decision by the Comptroller of the UK patent office dated 9 September 1999 in relation to the corresponding UK application and the corresponding PCT application and specifically as to the true inventors and rightful owners of these applications and any national and regional phase applications processed from the corresponding PCT application. That decision found that the assignment of PCT/GB95/01686 from European Environmental Recycling Ltd to Mr Crawley was invalid and that Mr Crawley had previously assigned his rights to any of his inventions to European Environmental Recycling Ltd. Therefore, European Environmental Recycling Ltd was still entitled to the patent application. That decision also found that a Mr Thomas Malcolm Kemp is to be named as joint inventor in addition to Mr Crawley. Other documents show that Mr Kemp has assigned all his rights in patent application PCT/GB95/01686 (and resulting national patents) to European Environmental Recycling Ltd and that they, in turn, have assigned all their assets including PCT/GB95/01686 to Victor George Bennett.
DECISION
As there was no evidence filed by Mr Crawley for me to consider I have only the evidence of Mr Bennett to consider. I must be satisfied that Mr Bennett's evidence, viewed without the benefit of rebuttal from Mr Crawley, is credible before I can rely on it. This evidence has already been the subject of a decision of the Comptroller of the UK patent office. In my opinion the evidence is credible and thus I see no reason to diverge from the Comptroller's decision. Therefore Victor George Bennett has sole entitlement to all the subject matter disclosed there.
APPROPRIATE IN ALL THE CIRCUMSTANCES
Before exercising the discretionary power of the Commissioner to make a declaration under section 36, the Commissioner needs to be satisfied that it is appropriate in all the circumstances. In this regard, I note that patent application 29855/95 has lapsed due to non-payment of continuation fees. It is possible that third parties may have begun exploiting the lapsed patent application in good faith once lapsing occurred. I consider it appropriate to protect the interests of such third parties who would be adversely affected by Mr Bennett filing a new application following the Section 36 determination. Thus, before I could make the Section 36 declaration, I requested Mr Bennett to make an undertaking to grant a royalty-free licence to any persons who availed themselves of or exploited or took definite steps by contract or otherwise to avail themselves of or exploit the invention in application 29855/95, where the exploitation occurred over the period from the date on which AU 29855/95 had lapsed to the date when any new application filed as a result of the Section 36(1) declaration became open to public inspection. Such a licence is similar to that provided under regulation 22.21 when a lapsed patent application or ceased patent has been restored under section 223.
The licence would apply from the date of filing of any new application to the date of expiry of a patent granted on the application, and may be limited to a personal licence, in the following terms:
The licence would belong to the third party who had exploited the invention.
The licence could be transferred with the business of the third party if it changed hands, but it could not be assigned or otherwise transferred.
The licensee could not sublicense under the licence.
On 19 December 2000, Mr Bennett filed a copy of such an undertaking, followed by the original on 2 January 2001. Following this undertaking I am satisfied that a declaration under section 36 is appropriate in all the circumstances.
DECLARATION
Under the provisions of Section 36(1) of the Patents Act 1990, I declare Victor George Bennett to be the sole eligible person in relation to all the patentable subject matter disclosed in Australian patent application no. 29855/95.
Pursuant to Regulation 3.8, Mr Bennett has 3 months from the date of issue of this decision under Section 36(1) of the Act to make an application under Section 29 of the Act.
Roger Howe
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : none
Patent attorneys for the requestor : Spruson & Ferguson
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