Douglas Ryan, Gary Stuart Heyden & Kenneth Allan Mackenzie v Supreme Protector Ireland Limited

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2002213674 in the name of DOUGLAS RYAN, GARY STUART HEYDEN and KENNETH ALLAN MACKENZIE

Title: Stabilisation of Particulate Material Using Wool Grease

Action: Request under Section 36 by SUPREME PROTECTOR IRELAND PTY LTD for a declaration regarding entitlement to an invention disclosed.

Decision: Issued 21 October 2005
Abstract

Request unsuccessful.
Evidence did not establish that the invention of using a surfactant in a wool grease composition came solely from John Shortis (for the requestor) rather than the currently named inventors. Evidence suggested that at least one of the inventors knew of mixing surfactants and wool grease before contact with Shortis. While there may be another invention in the actual methods Shortis used in creating the wool fat/surfactant mixtures, this is not relevant to this case.
A suggestion by the requestor to follow the approach advocated in Brisalebe Ltd v Bronwyn Searle [1994] APO 36 and allow an independent party from the Patent Office staff to inspect an earlier, identically-titled provisional application by the same applicants to ascertain whether it contained any reference to surfactants was not followed. If the use of a surfactant was not exemplified in the provisional this does not detract from applicant’s cases, because it is possible that the applicant could not put their inventive idea of using wool fat and a surfactant into practice at that point. While there may be a separate invention in the practical implementation of the idea, the present application concerns the idea itself which properly belongs to the applicant.
Costs according to schedule 8 awarded against Supreme Protector Ireland Pty Ltd.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2002213674 by DOUGLAS RYAN, GARY STUART HEYDEN and KENNETH ALLAN MACKENZIE and Request under Section 36 by SUPREME PROTECTOR IRELAND PTY LTD for a declaration regarding entitlement to an invention disclosed.

BACKGROUND

Patent application 2002213674 in the name of Douglas Ryan, Gary Stuart Heyden and Kenneth Allan Mackenzie (hereafter collectively referred to as “RHM”) was filed as PCT application PCT/AU01/01437 on 8 November 2001, claiming no priority. The application entered the national phase on 7 June 2004. A request under Section 36 was filed by Supreme Protector (Ireland) Limited (hereafter referred to as “Supreme”) on 28 July 2004. Following the filing of better and further particulars by Supreme on 28 October 2004, evidence in support was filed by RHM and Supreme by 5 January 2005. Following exchange of this evidence, evidence in response from each party was received by 8 April 2005, following a one-month extension being given to Supreme.
The hearing was held in Brisbane on 22 July 2005. Supreme was represented by Bill Anderson, patent attorney of Ahearn Fox, Brisbane. RHM was represented by Dimitrios Eliades of counsel, assisted by Brendan Nugent, patent attorney of Griffith Hack, Brisbane.
THE EVIDENCE
The supporting evidence for Supreme (the requestor) consists of a statutory declaration by John Shortis (hereafter referred to as “Shortis”) who alleges that he was the person who was responsible for the invention. He then assigned his invention to Supreme. The declaration includes 44 exhibits.
The applicant's (RHM) evidence in support of their claim consists of a statutory declaration by Anthony Allen Pynsent (hereafter referred to as “Pynsent”). It has no exhibits.
Supreme’s evidence in response consists of another declaration by Shortis, with a further 7 exhibits. RHM’s evidence in response is a second declaration by Pynsent, a declaration by Gary Stuart Heyden (one of the applicants – hereafter referred to as “Heyden”) with 1 exhibit, and a declaration by Douglas Ryan (hereafter referred to as “Ryan”) with 5 exhibits.
I will refer to the evidence in more detail, where appropriate, in my decision.
Preliminary Issue 1 – Objection to the Evidence
At the hearing Supreme put forward the view that much of RHM’s evidence in response was not strictly in reply to Supreme’s evidence in support, and they raised a “formal objection” to that evidence. In particular they objected to clauses 3-6 of Heyden’s declaration which gave evidence of experiments that “should have been made the subject of the evidence in support”. Supreme also objected to clause 3 of Pynsent’s second declaration where it was declared that a confidentiality agreement might exist between Shortis and another company Cooee Pty Ltd (hereafter referred to as “Cooee”).
In considering this, it must firstly be pointed out that matters before the Commissioner do not take place in a court of law. Rather the matter is being dealt with at a tribunal.
In Falkenhagen et al v Polemate Pty Ltd [1995] APO 32, the delegate noted:
“Concerning tribunals, it was said by Lord Denning M.R. in T.A. Miller Ltd. v. The Minister for Housing and Local Government and Another (1968) 1 WLR 992 that a tribunal (of this kind) is master of its own procedure provided that the rules of natural justice are applied, and that tribunals are entitled to act on any material which is logically probative, even though it would not be evidence in a court of law.”
Furthermore, Deane J., in Minister for Immigration and Ethnic Affairs v. Pochi 31 ALR 666 included this paragraph in his decision:
“These technical rules of evidence, however, form no part of the rules of natural justice. The requirement that a person exercising quasi- judicial functions must base his decision on evidence means no more than it must be based upon material which tends logically to show the existence or non-existence of facts relevant to the issue to be determined, or to show the likelihood or unlikelihood of the occurrence of some future event the occurrence of which would be relevant. It means that he must not spin a coin or consult an astrologer, but he may take into account any material, which as a matter of reason, has some probative value in the sense mentioned above. If it is capable of having any probative value, the weight to be attached to it is a matter for the person to whom Parliament has entrusted the responsibility of deciding the issue.”
This paragraph of Deane J. is relevant. Following it in this matter it is clear that I am not bound by the rules of evidence applicable in a court of law. As long as the rules of natural justice are applied, I am entitled to act on any material which is "logically probative" of the issues under consideration, and may apply whatever weight to the evidence I think it will bear.
In the present circumstances, applying the principles of natural justice, the question is whether Supreme has had an opportunity to answer the “new” evidence. In this regard I note that RHM’s evidence in response was sent to Supreme on 14 April 2005. This was some 3 months before the hearing. Therefore, Supreme had an opportunity to object and/or file further evidence. In addition, I note that this disputed evidence was addressed by Supreme in their submissions at the hearing. Clearly Supreme has had the opportunity to respond to the evidence. As such, I will continue with my decision with the evidence on hand.
Preliminary Issue 2 – Terminology
Throughout the evidence there is mention of a binder that is used in road base that goes by various names, but appears to be the same. It is variously named Dustex, Dustac, lignosuphate, lignin sulphate, lignosulphonate or lignin sulphonate. Neither Supreme nor RHM objected to any part of the evidence where different spelling or names were used. As such, I am prepared to conclude that there was tacit agreement by the parties that all these names referred to the same compound. Therefore, throughout this decision I will refer to this compound as lignin sulphonate, even when referring to parts of the evidence where it is identified using one of the other names listed above.
APPLICABLE LAW
Section 36(1) of the Patents Act 1990 reads:
"(1)If:
(a)a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and
(b)an application for a declaration by the Commissioner is made by one or more persons (the section 36 applicants) in accordance with the regulations; and
(c)the Commissioner is satisfied, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
(i)that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii)that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed."
In deciding a matter such as this the Commissioner is entitled to act on any material which is "logically probative" of the issues under consideration. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holdings Ltd's Application, (1979) RPC 523). In so doing, the Commissioner may consider the evidentiary weight to be applied in light of any doubts he or she may have as to the credibility of the declarants and may come to a view of events on the balance of probabilities which is different to that alleged by either party. Furthermore it is clear from the authorities (see, for example, Stamp v W J Powell Pty Ltd, (1918) 24 CLR 339) that it is incumbent upon an opponent to prove its case. Thus in this case the onus is on the Section 36 requestor, Supreme, to provide clear evidence to justify a finding that the inventors of record – Ryan, Heyden and Ken MacKenzie (hereafter referred to as “Mackenzie”) – are not the true and correct inventors of the invention which is the subject of this application.
In Row Weeder Pty Ltd v Nielsen and Others 39 IPR 400 the delegate considered a number of earlier decisions of the Commissioner and said the common theme from these was that a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the invention. This approach has been approved by the Administrative Appeals Tribunal in Upham v Commissioner of Patents and Another ([1998] AATA 852).
In arriving at this approach, the delegate in Row Weeder gained guidance from a number of decisions, including Harris v CSIRO 26 IPR 469:
"The Harris v CSIRO decision (sic) (26 IPR 469) decision puts forth a number of questions to consider. These are-: (1) what the invention(s) is/are of the person making the Section 36(1) request; (2) what the invention(s) disclosed in the specifications is/are of the person who made the patent application; and (3) whether one person has any rights in the invention of the other, and vice versa. The decision also suggests a more significant question of whether the invention would have occurred without a particular person's involvement."
The Invention
The invention relates to the use of compositions for stabilising particulate material. In particular, the composition is meant to stabilise soils to improve their hydrophobic properties. In this way their waterproof properties are improved and the soil is less susceptible to erosion. The invention finds use in many areas such as stabilising road base materials, piles of soil, sand piles, coal piles, etc.
As the title of the application suggests, the principle component of the composition is wool grease (or derivatives or components of it). The other principle component of the composition is a surfactant. The particular surfactant that is exemplified is a diamine type cationic surfactant.
The claims are as follows:
1.An aqueous composition for stabilising particulate material, the composition comprising wool grease, and a surfactant selected from the group consisting of a cationic surfactant or nonionic surfactant.
2.The composition of claim 1 comprising between 1%-70% wool grease and 1-20% surfactant.
3.The composition of claim 2 additionally comprising a binder.
4.The composition of claim 3, wherein the binder is a lignin sulphonate.
5.The composition of claim 4, wherein the amount of lignin sulphonate is between 0.1 %-30%.
6.A stabilised particulate composition comprising the composition of claim 1 together with particulate material.
7.The composition of claim 6 containing between 0.01%-20% wool grease.
8.The composition of claim 7 wherein the particulate material is selected from the group consisting of aggregate, clay, sandstone, crusher dust, soil, sand, coal, coal fines, mineral ores.
9.The composition of claim 8 wherein the particulate material additionally comprises fly ash.
10.The composition of claim 9 wherein the particulate material additionally comprises cement.
11.A stabilised particulate composition comprising the composition of claim 3 together with particulate material.
12.The composition of claim 11, wherein the binder is lignin sulphonate.
13.The composition of claim 12 containing between 0.01%-20% wool grease.
At the hearing, bearing in mind the questions set out in Row Weeder (supra), I questioned the parties as to what was the key inventive concept that RHM had allegedly obtained from Shortis. They responded that it was the addition of a surfactant to an aqueous composition of wool grease. It would then seem to follow that the key question I have to decide is: who put forward the idea to use a surfactant in the wool grease composition?
Supporting this is the fact that Supreme alleges that they are entitled to be sole applicants for the invention defined in claims 1, 2, 5, 12 and 13 and at least co-applicants for the invention defined in claim 3. They indicate that they have no entitlement dispute for the invention defined in claims 6, 7, 9, 10 and 11.
Supreme’s Evidence
The evidence put forward by Shortis for Supreme clearly establishes that Shortis has had a great deal of experience in creating emulsions/mixtures of wool grease with various liquids. Hydrocarbon solvents, water, detergents and alcohol are just some of them. His declaration sets out in detail what experiments he carried out in attempting to get wool grease and liquid to mix and for the wool grease to be maintained in solution. He produced mixtures of wool grease and hydrocarbon which he sold as anti-corrosion sprays under the names “Woolube” and “Ozspray”. He then worked on attempting to introduce water into his mixture and produced a product called “Flush”, which was a corrosion inhibitor for impellers and water-jackets in outboard motors. Another product was also developed which, when coated onto electrical devices such as electric drills, allowed them to be submerged in water with no current leakage occurring, and the drill operating underwater. This composition consisted of lanolin and D60 fine oil (a hydrocarbon solvent).
Shortis became involved with the named inventors of the present application by chance. His declaration sets out that in June 1999 he was manufacturing his “Flush” product for a company named Solas Propellers. Across the road from Solas Propellers was a computer company called Future Group. Pynsent was the manager of Future Group, and he asked Shortis if his product which allowed the electric drill to be submerged could be used on computers.
An arrangement was reached between Future Group and Shortis that he would be given a “grant” and have a shed made available to commence trials on computers and components with what Shortis calls “my product”. This “product” would appear to be the composition which consisted of lanolin and D60 fine oil. Future Group made payments to Shortis into a trust account (at least up until 25 May 2001) and organised testing of the computers treated with the product. The testing was carried out by Heyden at UniQuest.
During this time Shortis continued experimenting with wool grease mixtures. In November 1999 he states that he created another wool grease/D60 mixture, as well as a wool grease/kelp mixture.
In August 2000 there was meeting between Shortis, Pynsent, and the current applicants of the present application (Ryan, Heyden and MacKenzie). At this meeting Shortis became aware that his wool grease/D60 had been sent to Ryan who had started doing soil stabilisation tests. He states that Ryan had been unable to get a 50% water/lignin sulphonate mix to mix with Shortis’s wool grease/D60 product.
In subsequent months many other experiments, none of which involved surfactants, but some of which did contain lignin sulphonate, were carried out by Shortis. From his first declaration these experiments can be set out as follows (assuming the paragraphs in this declaration follow each other chronologically):
September 2000          wool grease/D60/water/lignin sulphonate (a binder used in road base)
December 2000          wool grease/alcohol (specifically DPM)
January 2001               wool grease/D60/lignin sulphonate/water
January 2001               wool grease/DPM
January 2001               wool grease/D60/water
February 2001            wool grease/DPM/polymer mix
February 2001            wool grease/D60/gloss paint
February 2001            wool grease/D60/varnish
March 2001                wool grease/alcohol/polymer
March 2001                wool grease/alcohol/lignin sulphonate/polymer
However, while these experiments show that Shortis has much experience in working with wool grease, as they do not involve diamine type surfactants or the like, they are not relevant to the present matter.
From Shortis’s first declaration the experiments where he apparently worked with wool grease and diamine type surfactants were:
December 1999-January 2000 wool grease/Readycote E16 diamine/water
February 2001 wool grease/diamine/water
May 2001 wool grease/diamine/water
I make the observation that there is no other disclosure of wool grease/diamine mixtures in Shortis’s evidence.
Put simply, Supreme’s case is that, while doing the above work for Pynsent, Shortis disclosed mixing surfactants with wool grease to RHM. As this is the key inventive concept, Shortis was entitled to be named at least co-inventor. As Shortis then assigned his rights to Supreme, they were entitled to be named as at least co-applicants of the present application.
RHM’s Evidence
Heyden’s declaration sets out his experience with wool grease mixtures. He states that he had conducted experiments involving the emulsification of wool grease from sometime in 1995 into 1999. He exhibits re-typed extracts from his laboratory notebook. The extracts were apparently re-typed to omit confidential information which was not relevant to these proceedings.
Heyden’s laboratory notes indicate that he attempted to make dust suppressants in an experiment that apparently started on 26 October 1998. This experiment (experiment 110) involved mixing wool grease with TPD, which stands for Tallow Propyl Diamine. His laboratory notes record further experiments with wool grease/surfactant mixtures on 18 November 1998, 13 February 1999, 5 March 1999, 15 August 1999, 23 August 1999, 1 March 2000 and 1-2 April 2000.
Ryan’s declaration sets out that he had been trialling a lignin sulphonate binder product in 1995 for road composite stabilisation. He became aware that there was a leaching effect with the binder so that the composite was weakened by the binding effect of the binder being diluted in water. As a result he began to search for a solution to the leaching problem.
Ryan states that he tried several approaches including using cement and polymers, but no totally successful solution was found. He then spoke to MacKenzie (a consulting staff member of his company), who introduced him to Heyden. At a meeting on 14 May 1999, Heyden, Ryan and MacKenzie discussed a wetting agent named “Wetdown” and its possible use as a moisture repelling product so that the leaching problem with the lignin sulphonate binder could be overcome.

On 14 January 2000 Ryan received a sample of a wool grease based product from Heyden. This product was solvent based. Specifically the solvent was D60. Trials started with this product to ascertain whether it could be used to waterproof soils. During the course of these trials (possibly sometime around April 2001) a product known as Wetbloc WB50 was trialled. Ryan states that WB50 contained wool grease, lignin sulphonate and a diamine-based cationic surfactant. The surfactant was sold under the name Redicote E16.
Much of the evidence of Pynsent was concerned with the relationship between Shortis, Cooee and Future Group, as well as statements regarding payments made to Shortis. He also states that the intellectual property developed by Shortis related to refining wool grease and suspending derivatives or components in a hydrocarbon fluid. Work was done by Cooee to further develop Cooee’s “commercial product” (by which I take Pynsent to be referring to the wool grease/D60 mix), however, no suggestion for the use of surfactants came from Cooee. That suggestion came from Heyden. It would appear that the suggestion was made on 28 November 2000, and that a 1kg sample of diamine type surfactant (Redicote E16) was supplied from Akzo Nobel Pty Ltd in February 2001. He also states that a confidentiality agreement existed between Shortis and Cooee, and that Shortis had no right to assign anything regarding the wool grease mixtures to any one else.
The essence of RHM’s case is that the mixtures initially produced by Shortis did not contain any diamine type surfactant. Rather, it was Heyden (and possibly Ryan) who introduced the concept to Pynsent (as Cooee’s manager) and Shortis.
DECISION
In the evidence of Shortis he clearly states that he was working with wool grease and diamine (i.e. surfactant) mixtures for soil stabilisation before he had met with RHM. This particular statement is made in paragraph 19 of Shortis’s first declaration which states:
“Towards the end of 1999, and the early few weeks of 2000, I tried a material known as Readycote El6 diamine, an additive that is used to emulsify bitumen with water for use in road construction. I discovered that if I “balanced” the mixture – that is, pH, temperature, and sequence of steps – I could put together a mixture in which the wool grease was suspended and which could be diluted by water. That is, I could use water as a diluent.”
The clear inference that I believe I am supposed to draw then is that, since Shortis had already worked with surfactant/wool grease mixtures before he met the applicant’s, he was the one who had made the suggestion to RHM of the particular compound that is claimed in the present application.
In their submissions RHM sought to criticise this statement. They pointed out that in the paragraphs immediately before this paragraph the experiments were occurring in November 1998, while in the paragraphs immediately following the experiments were occurring in February 1999. They also highlighted the chronological arrangement of other parts of Shortis’s declaration to highlight that this paragraph was out of step with everything else. Furthermore, they indicated that this statement was also contradicted by Shortis’s statements in paragraph 48 which began:
“Some time in February 2001 I started test [sic] using diamine in order to try and develop a process for the emulsification of wool grease in water.”
The question asked was how can Shortis have started in February 2001 when he had already “started” in 1999/2000?
Supreme in their submissions on this point said that the statements of paragraph 19 were not out of order if it was taken in context.
In my opinion, the view of RHM is to be preferred. Looking firstly at Supreme’s submission regarding context, I believe I am to infer that the paragraphs leading up to this statement dealt with Shortis’s efforts in trying to find a way of replacing his hydrocarbon solvent with water (leading to his use of surfactants), and the paragraphs following 19 dealt with another set of experiments which were running concurrently with his solvent-replacement experiments.
While it may have been the case that the experiments were running concurrently, it still does not explain the inconsistency between paragraphs 19 and 48. The object of both experiments in paragraphs 19 and 48 was exactly the same – the emulsification of wool grease in water. In paragraph 19 Shortis “tried” a surfactant, while in paragraph 48 he “started test using” a surfactant (my emphasis). If he had already tried a surfactant in 1999/2000 then Shortis surely would have said he tried a surfactant again in February 2001.
In support of his statement in paragraph 48 that he started working with surfactants, Shortis provided exhibit JS-032 which contains a copy of a sheet of paper entitled “Ph test on hydro & wool grease stock” and a copy of six pages from a 2000 diary for the days dated 27-31 December and the “Notes” page of the diary. Given that the diary pages these notes are written on are from a diary printed for 2000, and Shortis stated that this work was carried out in February 2001, it could be said that these pages do not support his statement since they are for a different time. However, on the diary pages there are various notes dated “13/3/01”, “15/3/01”, “27/3/01” and “11/FEB/2002”. Therefore, I take the view that these dairies may not have been used as a recording of what happened on a particular day. Rather, they appear to have been notebooks and not tied to any particular date. Nevertheless, the dates suggest something occurring around the start of March 2001 (ignoring the date of 11 February 2002 which, in any case, is written in different handwriting). The notes in his diary clearly disclose a step of “ADD DIAMIN [sic]” to heated wool grease, and a note on “REDICOTE E-16” whose “supplier” was “AKAZO [sic] NOBEL CHEMICALS” in the United Kingdom. This indicates the Shortis was at least aware that he could use diamine type surfactants in at least March 2001.
On the other hand, in support of his statement in paragraph 19 that he tried surfactants with wool grease, no evidence is provided. There are no notebook pages, no sheets of paper setting out experiments and no use of the words “surfactant” or “diamine”.
Therefore, in line with RHM’s submissions, little weight can be given to Shortis’s statement in paragraph 19 of his first declaration that he worked with diamine in late 1999/early 2000. Hence, on the evidence before me I believe that it is more probable that Shortis’s first use of surfactants was in late February /early March 2001. Nevertheless, given that this is still some 8 months before the filing date of the present application it could still be said that the use of a diamine-type surfactant arose from the work of Shortis, and that the composition claimed could be Shortis’s invention. Consequently, I will still have to look at RHM’s evidence in support of their claim.
Regarding RHM’s claim that they were the source of the idea to use a surfactant, the evidence of Pynsent would appear to support the view that he acted as a “middle man” to a certain extent, acting as an information conduit, with little input into the actual formulations, etc for the wool grease mixtures, but involved in setting up meetings, etc. I will note here that, while he states that Shortis was bound by a signed confidentiality agreement, that agreement was not produced as evidence.
Turning to the evidence of Ryan, he states that he, Heyden and MacKenzie had a meeting at which a product called “Wetdown” was discussed. While the notes Ryan made at, and immediately after, the meeting do include such phrases as:
“Wetdown – surfactant – aids water into soil”,
and
“Wetdown a surfactant that assists moisture penetration”,
there is nothing to suggest that what was discussed was a wool grease/surfactant product.
Ryan also states that, during the course of his work with Heyden they started trials using a composition known as Wetbloc WB50 which contained wool grease and a diamine-type surfactant. However, while it is quite clear from Ryan’s notes in exhibit DR-05 that Wetbloc had a main base of “woolgrease from sheep” which was “emulsified using solvent”, there is no mention of surfactants or diamine. On the two exhibit pages that Ryan indicates disclose the use of diamine, there is no mention of diamines or even surfactants. The words “Wetbloc Concentrate” appear, but while Ryan states that this is a mixture of wool grease and diamine, there is no corroborating evidence for this in his exhibits.
In Heyden’s evidence are exhibited his work on wool grease mixtures in the form of retyped lab notes rather than originals. He states that this was done so that the confidentiality of material not relevant to this matter could be preserved. No objection was raised by Supreme to the accuracy of the retyping. As such, I am prepared to accept that the exhibits are an accurate record.
In the labs notes, as I noted above, there are descriptions of experiments in which wool fat (i.e. wool grease) was mixed with water and a compound named TPD. TPD stands for Tallow Propyl Diamine, and this is a surfactant. The mixtures are stated to be for use as “Dust Suppressants”, “Concrete Mould Release Agent” and “Road Stabilisation”. The experiments for road stabilisers appear to have begun around August 1999. Such experiments strongly suggest that, when Heyden was involved with Ryan, MacKenzie and Shortis he was aware that surfactants could be mixed with wool grease. That is, Heyden (at the very least) had the idea for a composition that included wool fat and a surfactant, not Shortis.
Supreme sought to criticise Heyden’s evidence by saying that there was no evidence that his experiments involved the formation of a wool grease emulsion. They pointed out that, as was evident from Shortis’s evidence, an emulsion was not formed merely by mixing the components together. Rather a particular sequence of steps needed to be followed, and there was no evidence of these steps in Heyden’s evidence. RHM responded indicating that just because the steps weren’t recorded does not mean that they were not carried out. As indicated by Mr Eliades, a single word may speak volumes to the person who made the notes. I note that this could certainly be said to be the case with Shortis’s evidence where the detail that he sets out in his declaration as far as the steps he took in his experiments is in no way supported by his notes. As such, I do not believe that this is a valid criticism of Heyden’s evidence. In any event, this submission by Supreme does not seem relevant in this matter. The invention that RHM is claiming is not the method of producing the emulsions, rather it a particular composition. The question to be answered is where the idea for the composition came from.
There was much in Pynsent’s declaration about Shortis being employed by either Future Group or Cooee. Shortis on the other hand states that he was not employed as such. What he was given was a “grant” and he performed experiments. I observe that the four bank statements provided by Shortis cover a large range of time but clearly show payments in at least July 1999, June 2000, February 2001 and May 2001. Looking at the pages of bank statements, while one statement page provided does not cover a week in its spread of dates, for July 1999 and February 2001 it would appear that these “grants” were weekly payments. . More payments may or may not have been made. They were apparently paid into a trust account for Shortis “developing and testing the product”. It would appear that the “product” was a lanolin/D60 emulsion for water proofing computers.
In my opinion, the reasonable inference is that Shortis was doing work at the request of Pynsent. Characterising the payments as “grants” does not avoid the issue. Notwithstanding the paucity of bank statements (and apparent large gaps in payments), there is nothing in Shortis’s evidence that, at least up until 25 May 2001, there was any payment missed. While the entity actually making the payment changes between Pynsent and Futures Group, Pynsent is involved in each. The reasonable inference is the same – Shortis was doing work at the request of Pynsent.
Furthermore, I make the observation that a “grant” is more of an altruistic gesture. That is, a giving of something without expecting anything in return. It is difficult to see how the payments made to Shortis were actually grants. They were clearly being made to assist Shortis in the development of a commercial product that would be of benefit to a commercial entity.
It would also appear that the reason Shortis was being used by Pynsent was because of the extensive experience Shortis had in producing wool fat emulsions. Shortis’s own PCT application (published as WO 03/097775) supports this. This application claims particular methods for emulsifying wool fat with other components.
It would also appear, given Shortis’s inclusion of lignin sulphonate into his experiments after meetings with Ryan, Heyden and MacKenzie, that he was assisting in creating suitable wool fat emulsions for soil stabilisation. As Shortis clearly states, Ryan was having difficulty in getting various components to mix. While, as noted above, Shortis does state that he started looking at stabilisation using wool fat from “the middle of 1998” which allegedly lead him to try a diamine surfactant at the end of 1999, for exactly the same reasons as set out above in relation to paragraph 19 of Shortis’s first declaration, there is no evidence to support this, and little weight can be given to the statement.
From this, given that Shortis did not investigate soil stabilisation compositions until after his meeting with Ryan, Heyden and MacKenzie, the conclusion is that Shortis did not concern himself with the relevant compositions for soil stabilisation until being told of them. Heyden clearly knew that surfactants and wool fat could form part of such a composition. Shortis’s contention that RHM did not know of mixtures of wool fat and surfactants before he introduced them is unsustainable. On balance it would appear that the idea for the composition came from RHM, and not Shortis. Shortis’s contribution to the soil stabilisation “project” (if I may call it that) appears to have been his skills in emulsifying wool fat with other components (given that Ryan had been “unable to get the 50% water and lignin sulfonate to mix with hydrocarbon based product”).
I am aware that it may be argued here that, given that it was Shortis who was used to produce the wool fat emulsions, Heyden’s lab notes where he describes supposed mixtures of wool fat and surfactant are not be trusted. However, I reiterate that the invention allegedly obtained is the idea for the composition per se, not the method of producing the mixture. The criticisms of Heyden’s evidence are not justified.
The other point that Supreme made with regard to the dependability of Heyden’s evidence related to the provisional application he made. In his evidence Heyden states that, having conducted experiments with wool grease/surfactant formulations, he filed a provisional application PR1319 entitled “Stabilisation of particulate material using wool grease” on 8 November 2000. The present application (filed exactly one year later) has exactly the same title. However, the present invention was not associated with this provisional application. The question Supreme seemed to be asking was that, if Heyden had developed a wool grease/surfactant mixture by the time he filed his provisional application, and given that this was the invention in dispute in the present matter, why was the provisional not associated with the complete application? Was there no mention of surfactants in the provisional? The strong inference was that Heyden had not added surfactant to wool grease before 8 November 2000. It would then follow that it was Shortis (who started working with diamine in March 2001) had told Heyden in the intervening year and RHM added this to the present application.
The provisional application is not in evidence. During the hearing Mr Anderson made the suggestion that I follow the approach advocated in Brisalebe Ltd v Bronwyn Searle [1994] APO 36 and allow an independent party from the Patent Office staff to inspect PR1319 to ascertain whether it contained any reference to surfactants. I do not agree that this is an appropriate course of action because, in my opinion, what is (or is not) disclosed in the provisional is irrelevant to my determination in this case.
If the provisional application did disclose use of a surfactant in an aqueous wool fat composition that would support RHM’s position. However, if the use of a surfactant was not exemplified in the provisional this does not detract from RHM’s cases, because it is possible that RHM could not put their inventive idea of using wool fat and a surfactant into practice at that point. The practical implementation of the idea may, therefore, have needed to be worked through. This appears to be what Shortis was paid by Pynsent to do on behalf of RHM. While there may be a separate invention in the practical implementation of the idea, the present application concerns the idea itself which properly belongs to RHM.
CONCLUSION
Taking in to account Heyden’s evidence of his lab notes and the lack of weight that I have given to Shortis’s statement that he started using surfactants in late 1999, it follows that, on the evidence before me, Supreme has not discharged his onus to make its case that it was Shortis’s suggestion to add surfactants to aqueous wool grease compositions. Shortis’s position that RHM had not considered including surfactants until he made the suggestion is unsustainable. Clearly, the use of surfactants with aqueous wool grease compositions was known to at least Heyden in 1998, which was well before Shortis started working with RHM. In my view Shortis was employed to implement RHM’s idea of mixing wool fat and a surfactant, which is the invention that the parties agreed, was disclosed by the application.
Supreme’s request is unsuccessful.
COSTS
The usual practice for section 36 matters is that costs are awarded according to schedule 8 unless there are circumstances justifying a variation. I see no reason (and none was advanced by either party) to vary the costs. As to whom to award costs against, the usual practice is that costs follow the event. In this matter Supreme has not been successful. I see no reason vary this practice. I award costs under Schedule 8 against Supreme.
GREG POWELL
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Griffith Hack, Brisbane
Patent attorneys for the requestor : Ahearn Fox, Brisbane

[2005] APO 47

14 October 2005