Falkenhagen et al v Polemate Pty Ltd - [1995] APO 32

official notice

decision of a delegate of the commissioner of patents

Application : No. 84712/91 in the names of TREVOR JULIUS FALKENHAGEN, ERIC GEORGE FALKENHAGEN and ANDREA SUSAN BATTEN

Title: Apparatus For Boring Around Standing Poles

Action: Request by POLEMATE PTY LTD, GAVIN JOHN CAHILL and RONALD WILLIAM LOUSICK under section 36(1); hearing; no appearance by patent applicants.

Decision: Issued .
Abstract: There was insufficient evidence to show that either Lousick or Cahill were joint inventors of the excavating machine disclosed in the specification of application 84712/91.

From the evidence Eric Alan Falkenhagen found to be the sole inventor of the excavating machine disclosed in the specification of application 84712/91.

On the balance of probabilities Polemate Pty Ltd found to be the beneficial owner of all rights to the excavating machine being the invention disclosed in the specification of application 84712/91 arising from agreements entered into between Ronald William Lousick and Geoffrey Peter Stock and the actual inventor Eric Alan Falkenhagen on or prior to 28 May 1991.

On the balance of probabilities Trevor Julius Falkenhagen, Eric George Falkenhagen and Andrea Susan Batten found not to be eligible persons in relation to the excavating machine being the invention disclosed in the specification of application 84712/91 and Polemate Pty Ltd found to be the sole eligible person in relation to the invention as so disclosed.

Under s.36(1), Polemate Pty Ltd declared to be the sole eligible person in relation to the excavating machine being the invention disclosed in the specification of patent application 84712/91.

Costs awarded against Trevor Julius Falkenhagen, Eric George Falkenhagen and Andrea Susan Batten and in favour of Polemate Pty Ltd.

patents act 1990

decision of a delegate of the commissioner of patents

Re: Australian Patent Application No. 84712/91 in the names of TREVOR JULIUS FALKENHAGEN, ERIC GEORGE FALKENHAGEN and ANDREA SUSAN BATTEN, and a request by POLEMATE PTY LTD, GAVIN JOHN CAHILL and RONALD WILLIAM LOUSICK under section 36(1) of the Patents Act 1990 for a declaration regarding eligible persons in respect of the invention disclosed in the specification.

background

The patent application

ERIC ALAN FALKENHAGEN (hereafter referred to as "Falkenhagen") filed Australian complete patent application 84712/91 on
25 September 1991 accompanied by a complete specification for an invention entitled "Innovative apparatus for boring around standing poles". The patent request indicates that this application is associated with Australian provisional application PK5711 filed by Falkenhagen on 19 April 1991 and as such may obtain early priority from application PK5711.

The patent request for application 84712/91 states the inventor as Eric Alan Falkenhagen and identifies the nominated persons as TREVOR JULIUS FALKENHAGEN, ERIC GEORGE FALKENHAGEN and ANDREA SUSAN BATTEN (hereafter referred to as "the Falkenhagens"). The application was directed to proceed in the names of the Falkenhagens under section 113 in February 1993 after a Deed of assignment dated 12 September 1991 was furnished to the Commissioner.

Request under section 36(1)

On 8 September 1993 POLEMATE PTY LTD, GAVIN JOHN CAHILL and RONALD…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1995] APO 32
Decision Date: 16 June 1995

CaseChat Overview and Summary

In the case of Falkenhagen et al v Polemate Pty Ltd, the dispute involved a patent application for an excavating machine. The primary issue was the determination of the eligible person for the patent, following a request under section 36 of the Patents Act 1990. Polemate Pty Ltd, along with Gavin John Cahill and Ronald William Lousick, sought a declaration that they were eligible persons in relation to the invention disclosed in the patent application 84712/91, filed by Eric Alan Falkenhagen. The key legal questions revolved around inventorship and the assignment of rights to the invention. The court had to determine whether Lousick and Cahill were joint inventors, and if Polemate Pty Ltd was the rightful beneficiary of the invention rights.

The court examined the evidence provided by Lousick, Cahill, and Falkenhagen, along with documentary evidence and witness testimonies. It found that there was insufficient evidence to establish Lousick or Cahill as joint inventors of the excavating machine. The court concluded that Eric Alan Falkenhagen was the sole inventor. Regarding the entitlement to the invention, the court found that Polemate Pty Ltd was the beneficial owner of all rights to the invention, based on agreements entered into between Lousick, Stock, and Falkenhagen on or prior to 28 May 1991. The court also found that the Falkenhagens were not eligible persons in relation to the invention, and Polemate Pty Ltd was the sole eligible person.

In light of these findings, the court declared under section 36(1) that Polemate Pty Ltd was the sole eligible person in relation to the excavating machine being the invention disclosed in the specification of patent application 84712/91. The court awarded costs in favour of Polemate Pty Ltd against Trevor Julius Falkenhagen, Eric George Falkenhagen, and Andrea Susan Batten.

Orders