E S & M J Heard Pty Ltd v Lawrence Colin Phillips, Farmers Tractors Australia Pty Ltd and Merebin Pty Ltd

[1994] APO 5

official notice

decision of a delegate of the commissioner of patents

Application        :  No. 588690 in the name of
E S & M J HEARD PTY LTD

Title:  Improvements relating to agricultural machinery

Action: Opposition under section 59 (Patents Act 1952) by
(1) LAWRENCE COLIN PHILLIPS
(2) FARMERS TRACTORS AUSTRALIA PTY LTD
(3) MEREBIN PTY LTD;
hearing.

Decision:  Issued             . 

Consideration of whether a demonstration of devices before the priority date was in confidence.

Certain claims found not novel.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 588690 by E S & M J HEARD PTY LTD and opposition thereto under section 59 of the Patents Act 1952 by (1) LAWRENCE COLIN PHILLIPS, (2) FARMERS TRACTORS AUSTRALIA PTY LTD and (3) MEREBIN PTY LTD.

background

Patent application 588690 for an invention entitled "Improvements relating to agricultural machinery" was filed by E S & M J Heard Pty Ltd ("Heard") on 15 May 1986 accompanied by a provisional specification.  A complete specification was filed on 15 May 1987 and was allocated the application number 73114/87.  The application became open to public inspection on 19 November 1987.

Acceptance of the application and complete specification was advertised on 21 September 1989, the accepted application being then renumbered as serial number 588690.  Separate notices of opposition were filed by  Lawrence Colin Phillips ("Phillips"),  Farmers Tractors Australia Pty Ltd ("Farmers Tractors") and  Merebin Pty Ltd ("Merebin") on 21 December 1989.

The evidence stages for the oppositions were completed by
21 February 1992.

The matter was set down for hearing in Adelaide on 29 & 30 June 1993.  Heard was represented by Mr Alun Thomas, patent attorney of Collison & Co and the opponents Phillips and Merebin were represented by Mr Reg Wray, patent attorney.  At the hearing Mr Wray indicated that he understood opponent Farmers Tractors was in liquidation and that its opposition had been withdrawn.  Mr Thomas stated that he believed that to be the case.  However no formal written notification to that effect seems to have been filed at the Patent Office.

As the application was advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3, are applicable.

The notices of opposition variously state that the grounds of opposition are those specified in paragraphs (a), (c) through (i) of section 59 of the Patents Act 1952. At the hearing submissions were only directed to the grounds of prior publication, lack of novelty, obviousness and non-compliance with section 40 i.e. grounds specified in paras (e), (g), (h) and (i).

SPECIFICATION

The invention relates to agricultural machinery and particularly to tillage apparatus.  The specification describes the background to the invention in these terms:

"The problem to which this invention is directed relates to a problem of being able to provide weed removal using tillage apparatus which will be both relatively economic to manufacture, relatively light to pull and which will provide effective weed reduction without unnecessary disturbing the soil.

It is well known to drag vertically aligned spikes across the ground but these seem to need a reasonable ground penetration to effect adequate weed kill and removal.

In dry areas, breaking the soil up can cause excessive moisture loss and furthermore allow soil fines to be accessible to wind erosion.

The efficiency therefore of being able to remove weeds with a minimal amount of soil disturbance is the key to making an effective tillage device.

It is self evident that a further problem relates to providing such a device which will provide continuing effective operation without the need for continual clearing of the device or maintence (sic)."

The specification then describes the tillage apparatus of the invention as including a draught frame which has mounted thereon a chain.  The chain has fixed thereto along its length a plurality of extending tynes.  Furthermore the chain is mounted in a way to allow rotational freedom relative to the draught frame so that when drawn across ground by contact of the tynes with the ground, the chain can rotate about an axis essentially coinciding with its elongation.  By that rotation the tynes provide a tillage effect on the ground.  I understand tillage apparatus of this type is sometimes termed "prickle chain harrows".

Various preferred embodiments of the invention and preferred constructional features are described.  These include working arrangements of draught frames when multiple chains are used, the nature and orientation of the tynes on the chain, and the type, size and weight of chain used.  As to the type of chain, the specification indicates a preference for one that is inherently heavy, something "normally used for anchors for large boats" being an example indicated.  In embodiments described the tynes are rod shaped with essentially a smooth external leading edge surface to thereby reduce debris pickup.  Each chain link can have several tynes fixed thereto, such as by welding.  A preferred disposition of a chain in the working of the invention is given as being aligned approximately 45 degrees to a forward draught direction.

The specification ends with 20 claims.  Claims 1 and 14 are independent claims to tillage apparatus.  Reproduced below are a number of the claims and brief comments about the others.

"1.Tillage apparatus which includes a chain and draught frame adapted to so position said chain relative to the ground so that the chain is adapted to rotate on drawing across ground to be tilled, a means connecting said chains to the draught frame allowing for rotational freedom of said chain relative to the draught frame about substantially a centre of direction of elongation of the chain, a plurality of outwardly extending tynes positioned along the chain to provide for a tillage effect to the ground, each tyne shaped and positioned so as to provide for clearing of debris from each tyne during use.

2.  Tillage apparatus as in claim 1, further characterised in that the chain is comprised of links each of which are such as to provide substantial weight to assist in providing for a digging action of each of the tynes.

3.  Tillage apparatus as in either of claims 1 or 2 further characterised in that each of the tynes is shaped and positioned so as to have a leading edge which is rearwardly inclined relative to a forward draught direction whereby to assist for clearing of debris therefrom during use."

Claims 4 to 13 append directly or indirectly to claim 1.  Claims 4 through 8 further define the chain or the tynes, while claims 9 and 10 require the chain to be angled to the forward direction of travel of the apparatus.  Claim 11 defines that the draught frame supports two chains, while claim 12 specifies that the draught frame includes a medial member and two transverse arms and the manner of support of two chains on that frame.

"14.Tillage apparatus comprising of draught frame having a medial frame member and two outwardly extending transverse arms one to each side of the medial frame member, a plurality of chains supported by the draught frame to so position each of the chains relative to the ground so that each of the chains is adapted to rotate on drawing across the ground to be tilled, each of the chains being supported for rotation about a centre of direction of elongation of the chain and each chain being comprised of links having a substantive size to provide substantive weight to assist in a digging of tynes into ground over which it will be pulled, each of the tynes being secured to a chain link such that the tyne has a leading edge substantially rearwardly inclined relative to the direction of elongation of the chains so as to assist in shedding of debris that otherwise might be caught and wound around the tyne leading edge, a first of such chains being supported so as to extend from a front of the medial frame member to a first outermost end of the first transverse frame member, a second chain being supported from a front of the medial frame member to an outermost end of a second transverse frame member, a third chain being supported from an outermost end of the said first transverse member to a rearwardmost end medial frame member, and a fourth chain being supported from an outermost end of the said second transverse frame member to a rearwardmost end medial frame member, ground engaging wheels supporting the draught frame, draught hitch means forming a part of the medial draught frame, and means adapted to lift at least part of the transverse frame member relative to the remaining draught frame to provide a reduced width for transport and storage purposes." (sic)

Claims 15 to 18 append to claim 14 and characterise the chains or the tynes.  Claim 19 is a typical omnibus claim to tillage apparatus, and claim 20 defines a method of tilling using apparatus as defined in earlier claims.

EVIDENCE

For Merebin, evidence in support comprised declarations by
    . Neil Bennie, a farmer of Wirrulla, S.A.  and
    . Stephen Erlandsen, a Victorian Public Servant of Mildura.

For Phillips and Farmers Tractors, evidence in support comprised declarations by
    . Reginald Wray, a patent attorney of Perth, W.A.
    . Peter Wahlsten, a director of Farmers Tractors
    . Laurence Phillips, a machinery designer of Merriden, W.A.
    . Donald Stanley, a farmer of Kalannie, W.A.  and
    . Robert Walker, a farmer of Applecross, W.A.

Heard's evidence in answer to all oppositions comprised declarations by

. Anthony Miller, a farmer of Wirrulla, S.A. and coinventor of the present invention  and

. Edward Allan Alcock, a warden at Roseworthy Campus, S.A.

Laurence Phillips filed a declaration as evidence in reply on behalf of opponents Phillips and Farmers Tractors. 

Merebin filed two declarations as evidence in reply made by
    . Neil Bennie and
    . Stephen Erlandsen.

On 22 June 1992, after the normal evidence stages had been completed, a declaration by Eric Yates was filed on behalf of Merebin.  No application was made for special leave to adduce this evidence.  Mr Wray indicated that he had no instructions to pursue any application to formalise this declaration into the proceedings and Mr Thomas indicated his client did not consent to the declaration being introduced.  Accordingly I indicated that I would disregard it.

A summary of the main aspects of the evidence follows.

Evidence in support

The evidence of Bennie is that in 1984 he fabricated a prickle chain to use on his property, the device being a chain having short spikes welded on each link.  He had made this device after seeing and discussing the operation of a chain device at the Miller property.  In 1985 he built a separate frame for a similar prickle chain of "about 100 foot length".  He says Anthony Miller helped to make the frame and the device was used on his and the Miller property in 1985.  Bennie says he displayed this device at the Dowerin Field Days in Western Australia in September 1985.  Phillips confirms that this device was so displayed in 1985.  The first part of the video being Exhibit NB-2 is said to show this device.  I note from the video that the spikes on the chain of this device were welded to extend laterally of a chain link.

Stanley says he made a prickle chain and used it during the 1981 and 1982 seasons.  He also says that the spikes extended laterally of the chain links.  Walker says he made a rotating chain harrow in the early 1980's and used it for 4 years.  He says that the chain was "ex-anchor chain and the spikes were both straight and bent at various angles".  The declarations of both Stanley and Walker are short - there are no exhibits which confirm the nature of the respective prickle chains.

Phillips has been involved with machinery and tractor design and manufacture for some 20 years.  He refers to some designs of rotating tyne harrows he devised in 1985 and 1986 evidenced by several provisional patent applications in his name.  These applications lapsed and thus were not officially published but Phillips exhibited copies to his declaration.  These harrow devices did not use a chain.  He refers to another of his designs the subject of patent application 75859/87 - this design comprised a plurality of interconnected tyne elements forming a elongated chain-like device.  He also refers to application 20673/83 by Jericho which discloses a rotating tyne harrow which has flexible tynes fixed to a rotatable elongated bar.

Erlandsen says that

"In early 1986 several Victorian farmers contacted me in my capacity as Senior Planning Officer responsible for Land Protection as a result of an article in "Stock Journal" which referred to Prickle Chains and Rotary Harrows.  The article told of rotary harrows/prickle chains being developed by some farmers at Wirrulla in South Australia."

He says that arrangements were made to travel to Wirrulla and inspect the devices.  Erlandsen says that he, Eric Yates, a farmer of Werrimull Vic,  Mark Stoekel, a farmer of Renmark S.A.,  and Alan Alcock, then a farmer and agent of Loxton S.A. travelled to Wirrulla on April 1986 .  They visited the properties of Bennie and Miller in 8 April 1986 and saw prickle chain harrow devices.  Erlandsen says he took colour slides of the devices at the Miller property (Exhibit SE-2 are said to be photographic prints of those slides).  He says that Alcock made a video of the Miller devices, and he believes the second part of the video tape exhibited as Exhibit NB-2 to Bennie's declaration is a copy of that recording and shows the devices which the group viewed.  Erlandsen says that at "no time were we told that the information which had been imparted to us was confidential".

Bennie confirms the statements of Erlandsen about the group inspecting machinery in April 1986.  Concerning the Miller device, he says that the second part of the video of Exhibit NB-2 accords with his recollection of the demonstration in 1986, and shows a rotary harrow which "is identical or substantially identical" to the device of the opposed application.  He further says that prior to that demonstration or at it, he was "not advised either orally or in writing that the demonstration was in any way in confidence".

Evidence in answer

Miller says he is one of the 4 inventors of the subject invention which he refers to as the Millman Prickle Chain.  He acknowledges that a demonstration of a prickle chain harrow occurred on 8 April 1986.  In clauses 3 and 4 he says this:

"3. THAT it was my understanding (and also I believe the understanding of the others present) that Mr Erlandsen was acting in his capacity as an officer of the Victorian Department of Conservation and Environment when witnessing the demonstration of the prickle chain harrow.  It was my belief that his position imposed upon him a degree of discretion with regard to the equipment demonstrated to him on that day.  Furthermore, it was my understanding that this was a private disclosure, accepted as such by Mr Erlandsen  and the others.

4.THAT I had shown the harrow presuming Mr Erlandsen to be acting in an Official capacity and therefore under an obligation of confidentiality."

Miller also indicates his belief that Mr Bennie "fully understood the circumstances surrounding the demonstration and the need for discretion".

Miller also says that the demonstration "was primarily for experimentation" and that the prickle chain harrow demonstrated on 8 April 1986 was an early demonstration version.  He says that the Bennie device shown at Dowerin was "a totally different concept from the one that is now being patented".  His evidence implies that the invention addresses the problem of trash build-up in prickle chain harrows by providing tynes shaped and angled so as to clear debris in use.

Miller concludes by saying that claims 1 to 13 are to apparatus "similar to that disclosed" to persons on 8 April 1986 but that claims 14 to 19 are to a more sophisticated version invented subsequent to that demonstration.

Alcock says that Bennie visited him at Loxton in 1985 and had mentioned that work was occurring in the Wirrulla district to develop a prickle chain harrow.  Soon after that visit Alcock told Stoekel about this work and he believes Yates and the Victorian Department of Conservation and Environment may have learnt of these developments through Stoekel or Yates.  Subsequently Alcock says Stoekel informed him a small party was to go to Wirrulla to meet Bennie.  He says the "costs of the expedition were bourne by the Victorian Department of Conservation and Environment and the expedition was therefore at the invitation of the Department". 
Alcock says they first visited Neil Bennie's property then later visited the Miller's property.  He says he "was unaware that we would be visiting the property of Tony Miller.  I believe the visit to Tony Miller's property was arranged by Neil Bennie."  He also says that he "asked Tony Miller for permission to film the demonstration of his prickle chain harrow and he gave his permission.  I believe that he gave his permission on the basis of our association as friends since schooldays."  Alcock says that he understood the demonstration at the Miller property "not to be a public disclosure" and that he had "no reason to believe that I was free to deal with the information that I had received".  He further says that

"Confidentiality during the visit was not specifically mentioned but the circumstances were such that we were being invited on the basis of being trusted confidants."

Evidence in reply

Bennie says that there was "no confidentiality associated with the demonstration at the Miller's place on April 8 1986."  He says the Miller's prickle chain was well known and was the gossip of the local area and that numerous visitors had inspected both his and the Miller's prickle chain designs in early 1986.  Bennie in effect disputes Miller's evidence that the Miller device demonstrated to the group was a demonstration version.  In reply to Alcock's evidence, Bennie states that he did not organise the visit to the Miller's property.

Erlandsen indicates, in effect, that nothing associated with the circumstances of the disclosure at the Miller's property implicitly or explicitly placed on him an obligation of confidentiality regarding what he saw or heard about the prickle chain harrows demonstrated.  He also says that he was invited to travel to Wirrulla by Yates in Yates' vehicle, that he "had no part in the organisation", and that he did not know Bennie or make any arrangements with Bennie before the trip.  He says that each of the party paid for their own meals and accommodation but that the then Victorian Department of Conservation, Forests & Lands "provided assistance to Eric Yates to the extent of $200 to offset the running costs of his private vehicle".

Regarding the equipment seen at the Miller's property, Erlandsen says that he cannot discern any notable difference between what he saw demonstrated and recorded on the video and his photographs and what is described and illustrated in the opposed application.

Phillips' second declaration refers to confidentiality issues concerning the 8 April 1986 demonstrations at Wirrulla but, as Phillips was not present, his evidence on this point is of little value.

SUBMISSIONS

Mr Thomas initially raised the question whether Merebin had locus in the opposition action since its locus, if any, seemed to rely only on two designs for tillage apparatus filed after the filing of the opposed application.  Following submissions by Mr Wray on the point, Mr Thomas effectively conceded Merebin did have locus.

Mr Wray submitted that given the conduct of the persons involved and the circumstances of the demonstration at the Miller's property, the only conclusion was that the disclosure of Miller's prickle chain harrow was not in confidence.  He said there was a conflict in the evidence on the point and in deciding whether or not confidentiality existed, the civil standard of proof was applicable, ie. based on the balance of probabilities (per Jarvis v. Doman 3 IPR 300). He submitted that the demonstration did not seem to take place in circumstances where there was any special relationship implying an obligation of confidence. Even if the demonstration was confidential, on the basis of Wheatley's Application 2 IPR 450 Mr Wray submitted that the prior use had been a commercial one.

Regarding novelty and obviousness, Mr Wray confined his remarks to claims 1 to 13 and indicated that the opponents made no claim against claims 14 to 19.  He submitted that the apparatus of claims 1 to 13 had been published by prior use at the demonstration on the Miller's property before the priority date.  Further, he submitted that the use before the priority date of other prickle chain harrows which had rods welded to chain links, as mentioned in the evidence of Phillips, Walker and Stanley, also rendered claim 1 not novel.  He contended that the claim definition in relation to the tynes was broad and encompassed the prior arrangements where rods were affixed to chain links to extend at right angles to the longitudinal extent of the link and the entire chain length.

On the question of confidentiality of the demonstration, Mr Thomas submitted that a duty of confidence does not have to be comprehended by a person for it to exist.  He submitted that the circumstances of the demonstration were such that a duty of confidence did apply to those attending.  He referred to the "reasonable man test" in the cases of Coco v. A N Clark (Engineers) Ltd [1969] RPC 41 and Riekie v. M J McGrath Pty Ltd (1986) AIPC 90-311. Mr Thomas further submitted that it was not uncommon for country people such as farmers to discuss and view their respective innovations in farm machinery, to test and experiment with them and get feedback from others before commencing patenting procedures. He said that parties involved in such discussions or tests respected an individual's rights in a way implying an existent duty of confidence.

Mr Thomas referred to the provisions of s.158(1)(i) of the 1952 Act and submitted that any publication of the invention by the demonstration fell within this provision, and thus did not render the disclosure a publication to deny novelty, since Erlandsen was an officer of a State making an investigation of the invention.  He said Erlandsen had a duty to keep the publication in confidence.   Mr Thomas also submitted that the demonstration was for the purposes of "reasonable trial only" and the applicant was also entitled to the benefit of s.158(1)(h).

As to whether the demonstration may have involved commercial dealings in the invention he submitted that there was nothing in the evidence to indicate any dealings by the Millers suggesting an offer for sale of the invention.

Referring to claim 1, Mr Thomas said the definition,

"each tyne shaped and positioned so as to provide for clearing of debris from each tyne during use",

limited the tyne construction by the result specified.  Accordingly he submitted there was no proof that the early prior devices of Bennie and Walker were constructed with the functional limitation as claimed.

In response to the defences based on s.158 of the 1952 Act, Mr Wray submitted that the onus lay with the applicant to establish that the circumstances were such that the relevant provisions applied in this case.  He argued that in his opinion mere disclosure to an officer of a State department does not bring the matter within the s.158 provisions.  He said that nowhere does Erlandsen state that he was acting in an official capacity for his State department when visiting the demonstration, and the fact that his department paid some expenses for the trip does not establish that they were paid for the purposes of s.158(1)(i) investigations.   On the point of experimentation or "reasonable trial", Mr Wray submitted that any testing or trial of the device could have been done in private on the Miller property.

DECISION

Locus standi

After initially raising the matter, Mr Thomas essentially conceded Merebin did have locus.  From the decision in Dricon Air Pty Ltd v. Waztech Pty Ltd 24 IPR 398, the date of filing of the notice of opposition is a relevant date at which locus should be assessed and in this case I have no reason to doubt that Merebin did have locus at that time.

Lack of novelty

A crucial aspect of the opponents' case against the opposed specification centres around the demonstration at the Miller's property on 8 April 1986, just over a month before the priority date.  The opponents contend that the machines demonstrated at the Miller's property accorded with the invention the subject of claims 1 to 13, and further contend that as no confidentiality surrounded those demonstrations, those claims lacked novelty.  The evidence for the applicant does not deny that the demonstration took place and Miller says that claims 1 to 13 are to apparatus "similar to that disclosed" to persons at the demonstration.  There is no evidence to bring into question the video (Exhibit NB-2) or the photographic prints (Exhibit SE-2) as not representing a true record of the working or the devices forming part of the demonstration on 8 April 1986.  In my view the video and the prints indicate that the devices demonstrated at the Miller's property included all the features as embodied in claims 1 to 13 of the opposed application.
The applicant contends that the demonstration involved a confidential disclosure and so does not deprive the invention of novelty.  In the course of their respective submissions the parties referred me to several authorities.  Coco v. A N Clark, supra, was a case on breach of confidence, which is not the issue here, nevertheless the case is of assistance as to what may amount to an obligation of confidence.  The question to be answered in this case is:  was the subject of the demonstration disclosed to those present under an obligation of confidence, or was it disclosed under no such obligation and therefore available to all the world?

In Coco v. A N Clark Megarry J applied a "reasonable man" test on the confidentiality issue.  He said:

"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence."

Also I note that the delegate of the Commissioner in Riekie v. M J McGrath observed thus:

"It seems clear on the authorities that a duty of confidence does not have to be specified in order to be existent.  Furthermore, the existence of an implied duty of confidence does not have to be comprehended by the individual who incurs that duty, although if this be the case it may strongly suggest that such a duty did not exist."

The evidence from the parties regarding whether the demonstration was conducted subject to a duty of confidence on the persons attending is conflicting as Mr Wray submitted.  I also agree with Mr Wray that in deciding whether confidentiality existed in this case I will need to decide based on the balance of probabilities.

Erlandsen and Bennie declare, in effect, that nothing caused them to understand that the demonstration was in confidence.  They say the issue was not raised either before or at the demonstration.  Erlandsen also says that there was no implication to him "in the circumstances of the disclosure of an inherent obligation of confidentiality."  Miller says that he understood the demonstration was a private disclosure accepted as such by those present.  Alcock says much the same as Miller adding that the circumstances of the invitation to the demonstration was on the basis of trusted confidants.  The evidence also contains references to the fact that after the demonstration

(a)Miller asked Alcock ("shortly after returning to Loxton") not to "spread the (video) tape around" since it should be treated with confidentiality, and

(b)Miller orally advised Bennie ("some months after the demonstration, and after May 15 1986") that the demonstration had been conducted in confidence.

I am unable to conclude otherwise than that the demonstration at the Miller property on 8 April 1986 was not in confidence.  Bennie and Erlandsen did not comprehend an obligation of confidence at the demonstration and from the evidence, including that of Alcock, the issue of confidentiality was not mentioned on the day.  Further, according to Erlandsen, at the demonstration and on the return trip both Yates and Stoekel openly discussed the possibility of building similar machines to those viewed, suggesting, in my view, that they felt no confidentiality surrounded the demonstration.  It seems somewhat at odds with the claim that the existence of an obligation of confidence was implied at the time of the demonstration when after the event parties who attended needed to be advised the demonstration had been in confidence.  Mr Thomas suggested that there was a "country code" which governed demonstrations of the type here whereby parties attending accepted the publication to be a private affair and thus, in effect, without detriment to any rights the demonstrator may have.  As a general observation that may be so in many instances but I have nothing concrete before me to say that was the case in respect of the Miller demonstration.  The demonstration was conducted in the presence of persons most of whom, it seems, were unknown to the Millers.  The evidence indicates that prior to the demonstration, persons in several States of Australia knew that farmers at Wirrulla had developed prickle chain harrows, and the party who travelled to the demonstrations on 8 April 1986 went there possessed of knowledge, at least in a general sense, of such harrows.  In such circumstances I believe that it was up to the party providing the demonstration to make known to those attending that an obligation of confidence arose.  That such an obligation should be known at the time would seem particularly relevant when, as in the case of the demonstration at issue, persons attending carried and used either still or video cameras.  As I view the evidence, on the balance of probabilities the demonstration was not in confidence.

Mr Thomas raised further defences to the possible publication of the invention arising from the demonstration based on s.158 of the 1952 Act.  I agree with Mr Wray that the onus seems to lie with the party relying on these provisions to establish why they are applicable to the particular publication action.  In my view the benefit available under s.158(1)(h) or (i) has not been shown to clearly apply in this case.  Regarding paragraph (h), it is not clear to me that the demonstration "was for the purpose of reasonable trial only".  Whilst Miller says the demonstration was "primarily for experimentation", the nature of the machines demonstrated seem from the photographs and video to be other than prototypes requiring further development and testing to achieve adequate performance as tillage harrows.  Even were the demonstration for reasonable trial purposes, it is not evident why such trials needed to be done in public as I have found the demonstration to be.  It seems to me that the nature of the invention allowed the Millers to adequately test and evaluate their machines on their property in a non public manner.  I am therefore not satisfied that the defence of paragraph (h) has been established.

Regarding paragraph (i) of s.158(1), for present purposes this relates to publication "to a person authorized by the Commonwealth or a State to make an investigation of the invention".  Erlandsen was an officer of a Victorian State government department but there is no evidence which establishes that Erlandsen undertook the trip as a person "authorized" to investigate the invention.  Erlandsen says Yates invited him on the trip and that he had no part in the organisation of it.  The circumstances of Yates being assisted with some expenses by the government department is not covered in the evidence.  I am not able to conclude from the evidence that the demonstration constituted a publication to Erlandsen within the terms of paragraph (i).  However, even were paragraph (i) applicable to Erlandsen, as Erlandsen did not organise the visit or invite the others, I do not see how any benefit arising from paragraph (i) concerning Erlandsen can embrace the others who attended the demonstration.  Also, there is no evidence which establishes that all the other persons present at the demonstration were in some way "persons" within the definition of that paragraph.  Consequently I am also not satisfied that the defence of paragraph (i) has been established.

In view of my conclusions that the demonstration of devices at the Miller property on 8 April 1986 was not in confidence, nor a publication to be disregarded for novelty purposes under s.158 of the 1952 Act, I find that the invention defined in claims 1 to 13 lacks novelty in the light of the devices demonstrated.

The opponents also contended that claim 1 lacked novelty in the light of prickle chain harrows developed by Bennie, Walker and Stanley.  I have doubts whether the harrows developed by Walker and Stanley were matters of public knowledge before the priority date and so I dismiss them from further consideration.  In 1985 Bennie made a harrow which, according to Bennie and not denied by Anthony Miller, he and the Millers used on their respective properties in 1985.  A section of the prickle chain was publicly displayed at the Dowerin Field Days in 1985.  This harrow used a chain with rods welded to the chain links to act as spikes, the spikes projecting laterally of a link.  It seems to me that the only issue surrounding whether or not this Bennie harrow renders the claimed invention not novel concerns the claimed feature "each tyne shaped and positioned so as to provide for clearing of debris from each tyne during use".  Mr Thomas submitted, in effect, that this definition would be understood by the skilled addressee as requiring something other than laterally extending spikes on the links since the invention was an improvement on the existing art.  I do not agree and there is no evidence to support the view advanced.  The definition is one related to the result to be achieved and a skilled addressee would, I believe, see any arrangement of tyne which can fulfil that result as being within the definition.  It seems to me that the relative ability of say a laterally extending tyne as against an angled tyne to clear debris from the tyne during use would depend somewhat on the orientation of the chain and its links to the direction of travel but the degree of clearing debris from the tynes is not a feature of claim 1.  In my view the 1985 Bennie harrow renders claim 1 not novel.  That conclusion extends to at least those claims dependant to claim 1 which include the possibility of laterally extending tynes.
The opponents did not submit that claim 14 or those claims dependant thereto lacked novelty.  There is nothing before me to conclude otherwise.

Obviousness

Mr Wray advanced few submissions to this ground of opposition at the hearing.  Evidence of common general knowledge in the art has not been provided in this matter.  Since any consideration of obviousness needs to be made against the common general knowledge in the art, I am unable to consider this ground any further.

Section 40

Mr Wray submitted that the claimed feature "each tyne shaped and positioned so as to provide for clearing of debris from each tyne during use" rendered the claim unclear and of indeterminate scope.  This clause is a definition related to the result to be achieved in use of the device.  It is a form of definition not infrequently encountered in patent claims and, where appropriate, accepted as a legitimate form of definition.  As I indicated earlier in this decision, I believe a skilled addressee would readily comprehend the extent of the monopoly this definition provides.  Therefore, I do not believe a section 40 deficiency exists due to this definition.

CONCLUSION

I have found that claims 1 to 13 lack novelty.  In my view the specification contains novel subject matter.  Accordingly I afford the applicant an opportunity to amend the specification to define such novel matter, and I allow a period of 60 days from the date of this decision to request such amendment.

On the question of costs, the usual practice is that costs follow the event.  Each opposition has been successful, although on a slightly different basis to support the lack of novelty ground. Thus the opponents are each entitled to their costs.  Accordingly I award costs for each opposition in accordance with Schedule 8 against the patent applicant.  As Farmers Tractors did not attend the hearing it is not entitled to any costs related to the hearing.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent attorneys for the applicant    :  Collison & Co, Adelaide

Patent attorneys for Phillips        :  Wray & Associates, Perth

Patent attorneys for Farmers Tractors :  Wray & Associates, Perth

Patent attorneys for Merebin         :  Kelvin Lord & Co, Perth