Gabriel Andrews v Erten Products Aust
[2000] APO 70
•29 November 2000
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. 20345/99, 28134/99, PP2308, PQ0195 and PQ0697 in the name of Gabriel Andrews
Title: Roof Ventilator
Action: Application under Section 36(1) by Erten Products Aust. Pty Ltd for a declaration regarding entitlement to the invention(s) described.
Decision: Issued .
Abstract
Found that the Section 36 requestor had not satisfied the delegate that it was an eligible person either solely or in part. While the evidence of both parties was found to be insufficient to support their respective version of events the onus was on the requestor to make out its case and it had not done so. In particular it had not demonstrated on the balance of probabilities that Mr Yong had communicated the invention to Mr Andrews and in this regard it was considered significant that Mr Yong had not taken any steps to independently progress the invention prior to the date on which the evidence shows Mr Andrews communicated the invention to Mr Yong.
Consequently the request under section 36(1) was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent applications 20345/99, 28134/99, PP2308, PQ0195 and PQ0697 in the name of Gabriel Andrews and application under Section 36(1) by Erten Products Aust. Pty Ltd for a declaration regarding entitlement to the invention(s) described.
BACKGROUND
Provisional application PP2308 was filed by Gabriel Andrews on 13 March 1998. An associated complete application 20345/99 followed on 10 March 1999 from which a divisional petty patent application was filed on 13 May 1999. Provisional applications PQ0195 and PQ0697 were filed on 6 May and 1 June 1999 respectively and have subsequently lapsed without being associated with any complete applications.
Erten Products Aust. Pty Ltd (Erten) filed evidence in support of a request under section 36(1) on 10 September 1999. This included a statutory declaration made by Mr Eddie Yong the managing director and a supporting declaration by Rodney Atkins who was a business associate of Mr Yong and Mr Andrews. Evidence in response followed on 22 November 1999 and 5 April 2000, including declarations by Mr Andrews and a number of his associates as well as by a former employee of Erten, Shane Anderson.
After various delays the matter came to hearing in Sydney on 19 October 2000. Mr Yong and Mr Andrews were summonsed and appeared for cross examination. Mr Andrews was represented by Ms J Baird of counsel and Mr J Dobbin, patent attorney of F B Rice & Co., Sydney. Erten was represented by Mr P Pluck and Mr P Heathcote, patent attorneys of Baldwin Shelston Waters, Sydney.
Erten sought at the hearing, and was subsequently granted, leave to adduce further evidence despite the applicant's objections. The further evidence included call records for Mr Yong's telephone service. Mr Andrews was allowed time to file evidence in response but in the event did not do so.
SECTION 36 REQUEST
Erten does not appear to have formally filed a section 36 request. On 16 and 18 August 1999 Erten's previous patent attorney informed the Commissioner that its client intended to file evidence in support of an application under section 36. However, while the supporting evidence was filed on 10 September 1999 the request itself was not forthcoming.
Nevertheless the request is implicit when the correspondence is read in conjunction with the evidence and at the hearing Mr Pluck confirmed that Erten was claiming that Mr Yong rather than Mr Andrews was the inventor in relation to the subject applications and that it had entitlement through Mr Yong.
THE SPECIFICATION
The invention(s) subject of the patent specifications relate to what is known as a turbine roof ventilator. These are air driven devices that are used primarily to extract hot air from the roof spaces of houses and other buildings in summer but, it appears, can also be useful in extracting moisture to prevent mould and mildew in winter. 20345/99 indicates that these ventilators:
"comprise a rotatable sleeve on the top end of which is mounted a rotatable turbine wheel or hood. The turbine hood includes a closed circular, usually convex upper end which prevents ingress of rain into the sleeve and thus into the roof chamber, a lower ring and a series of arcuate turbine blades extending from the lower ring to the upper end through which hot air flows."
The specifications originally filed with 20345/99, 28134/99 and PP2308 are substantially the same. The stated object of the invention described therein is to provide an improved turbine ventilator of this type and is achieved by mounting the turbine hood to the upper end of a rotatable shaft and providing a fan or vane assembly on the lower end so that it rotates with the shaft, thereby improving the air flow through the ventilator. Tests are said to show that the use of the additional fan can double the rate of air flow over normal turbine hoods.
The invention also includes the mounting of the shaft in a cylindrical sleeve disposed below the turbine hood. In the preferred embodiment a four armed fibreglass spider is mounted within the sleeve and includes a central bearing housing for locating spaced upper and lower ball bearings. The shaft passes through and frictionally engages the inner rings of the bearings so that it is free to rotate about its longitudinal axis and the fan is attached to the end of the shaft below the bearing housing and rotates within the sleeve. The fan illustrated has 32 narrow blades and can be made from aluminium or steel sheet or can be made from plastics.
Provisional specifications PQ0195 and PQ0697 while relating to similar subject matter refer to quite distinct embodiments and adaptions. As they are not open to public inspection I will not refer to their disclosure in detail but only as may be required by my finding on the facts in this matter below.
FURTHER EVIDENCE
As indicated above Erten at the hearing sought to adduce further evidence and I subsequently granted their request. The present proceedings are not governed by Chapter 5 of the Regulations but the considerations that apply to Regulations 5.10(4) and (5) are also relevant here and, in essence, require that before allowing the request I must be reasonably satisfied that further evidence is appropriate in all the circumstances. In determining what is appropriate I can consider all relevant factors including the diligence of the party seeking to adduce the evidence, its likely importance to the correct determination of the matter and any injustice to the other party (see for example ICI v Mitsubishi Gas 29 IPR 285).
In the present case clearly Erten has not been diligent in the preparation of its case. This is perhaps not surprising as it was unrepresented for long periods and engaged its present attorney only shortly before the hearing. The evidence is however said to corroborate the main feature of its allegation against Mr Andrews, that is, that the inventive concept was faxed by Mr Yong to Mr Andrews on or about 16 September 1997. Consequently it is likely to assist a more correct determination of this matter. The inconvenience to Mr Andrews is not I believe significantly great and on balance it would seem beneficial to the applicant to have this evidence considered now rather than encourage the requestor to initiate fresh proceedings.
On this basis I have allowed the request for further evidence. The delay in seeking this evidence is however significant and is a factor that would normally be considered in an award of costs if Ertens is ultimately successful.
DECISION
Section 36(1) enables a person to make an application that the nominated person is not an eligible person in relation to an invention disclosed in a specification filed in relation to a patent application but that some other person is an eligible person in relation to the invention. In this case Erten is claiming that it rather than Mr Andrews is an eligible person in relation to the invention.
Section 36(1) indicates that the Commissioner must be satisfied that the nominated person is not an eligible person before declaring otherwise. The onus rests with the Section 36(1) applicant to clearly establish to the Commissioner’s satisfaction that the nominated person is not entitled to the invention and that some other person is entitled either solely or in part. In deciding the matter the Commissioner is entitled to act on any material which is "logically probative" and 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 Holding Ltd's Application (1979) RPC 523).
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).
Also potentially relevant in the present circumstances is the principle discussed in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32 (16 June 1995) where it was said:
"… it seems to be the case that a second person, engaged because of that person's expertise to construct a device … based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device, and this holds true even if the second person suggests ways to aid its design or operation. However if the second person's suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device. In this context I think the result or advantage would need to be a material one so that the resulting device is overall an improved one not merely a preferred workable embodiment of the original concept."
The case put by Erten is essentially this:
Erten and Andrews or his company Aussie Home Makers Pty Limited began a successful business relationship in 1996 as, respectively, supplier and distributor of turbine ventilators manufactured by Erten in Malaysia.
Early in 1997 a Perth agent referred Mr Yong to a ventilator made under the name Ampleair which had a fan located within the turbine hood.
In April 1997 Mr Yong introduced the four arm moulded spider containing bearings which allowed for the shaft and hood to rotate in unison. (From Mr Andrews' evidence the ventilator previously used a fixed shaft as did most other ventilators on the market.)
In mid 1997 Mr Yong came up with the idea of putting the fan on the lower end of the shaft and told Mr Andrews.
On 16 September 1997 Mr Yong sent Mr Andrews a fax about the Ampleair ventilator and described his idea for a simple fan at the lower end of the shaft. EY4 is said to be a copy of this fax and is dated 14 September 1997. The inventive concept claimed to be invented by Mr Yong is essentially that shown in the diagram EY-3:
Mr Andrews sent a fax on 11 October suggesting a multi-bladed turbine fan but this was rejected for being impractical and on 23 October Mr Andrews sent a further fax suggesting a four blade fan.
In January 1998 Mr Yong instructed his manager to build a prototype which became the basis for Erten's provisional application filed on 26 March 1999.
On 1 July 1998 Erten and Aussie Home Makers signed a distribution agreement for ventilators including the fan model but after this the business relationship broke down.
On the other hand the sequence of events put forward by Mr Andrews is this:
Mr Andrews began installing turbine ventilators in 1991, originally those supplied by Alsynite Building Products.
In February 1992 he drew a ventilator with a four bladed propeller on the lower end of the shaft but did not follow it up because of the complexity of the manufacturing process.
February 1996 marketed a ventilator produced by Erten under the name "Twirlygig"
In September or at least before October 1996 sketched a ventilator with a fan on the end of a rotating shaft. Impressions on this page relating to envelope orders are said to verify the date of the drawing.
Signed a distribution agreement with Erten on 15 October 1996 which is terminated by mutual agreement on 11 January 1997
March 1997 met Mr Yong and tried to convince him to use the moulded spider. Under examination Mr Andrews further stated that he introduced Mr Yong to the fan idea at this meeting and that the fan was the reason for introducing the spider.
Also in March 1997 Mr Andrews sent a fax to Mr Yong illustrating a multi-bladed turbine fan for use in the ventilator (GA-24)
During 1997 a number of quality issues arose which required Mr Andrews to contact Mr Yong with suggested changes to the product and for Mr Andrews to have repairs made by RBM Fabrications.
The moulded spider was actually introduced into the product in October 1997 as indicated by GA-22 and GA-23
In November 1997 a meeting was held at Ingleburn with Yong, Andrews, Bourelly and Scott present and the fan concept was discussed.
Mr Andrews encouraged Mr Yong to file a patent application but because he did not do so Mr Andrews took action which led to the filing of PP2308 on 13 March 1998.
A new distribution agreement was made on 1 July 1998 with changes including the introduction of patents to the clause allowing the distributor to apply his own trade marks, logos or name in relation to the product.
Subsequently the business relationship broke down.
As it turns out I find little evidentiary support for key aspects of either of these versions of events and it is fair to say that the evidence provided by both parties raises more questions than are answered. In this regard, whether by intent or by faulty recollection, neither of the witnesses Yong and Andrews proved to be particularly convincing under cross-examination and I am left with little insight as to what actually transpired between the parties in the critical period up to mid October 1997. Nevertheless, ultimately I must decide whether Mr Andrews is not an eligible person in relation to the invention and in doing so may act on any material which is logically probative. In this I may consider the evidentiary weight to be applied in light of any doubts I may have as to the credibility of the witnesses and may come to a view of events on the balance of probabilities which is different to that alleged by either party.
Before looking closer at the evidence however, I observe that both Mr Yong and Mr Andrews were capable of arriving independently at the fan concept as a development of the prior art although they do not appear to be highly skilled in the technical sense. Mr Yong had been a manufacturer of turbine hoods for quite some time and I do not believe there is anything to suggest he could not have applied the practical skills involved if there was sufficient motivation to alter the design of the product previously manufactured by him. Mr Andrews on the other hand while appearing to be more of a salesman/installer did have significant experience with turbine ventilators and did seek technical improvements to the products he sold to overcome quality defects. However if he was motivated to seek fundamental changes to the product it would appear that this was to achieve market differentiation rather than a technical appreciation of the benefits of the change in improved performance or reduced manufacturing costs.
At the core of Erten's case is exhibit EY-4 which is said to be a copy of a fax sent to Mr Andrews on 16 September 1997 although it is dated 14 September 1997 and has no transmission details imprinted on it. Mr Pluck provided telephone account records to confirm this highlighting a 1 minute 18 second call on that day to a Sydney number 0298291799. However under cross examination Mr Andrews denied this was his fax number or that he had at the time a fax/phone on that line. This response is quite surprising since documents in Mr Andrews own evidence point in fact to him having a fax facility on this number during 1996 and 1997. I note particularly his exhibits GA-21A, 22, 28 and 31. Hence it is plausible to suggest that a facsimile was sent to Mr Andrews on the 16th. However given the date on the document of 14 September and the need for the parties to communicate on other matters I do not think the telephone records add significant evidentiary weight and on the contrary confirm that a facsimile transmission was not made on the 14th. In this regard if the date is correct (and it is Mr Yong who has interpreted his own handwriting) then it is perhaps surprising that a brief note drafted free hand and in some apparent haste on a Sunday was then kept and only transmitted on the following Tuesday although I accept there could have been reasons for this.
The content of EY-4 is also somewhat odd. If Mr Yong had already explained his ideas to Mr Andrews at an earlier date it would seem unlikely that he would not have already told Mr Andrews about the Ampleair device given it was the whole rationale for the fan. On the other hand if the document was the first mention of the idea it seems to say far too little about the fan and would seem to be an unusual way to put such a proposal to Mr Andrews who was selling the product independently under his own brand.
I am further quite surprised that if the invention occurred to Mr Yong in mid 1997 it was not implemented in the product together with the moulded spider for the season beginning at the end of 1997 even with "the speed Malaysian tool maker go". Indeed it appears to me that once the idea of a rotating shaft and spider was arrived at the addition of a fan was quite trivial, at least in its implementation. However what we see in the evidence is that the spider was introduced first in 1997 and the fan added in the following year after a prototype was made in January. Between "mid 1997" and the prototype there seems to have been no activity and even the approach made to Mr Scott at the Ingleburn meeting was not followed up.
I would add that in cross examination it became clear that Mr Yong had considered Mr Andrews to be an overly particular customer who would ask for variations to the product that Mr Yong did not think necessary. Mr Yong apparently ignored some suggestions and implemented others to keep Mr Andrews happy. In this sense Mr Yong does not give the impression of being the initiator of change and he does not for example give any plausible explanation for the introduction of the spider on his own initiative. Thus the evidence tends to support a perception that if Mr Yong made changes to the product it was likely that the change was instigated by Mr Andrews.
On the other hand not all sits well in Mr Andrews' evidence either. If as now claimed the spider and fan concept was communicated to Mr Yong at their meeting in March 1997 and Mr Yong accepted the concept, why was the spider introduced separately? It may have been that Mr Yong saw some value in the spider alone and refused to introduce the fan but I think this is improbable. I believe Mr Andrews original evidence is more credible, that is, that the spider was suggested to Mr Yong separately, probably because Mr Andrews had seen it in a competitor's ventilator, ie "the Windmaster from Edmond - the one I gave you (GA31)" and that the fan concept came later.
How much later is not clear and I find Mr Andrews' evidence unreliable in this regard. For example the description of the device drawn in 1992 makes absolute no sense since it is based on the Ventura model which Mr Andrews indicates as having a fixed shaft. The faxing of the turbine blade document (GA-24) in March 1997 or at least the material said to corroborate that date is also improbable. Mr Andrews cannot credibly claim that he was preparing to advertise an offer that ends at 30 May 1997 if he had no hope of supplying the product within that time or a reasonable period thereafter. He had only told Mr Yong about the concept in March and must have known that tooling, manufacturing and delivery would not occur for some considerable time, probably not before the next summer "season". The explanation for the drawing of the text on the front and back of this particular document is also unconvincing. Consequently I think it is far more probable that the turbine fan fax was sent in October as claimed by Mr Yong and this is consistent with other of Mr Andrews' evidence particularly in GA-31 where the fan only begins to appear in documents dated by Mr Andrews shortly before and after 11 October, the date on the fax.
Given my observations on Mr Andrews' evidence I also have little confidence in the drawing said to have been made by him in September 1996 and find little to support his authoring of the invention prior to October 1997. In this regard Peter Scott confirms that Mr Andrews had spoken to him about putting a fan on the shaft at their meeting in October 1997 but Ray Bourrelly of RBM Fabrications, who had worked with Mr Andrews on various problems since July 1997, was only aware of the suggestion following the meeting at Ingleburn in November. Accordingly, the "new idea for winter" document in GA-31 may well have been the first expression of the fan idea by Mr Andrews and in this regard his explanation in relation to the rubber sealed bearings and other features for winter applications does not overcome the sense from the document that the turbine bladed fan is introduced for the first time. Mr Andrews has even dated the plan drawing of the fan separately as "11-Oct-97" which is odd if, as he suggests, the bearing and other moisture control features are what is being described as "new". The turbine fan document may well then be simply further elaboration of the fan and if so it is not surprising that the copy provided by Mr Yong also has a fax date of 11 October.
Whether this was an independent development by Mr Andrews or in response to an idea proposed by Mr Yong either verbally or though the alleged facsimile transmission is the crux of the matter. The "This way" - "Wrong way" part of Mr Andrews fax could have been in response to the manner in which Mr Yong drew the fan in document EY-4 and that document may give a hint as to why development subsequently headed in the direction of a simple three bladed fan. On the other hand Mr Andrews' fax does seem to be suggesting an indent area perhaps indicating it was not a follow up to Mr Yong's drawing and it could well be that Mr Yong thought that turbine fan too complicated and costly when proposed by Mr Andrews so then proposed the simple fan as a compromise.
Ultimately the onus is on Erten to prove its case on the balance of probabilities and I find that balance favours Mr Andrews. The evidence at least suggests the invention could have been made by him in October 1997 and communicated to Mr Yong while there is very little to support Yong as the inventor at or before that date. This is particularly so given the doubt surrounding EY-4 and that Mr Yong did not appear to undertake any independent activity to develop the invention prior to the prototype which was only produced later. That he sought design information from Scott at the Ingleburn meeting in November only reinforces a perception that he did not consider the invention his own and was taking action only because of the presence of Andrews. Erten have not provided evidence from the Perth agent referred to in Mr Yong's document or drawings or tooling orders in relation to the fan and have not challenged the claims of Mr Anderson who says that Mr Yong admitted to him that he was not the inventor. I am also left with the sense that of the two Mr Andrews is more likely to have initiated change in the ventilator in response to competition from other products.
Under the circumstances I must refuse Erten's request under section 36(1).
CONCLUSION
While there are deficiencies with the evidence of both parties I have found that the balance of probabilities is that Mr Andrews arrived at the concept of the turbine hood with secondary fan on a rotating shaft independently of Mr Yong and that Erten have not made out a case for entitlement to any invention disclosed in the subject patent applications.
Pursuant to Section 36(4) an appeal against this decision lies to the Federal Court.
COSTS
Having considered all the circumstances in this case I see no reason to depart from the normal practice that costs follow the event. I therefore award costs against Erten Products Aust. Pty Ltd.
Philip Spann
Delegate of the Commissioner of Patents
Patent attorneys for the patent applicant: F B Rice & Co, Sydney
Patent attorneys for the requestor: Baldwin Shelston Waters, Sydney