Gainsborough Hardware Industries Ltd v Walter Joseph Nugent
[1998] APO 7
•4 March 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 662657 in the name of Gainsborough Hardware Industries Limited
Title: Dual function lock mechanism
Action: Opposition to grant by Walter Joseph Nugent on the ground that the nominated person is not entitled to a grant of a patent for the invention; hearing.
Decision: Issued
Abstract
Walter Nugent asserted that he supplied various lock prototypes to Mr Liebherr an employee of Gainsborough and explained to him their features before the priority date of the claims. He further asserted that the invention claimed is based on those disclosures and that Gainsborough is not entitled to the grant of a patent for the invention. Mr Liebherr and Mr Fortune are the named inventors on the patent request.
The conclusions were as follows:
Unable to conclude on the balance of probabilities that Nugent supplied an invention or inventions to Gainsborough, Liebherr or Fortune by way of his three prototypes represented by Exhibits WJN-3, WJN-4 and WJN-5 before the priority date of the opposed application.
Unable to conclude that Nugent is an inventor in respect of the claimed invention.
Found that Gainsborough has sole rights to the invention claimed.
Opposition dismissed.
Costs awarded against the opponent, Walter Joseph Nugent.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 662657 by Gainsborough Hardware Industries Limited and opposition thereto under section 59 by Walter Joseph Nugent.
background
Patent application 662657 was filed on 8 October 1993 by Gainsborough Hardware Industries Limited (hereafter referred to as “Gainsborough”). The patent request indicates that the application is associated with provisional applications PL 5182/92 filed on 9 October 1992 and
PL 6948/93 filed on 27 January 1993. The application was advertised accepted on 7 September 1995.
On 7 December 1995 Walter Joseph Nugent (hereafter referred to as “Nugent”) filed an opposition to the grant of a patent on the application. The sole ground of opposition is stated as follows in the Statement of Grounds and Particulars:
“The nominated person GAINSBOROUGH HARDWARE INDUSTRIES LIMITED
is not entitled to the grant of a patent for the invention, so far as claimed in any of claims
1 to 26.”
Of the Particulars, paragraph (l) asserts:
“The Applicant has obtained the invention from the Opponent or NIPL [Nulock Industries Pty Ltd], and accordingly the Applicant is not entitled to a grant of a patent for the invention.”
Following the completion of the evidence stages, the matter was set for a hearing. The hearing took place in Canberra on 1 December 1997. Gainsborough was represented by Mr F Old assisted by Mr R Curnick, both patent attorneys of Spruson & Ferguson. Mr Nugent represented himself. Two officials of the applicant company and Mr Nugent’s daughter and a friend also attended the hearing.
EVIDENCE
The evidence filed in this matter consists of the following:
Evidence in support
A statutory declaration by the opponent Mr Nugent dated 7 June 1996 with Exhibits WJN-1 to WJN-5.
Evidence in answer
A statutory declaration by Geoffrey James Fortune dated 7 December 1996 with Exhibits
GJF-1 and GJF-2. Mr Fortune is a contract prototype constructor and provided services to Gainsborough from 1987 to June 1994.A statutory declaration by Jeffrey Colin Hooper dated 9 December 1996. Mr Hooper was the Managing Director of Gainsborough between April 1990 and 1995.
A statutory declaration by Gerald Anthony Smith dated 11 December 1996 with Exhibits
GS-1 to GS-19. Mr Smith is a Director of Gainsborough and has held that position for around 20 years.
Evidence in reply
A statutory declaration by Matthew Baird dated 19 March 1997. Mr Baird was employed at Gainsborough from July 1984 to October 1991 firstly as a Production Manager and then as manager of the Engineering Department.
A second statutory declaration by Mr Nugent dated 24 March 1997 was submitted at the same time as the Baird declaration. However that declaration does not form part of the evidence in reply given the decision of a delegate of the Commissioner dated 6 June 1997 when granting, on terms, an application for an extension of time to serve a notice of intention to serve evidence in reply. Therefore I do not need to refer to this declaration further.
At the hearing each party was afforded an opportunity to provide submissions in support of their respective positions concerning the opposition with reference to the evidence filed. This included the opportunity to respond to submissions presented by the other party.
THE SPECIFICATION
The invention relates to lock mechanisms as commonly employed for locking doors of houses and offices. It is particularly concerned with a lock assembly incorporating both latching and deadlocking facilities.
The specification mentions that it is
“common practice to fit doors with separate latch bolt and deadlock fittings. The latch bolt is typically handle actuated, while the deadbolt is usually associated with a conventional double-cylinder deadlock for key release or engagement from either side of the door.”
The description goes on to indicate that some deadlock mechanisms have a deadbolt with an angled tip face, thus allowing a latching action, but also having a construction enabling an extended lock position for the deadbolt. These locks are commonly fitted to the inside face of the door. Usually a key is needed to unlock the key cylinders on both the outside and inside of the door to fully disengage the deadlock facility. Also some combined latch and deadbolt mortice lock mechanisms are available but these require a “very substantial cavity” in the body of the door.
Thus the invention is concerned with providing a dual function lock mechanism which can fit a standard door/lock cavity incorporating a transverse round hole (eg. of 54mm diameter) and an intersecting bore for the bolt casing. By dual function lock mechanism is meant one where the same bolt can be selectively set as a simple latch or in a longer throw lock position.
Claim 1 of the specification defines the invention as follows:
“A dual function lock mechanism comprising:
(a) a body;
(b) a cam member mounted on the body for rotation about an axis;
(c) retractor means adapted to drive a latch bolt and supported for sliding movement in opposite directions transversely with respect to said axis;
(d) means to slide the retractor means in a first direction of said sliding movement to retract the latch bolt from a latch position to a release position;
(e) respective cooperable mutually engageable formations on the cam member and on the retractor means whereby a predetermined first rotational movement of the cam member is effective to slide the retractor means in a second direction opposite said first direction to move the latch bolt from said latch position to an extended lock position, and a predetermined opposite rotational movement is effective to return the latch bolt from the extended lock position to the latch position; and
(f) detent means to engage and thereby normally prevent said retractor means from moving said latch bolt between said extended lock position and said latch position;
(g) wherein said retractor means is so supported and said formations are so cooperable that, to allow movement of said latch bolt from the extended lock position to the latch position of (sic) the retractor means is displaceable by the cam member in a direction laterally of said sliding movement whereby to disengage the retractor means from said detent means.”I have added the feature references (a) to (g) to assist subsequent reference.
DECISION
The opponent asserts that Gainsborough is not entitled to the grant of a patent for the invention as claimed, and that he devised the invention and provided knowledge of it to Gainsborough under the terms of an agreement he had with Gainsborough. An assessment of that claim requires an understanding of the invention the subject of the patent application, a determination of any invention Nugent may have devised and shown to Gainsborough, and whether Gainsborough and/or Nugent have rights to the invention claimed. Before discussing those issues, I provide the following background relating to dealings between Mr Nugent and Gainsborough.
Mr Nugent is a designer/inventor of locks and locking mechanisms and has been involved in that activity since 1971. He lists a number of Australian patents in his declaration for which he is the named inventor. By an agreement dated 1 July 1987 (Exhibit WJN-2), Walter Locks Pty Ltd (of which Nugent was a director and shareholder) granted an exclusive licence to Gainsborough to manufacture and sell a particular patented lock invented by Nugent. Walter Locks subsequently changed its name to Nulock Industries Pty Ltd (NIPL). One lock made under the agreement was called the “NULOCK”. Under clause 15.2 of the agreement, NIPL agreed to advise Gainsborough “in general terms of progress made by it in the development and evaluation of new Products and that as and when a new product is developed, it will offer to license the manufacture and sale by [Gainsborough] ....”. According to declarant Smith, the NULOCK was released about 1989 and withdrawn from the market in October 1990 after problems developed with these locks in use. Smith also declares that attempts were made, involving Nugent, Fortune and Gainsborough employees, to modify the NULOCK to overcome the problems but this work ceased about the end of 1991 (clause 12). At clause 19, Smith refers to several exhibits indicating that the July 1987 agreement was terminated in March 1992. And at clauses 26 and 27 Smith says that Nugent submitted further lock proposals to Gainsborough in August 1992 and September 1994 which, according to Smith, used the same basic mechanism as described in Australian patent 604536.
According to Smith (clause 4) Australian patent 604536 relates to the original NULOCK mechanism and I note that it is the corresponding patent in Australia derived from an UK patent application specifically mentioned in the agreement of July 1987 and has a priority date of 13 March 1987. The NULOCK permitted the bolt to assume a latch position which could be unlatched by turning the door knob, or a deadlock position which could be obtained (and released) by key operation. The arrangement provided no positive connection between the key and the bolt since a spring was used to throw and retrieve the bolt from the deadlock position. The mechanism permitted the keying to be easily changed.
The invention of the application
I have indicated earlier that the invention relates to a dual function lock mechanism, and I believe that claim 1 fairly and broadly defines the features of the mechanism described in the specification. The mechanism permits the latch bolt to assume either a release position, a latch position or an extended lock position (akin to a typical deadlock position). Critical to moving the latch bolt is the retractor means (feature (c)) and the formations on the cam member and on the retractor means (see feature (e)). Also the detent means (feature (f)) prevents movement of the retractor means from a certain position unless the cam member laterally displaces the retractor means (feature (g)).
An embodiment of the invention described shows the retractor means as an elongated plate element which is pivotally connected at one end to the latch bolt, the element having certain formations near its other end which can be engaged by the cam member or the detent means. The cam member(s) can be connected to a cylinder lock or to a typical door knob.
Another embodiment described incorporates a privacy snib mechanism. This is covered in detail in appended claim 19.
Mr Nugent’s claimed developments
Nugent’s declaration
Under heading 3 of his declaration Nugent describes “various prototypes of door lock mechanisms (including a privacy adaptor) which I made prior to mid-1990 in my workshop at my home.” He states that he decided on his own initiative to develop a way to include a standard cylinder (keying facility) “in the existing Nulock body. I made a rough prototype lock mechanism which incorporated a standard cylinder in the existing Nulock body.” This he calls the “first prototype” which is exhibited in Exhibit WJN-3. I take Nugent’s reference to Nulock body as being that for the “Nulock” about which Nugent states in clause 2.2 Gainsborough “manufactured and sold ... under the Agreement” (of July 1987) and is identified as “NULOCK” by Smith. I note that the lock of the exhibit has a cylindrical main body to or in which other features are mounted, the bolt moving on an axis at 90 degrees to and intersecting the axis of the main body. I have no clear evidence before me from which to ascertain whether the NULOCK had a cylindrical main body as appears in Nugent’s first prototype. However I note that the drawings for AU patent 604536 do not show such a body. To me the first prototype described by Nugent and the lock assembly of Exhibit WJN-3 include all features of the opposed claim 1, there being variations with features of the embodiments of the opposed specification.
Nugent declares that he devised a “second prototype” before mid-1990 and this is exhibited in Exhibit WJN-4. This prototype consists of a latch bolt, a cylindrical housing for the bolt and a linking member connected to the bolt. These components are said to be improvements over the equivalent components of the first prototype.
Nugent also states “I subsequently devised” a release mechanism with a privacy adaptor prototype, and elements of this are exhibited in Exhibit WJN-5. The prototype exhibited is incomplete as Nugent says he has lost some components of it. What is described and exhibited bears some correlation with the snib mechanism and escutcheon shown in the opposed application. It appears that photographs showing the prototypes in Exhibits WJN-3 to 5 were served on the applicant.
Under heading 4 of his declaration Nugent declares that “in or about mid-1990, I ... supplied to Mr Liebherr the first prototype in pursuance of NIPL’s obligations under clause 15.2 of the Agreement.” Liebherr was then an employee of Gainsborough. Nugent states that he explained the workings and features of the prototype to Liebherr and how a production lock would be improved (clauses 4.2 & 4.3). About a month later Nugent states he supplied the second prototype to Liebherr pursuant to the Agreement and explained it (clauses 4.4 & 4.5). In clauses 4.6 & 4.7, Nugent states that “in or about late 1990 to early 1991” he supplied the privacy adaptor prototype to Liebherr and explained it, and later “in about early 1991” showed a more highly developed version of it to Mr Wansbrough of Gainsborough.
Under heading 5 of his declaration Nugent declares that Gainsborough was in possession of his prototypes before the priority date of application 662657 (earliest priority date being 9 October 1992) as he had supplied them to Liebherr who was then employed by Gainsborough. I note that Erwin Liebherr and Geoffrey Fortune are listed as actual inventors for application 662657. Mr Liebherr died on 17 September 1992.
Baird’s declaration
Matthew Baird, in his declaration filed as evidence in reply, provides evidence to support Nugent’s claims about his prototypes. Baird was employed by Gainsborough from July 1984 to October 1991 (clause 8). As manager of the engineering department Baird declares that he oversaw the design and development of new products and the lock development projects - he reported progress on projects to the Board of Directors at monthly meetings (clauses 9 and 12). He further declares that:
Nugent was “commissioned to work with Gainsborough as a consultant to design, develop and manufacture locks” (clause 10);
he assembled a team to assist in developing the ideas of Nugent. Nugent would present ideas in the form of rough, conceptual models or prototypes, which illustrated the principles of their intended operation, and he would instruct Mr Liebherr to construct a fully functional model. Nugent would assist in solving problems as they arose, often by “working on the bench with Mr Liebherr”. Mr Fortune, a contractor, would assist by making models for testing and for presentation to the Management Board for consideration. (clause 13);
he permitted Nugent free access to the Gainsborough factory at Canterbury and Nugent’s day to day dealings with Gainsborough were usually with he and Mr Liebherr (clause 15);
he has seen the photographs included in the evidence (photographs of exhibits WJN-3 to WJN-5 served on the opponent) of the prototypes referred to in Nugent’s declaration and recognises these prototypes as the work of Nugent (clause 19);
in the course of developing the mechanisms based on the principles disclosed in these Nugent prototypes he convened “very many” meetings with Nugent, Liebherr and Fortune present, and that the concepts disclosed by these Nugent prototypes were all presented to him by Nugent and discussed and developed at the meetings (clause 20);
he has seen the photographs included in the evidence of the “Liebherr prototype” referred to by Fortune and says it embodies ideas presented to Gainsborough by Nugent (clause 21); and
in his view claim 1 accurately describes the principle underlying the operation of the prototypes which Nugent presented to Liebherr (clause 24).
Thus, in summary, Baird supports Nugent’s claim that the prototypes referred to and exhibited by Nugent in his declaration were devised by Nugent. He also states that these prototypes were presented to him by Nugent and that to enable further development on these mechanisms, Liebherr and Fortune were involved at various times. I note that Baird was employed by Gainsborough over the period Nugent says he supplied the prototypes to Liebherr. However in respect to some of his statements about his actions with Nugent and Liebherr (see eg. clauses 13,15 & 20), Baird provides no specific evidence of the timing of these stated actions. Also I note that in clauses 20, 21 and 24, Baird refers to the “principles” or “concepts” or “ideas” disclosed in Nugent’s prototypes without elaboration of same. I further note that Baird does not say whether he reported progress or any development activities regarding these Nugent prototypes to meetings of the Management Board of Gainsborough.
Gainsborough’s evidence in answer to Nugent’s claims
Fortune’s declaration
Geoffrey Fortune, a contract prototype constructor and a provider of engineering design drafting services, declares that:
he worked for Gainsborough on the development of Nugent’s NULOCK - the NULOCK was withdrawn from the market towards the end of 1990 (clause 2);
in June 1991 he was contracted by Gainsborough to work with Nugent on a redesign of the NULOCK. This work was completed and the prototype handed to Nugent on 22 August 1991, which was the last time he saw Nugent (clause 3);
in early November 1991 he attended a meeting at Gainsborough when a decision was taken not to proceed with the manufacture of the NULOCK (clause 4);
some two weeks later Liebherr approached him for his opinion on a lock concept and prototype which Liebherr had developed. He adds that he arranged a meeting with Wansbrough and Smith [of Gainsborough] to present the prototype to them. Exhibit GJF-1 are photographs of the “Liebherr prototype” (clause 5);
from the meeting he was to proceed with design layouts in collaboration with Liebherr to resolve problems with the design (clauses 6 & 7);
the nature of the problems caused the project to stagnate from mid February to mid June 1992. During this period he “conceived the Hinged Centreplate principle” which he presented to a meeting at Gainsborough on 14 July 1992. Liebherr did not suggest this principle to Fortune. The centreplate idea involved a centreplate pivotally attached to a lock bolt and actuated by rotation of lock cams and also by a lever operated by the door handle - it replaced the “sliding carriage” integral with the lock bolt of the Liebherr prototype (Clause 8). A photograph of a plastic model embodying the centreplate idea is Exhibit GJF-2 (clause 9); and
the privacy snib arrangement of application 662657 is a logical development of the releasable snib mechanism for door handles disclosed in PCT application No. PCT/AU90/00240 (Baird, Nugent and Fortune, co-inventors). The Liebherr prototype did not include a privacy snib (clause 10).
The Liebherr prototype referred to is itself exhibited as GS-1. The device exhibited has a cylindrical body of about 54mm diameter, with a key lock cylinder mounted therein. An integral bolt and sliding carriage is arranged to move on an axis which intersects and is at right angles to the axis of the body. A cam of the lock cylinder acts on the carriage to move the carriage and bolt to assume 3 positions - retracted, lock and extended lock. The device exhibited does not show any elements suggesting door handle operation of the bolt.
Smith’s declaration
I have already referred to some of Smith’s evidence concerning the NULOCK, its withdrawal from the market and ultimate decision by Gainsborough to cease further work on the NULOCK. This evidence accords with that of Fortune about the NULOCK project. About the “Liebherr prototype”, Smith declares that:
Liebherr approached executives of Gainsborough in November 1991 with his prototype which is exhibited as GS-1 to his declaration (clause 13);
Gainsborough considered the Liebherr prototype promising and arranged for Liebherr to liaise with Fortune to improve the prototype to enable manufacture. Patent attorneys Davies Collison Cave were contacted in order to conduct a novelty search. Exhibit GS-4 includes copies of a conference note dated 22 November 1991 by a patent attorney describing discussions with Gainsborough personnel, and a related invoice dated 27 November 1991 for a patent search (Clause 14); and
the small neck interconnecting the cam follower (or carriage) and the bolt was thought to be a point of weakness of the Liebherr prototype, but Fortune provided an alternative element to drive the bolt (the retractor 36 illustrated in application 662657) (Clauses 15 & 16).
About dealings between Gainsborough and Nugent, Smith declares that:
in all dealings with Gainsborough, Nugent dealt with senior executives, including Wansbrough and Hooper, all of whom were in positions of authority and were, after consultation with the Board, able to bind the company (clause 20);
at least during the life of the July 1987 agreement, Nugent always made offers to show prototypes in writing, and sought written confirmation of any product offered to Gainsborough. Exhibit GS-10 is a copy of a letter dated 31 January 1991 to Gainsborough with such an offer under the July 1987 agreement, and Exhibit GS-11 a copy of an acknowledgment dated 20 February 1991 from Gainsborough concerning the offer and inspection of the product (Clause 21);
it is fanciful to suggest that Nugent contacted Liebherr regarding his prototypes (Nugent’s clauses 4.1 - 4.7) as Liebherr was a wages employee and toolmaker at Gainsborough. Nugent was not permitted free access to the Gainsborough premises and did not “just drop in” (clause 23);
after the termination of the July 1987 agreement, Nugent continued to submit proposals to Gainsborough. Exhibit GS-18 is a copy of a facsimile dated 28 August 1992 from Nugent to Gainsborough regarding keying for a lock of the type described in AU patent 604536. Exhibit GS-19 is a copy of a Gainsborough diary note of a lock demonstration conducted by Nugent on 7 September 1994 at which he (Smith) was present. The lock demonstrated used the same basic mechanism as in Patent 604536. (Clauses 26 & 27);
annexures GS-18 and GS-19 clearly indicate that as late as September 1994 Nugent was wedded to the basic idea of the lock disclosed in Patent 604536. Had Nugent devised a lock with a different operating principle, Smith has no doubt that any such proposal would have been formally documented to Gainsborough from Nugent as with other proposals (clause 28);
Nugent’s allegation that he disclosed two prototypes with pivoted retractor to Liebherr who drew on those disclosures to produce his (Liebherr’s) prototype, cannot be as the Liebherr prototype did not include a pivoted retractor but rather a rigid link between bolt and the member actuated by the lock (clause 29); and
in answer to clause 4.7 of Nugent’s declaration, he says that a prototype referred to in GS-10 and GS-11 being a lock mechanism not a privacy adaptor was shown to Wansbrough “in or about early 1991” (clause 30).
Hooper’s declaration
Jeffrey Hooper declares that:
during his time as Managing Director of Gainsborough he continued the company policy of ensuring that visitors to the company premises did not have unfettered access to manufacturing areas and that all visitors were met by the salary staff member with whom they were to deal. This applied to Nugent and his dealings with the company were conducted by himself (Hooper), Wansbrough, or other senior executives;
proposals made by Nugent to Gainsborough were accompanied by written documentation of some sort. He knows of no submission or suggestion made by Nugent which was not accompanied by documentation of some kind; and
he asked Liebherr after he had presented “his original prototype” to senior Gainsborough executives “Has anybody else contributed to this prototype?” and the answer was “No”.
In summary, the evidence filed on behalf of Gainsborough provides corroboration for the following statements or events:
work on NULOCK or on its redesign by Gainsborough ceased in early November 1991;
the Liebherr prototype was presented to a meeting of Gainsborough executives in late November 1991 - this prototype had an integral bolt and sliding carriage;
Fortune assisted Liebherr to improve the design and conceived the hinged centreplate element which was presented to executives in July 1992;
Nugent dealt with senior executives at Gainsborough;
Nugent always offered to show prototypes in writing, and sought written confirmation of any product offered to Gainsborough;
Nugent did not have unfettered access to Gainsborough’s facilities; and
as late as September 1994 Nugent demonstrated to Gainsborough a lock which used the basic idea of the lock disclosed in Patent 604536.
Further to point 2 above, the patent attorney’s conference note of Exhibit GS-4, referred to by Smith at clause 14, refers to the lock system discussed, and whilst the description of the lock is limited, it is evident to me that the elements described clearly correspond to elements of the carriage and actuating means as in the Liebherr prototype as is exhibited as GS-1. Thus this evidence corroborates the existence of the Liebherr prototype in late November 1991. And further to point 3, I note that provisional specification PL 5182 filed on 9 October 1992 incorporates the centreplate element feature Fortune said he conceived.
Elements of conflict between the evidence on behalf of Nugent and Gainsborough
In assessing the evidence before me in this matter there are a number of areas where there is some conflict.
Gainsborough’s evidence is that “[in] all dealings with Gainsborough, Nugent dealt with senior executives at Gainsborough ...”, however this contrasts with Baird’s evidence about his contact with Nugent and Nugent’s working relationship with other members of the Engineering Department including Liebherr. There is no elaboration of what was meant by “dealings” but given the context of the statement, these seemed to relate to activities whereby, if needed, executives could bind the company by deciding on any proposal or offer made by Nugent. As such, Gainsborough’s evidence does not suggest that the activities Baird mentions were not possible.
Nugent’s evidence that he supplied Liebherr with prototypes is doubted by Smith. This doubt seems to be asserted on the basis of the stated “dealings” between Gainsborough executives and Nugent. Baird however says that Nugent presented him with ideas as in his models or prototypes and that if he thought an idea warranted development he would instruct Liebherr to assist Nugent with further development on the prototype. If Nugent’s prototypes existed at the relevant time I am inclined to accept that they were supplied to Liebherr as Nugent declares.
Gainsborough’s evidence raises further doubts about whether Nugent presented the prototypes as he has stated. This stems from the evidence that Nugent always offered to show prototypes in writing, and sought written confirmation of any product offered to Gainsborough. Hooper says that he “knows of no submission or suggestion made by Nugent which was not accompanied by documentation of some kind.” The implication is that no written offer existed for Nugent’s prototypes at the relevant time - no evidence has been filed indicating that there was such an offer.
There are conflicting views on what access Nugent had to Gainsborough’s facilities. Hooper and Smith indicate Nugent did not have unfettered access and that access was via “senior executives”. Neither declarant says anything about how access and its duration was policed if given. Baird however says he permitted Nugent free access to the factory. I have no reason to seriously doubt the evidence of Baird on this issue.
(I note from Smith’s evidence that Nugent was involved in activities to modify the original NULOCK, and as this work also involved senior employees of Gainsborough, it is reasonable to assume, since it is not otherwise stated, that these activities took place at Gainsborough’s factory.)
Determination of any invention Nugent may have devised and shown to Gainsborough
The crucial aspect of this matter turns on whether Nugent devised an invention which he revealed to Gainsborough and which subsequently manifested itself as the invention claimed.
In deciding a matter such as this the Commissioner is entitled to act on any material which is "logically probative" of the issues under decision. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see eg. Dunlop Holdings Ltd's Application (1979) RPC 523). Furthermore it is clear from the authorities (see eg. Stamp v W J Powell Pty Ltd (1918) 24 CLR 339) that it is encumbent upon an opponent to prove its case. Thus in this case the onus is on the opponent to provide clear evidence to justify a finding that the nominated person, ie. Gainsborough, is not entitled to the grant of a patent for the invention. In the present matter I must consider the evidence and decide the issues mindful of these general parameters.
Important to this issue is whether the prototypes referred to in evidence by Nugent, particularly the first and second prototypes, were available to Gainsborough, or alternatively, Liebherr or Fortune, prior to the priority date of the present application. As I have noted previously, to me the first prototype described by Nugent and the lock assembly of Exhibit WJN-3 include all features of the opposed claim 1. Nugent’s evidence is that he made these prototypes in his workshop at his home. His evidence is imprecise as to when he made them since he merely states it was prior to or before “mid-1990”. There is no evidence from Nugent which otherwise heightens the certainty about this timing, such as dated documentation about the prototypes or reference to other events. Similarly there is no evidence from Nugent which lends support to his evidence that he supplied these prototypes to Liebherr around mid-1990 or otherwise fixes this time more precisely. Nugent does not say whether there was any follow-up action at Gainsborough regarding these prototypes. In fact Nugent says nothing about any subsequent activity on his part or others concerning any development of the concepts in the prototypes or of any efforts to exploit the concepts under clause 15.2 of his agreement with Gainsborough. I note that Nugent does not mention Geoffrey Fortune in his evidence.
Mr Baird declares that he recognises these prototypes (from photographs included in evidence) as the work of Nugent. Baird does not say whether he saw the actual prototypes while employed at Gainsborough, but he does say that he has seen many models made by Nugent. However he does say in clause 20 that he convened very many meetings in “the course of developing the mechanisms based on the principles disclosed in Mr Nugent’s first and second prototypes”. He gives no indication of the timing of these meetings (ie. month(s) or year) or when Nugent first presented to him the concepts disclosed by his prototypes. Baird does not specifically say what eventuated out of these meetings regarding these prototypes.
I note that in clause 18 Baird says “the development of the lock the subject of the opposed patent took place according to this development procedure” (as described in his clause 13). I have some difficulty with this statement. The difficulty arises from the fact that there is evidence from Fortune, which is corroborated by Smith and to a lesser extent by Hooper, that the lock the subject of the opposed application arose from the Liebherr prototype put to executives of Gainsborough in November 1991. Baird left the employ of Gainsborough in October 1991 and thus Baird is hardly in a position to state how the development of the lock the subject of the application took place.
Nugent says he supplied the prototypes to Liebherr pursuant to clause 15.2 of his agreement with Gainsborough. This clause of the agreement refers to [NIPL] advising the Manufacturer, that is Gainsborough, in general terms of the development and evaluation of new products and offers to licence the manufacture of such new products, and thus I think it would have been surprising had Nugent first supplied Liebherr (or for that matter Baird) with proposals or, as asserted in this case, prototypes without first dealing with relevant company executives. It seems surprising given that Nugent’s first and second prototypes are for a lock with an operating mechanism which is a significant departure from the NULOCK design, and thus one seemingly with potential commercial attractiveness to Nugent and Gainsborough given the known problems with the NULOCK in 1990 and 1991. There is nothing in evidence which establishes whether or not Nugent first dealt with executives about these prototypes. Smith’s evidence refers to Nugent approaching Gainsborough executives about other mechanisms he had developed, one in early 1991, another in August 1992 and another in September 1994 - Smith says that the 1992 and 1994 approaches concerned locks or elements based on the NULOCK mechanism.
There is evidence from Smith and Fortune that there were efforts made to redesign the NULOCK to avoid problems which had led to its withdrawal from sale in October 1990. Fortune declares that he worked with Nugent in mid 1991 on a redesign of the NULOCK. Thus this redesign work took place around a year after Nugent declares that he provided his first and second prototypes to Liebherr at Gainsborough.
Thus the material before me leads me to the following observations:
Nugent asserts he made various lock prototypes and then supplied two of them to Liebherr by about mid 1990 and the third by late 1990 or early 1991. Exhibits WJN-3 to 5 are these prototypes or what still exists of them. Nugent’s own evidence provides no other support for the development or existence of these prototypes at the time periods stated or of the involvement or knowledge of persons other than Liebherr concerning the prototypes at the time.
Baird says he recognises the prototypes in Nugent’s evidence as being the work of Nugent, and says he held meetings involving Liebherr, Fortune and Nugent to discuss and develop the concepts disclosed in the prototypes. He does not indicate when these meetings took place, nor what developed as a result of these meetings. Baird left the employ of Gainsborough in October 1991.
Evidence on behalf of Gainsborough asserts that Nugent always made offers to show prototypes to Gainsborough in writing, and several instances of this practice are shown by exhibits in evidence. There is no material before me to indicate whether or not that practice was followed by Nugent for the prototypes under discussion. Lack of such material does not of itself lead me to the conclusion that the prototypes did not exist at the time stated by Nugent. But the absence of documentation or any detailed elaboration by Nugent in his evidence of his dealings, or lack thereof, with Gainsborough executives concerning the prototypes leaves me in considerable doubt as to what transpired at the time assuming the prototypes then existed. Clause 15.2 of the agreement seems to me to have placed some onus on Nugent or NIPL to report to Gainsborough progress on the development of new products, irrespective of the degree of development of such products.
Gainsborough has provided corroborated evidence concerning when the Liebherr prototype was presented to Gainsborough executives and the involvement and subsequent improvement to the prototype devised by Fortune. There is also evidence confirming discussions with a patent attorney around the time of the presentation to executives, and the resulting improved mechanism as described by Fortune is reflected in the description of the first provisional specification associated with the opposed application.
Thus in weighing up the evidence in this matter, I have before me on the one hand evidence on behalf of the opponent which I consider plausible in establishing whether the Nugent prototypes were available to Gainsborough, or alternatively Liebherr or Fortune, prior to the priority date of the present application, and on the other hand evidence on behalf of Gainsborough which is also plausible to that issue and the circumstances surrounding the development of the lock of the present application. However while the evidence of Nugent and Baird is plausible, in my view it is by no means convincing regarding the availability and supply of the Nugent prototypes at the times asserted in their evidence. As indicated above their statements provide limited information about the asserted supply and development of these prototypes and there is no documentation before me contemporaneous to the events and the stated times to otherwise corroborate or heighten support for their evidence. Against that, the evidence on behalf of Gainsborough that Nugent worked with Fortune in mid 1991 to redesign the existing NULOCK and that Nugent made other proposals to Gainsborough in 1992 and 1994 concerning locks or elements based on the NULOCK mechanism, events all occurring after Nugent asserts he made his prototypes, in my view tends to lessens the likelihood of the existence of the prototypes at the relevant time given that the prototype locks provide an alternative design and mechanism to the problem-ridden NULOCK.
Overall, the evidence before me does not persuade me that it was more likely than not that the Nugent prototypes were available and supplied at the times asserted. Accordingly I am unable to conclude on the balance of probabilities that Nugent supplied an invention or inventions to Gainsborough, Liebherr or Fortune by way of his three prototypes represented by Exhibits WJN-3, WJN-4 and WJN-5 before the priority date of the opposed application.
Determination of whether Gainsborough and/or Nugent have rights to the invention claimed
I have previously mentioned corroborated evidence on behalf of Gainsborough concerning the development of the lock device claimed in application 662657. Given my conclusion immediately preceding, I am unable to conclude that Nugent made any direct contribution to that development. Furthermore I am unable to conclude that Liebherr and Fortune, the named inventors, in arriving at the invention claimed, used any elements conceived by Nugent and not in the public domain at the priority date. On this point it is not evident that Liebherr relied on any information he may have gained from working with Nugent to arrive at the features of his prototype (the Liebherr prototype) nor is it evident that Fortune conceived the hinged centreplate element given information gained from Nugent. Thus I am unable to conclude that Nugent is an inventor in respect of the claimed invention. Accordingly Nugent can not therefore gain entitlement to the claimed invention through inventor status.
The notice of entitlement states that Gainsborough derives title to the invention from the inventors (ie. Liebherr and Fortune) by assignment. I have no basis to doubt that claim to entitlement by Gainsborough. Accordingly, I find that Gainsborough has sole rights to the invention claimed.
CONCLUSION
I have found that Gainsborough has sole rights to the invention claimed and I therefore dismiss the opposition by Walter Joseph Nugent. I direct that the application proceed to sealing, subject to any appeal to the Federal Court against my decision as provided for under section 60(4).
As to the issue of costs, in accordance with the principle that costs follow the event I award costs against the opponent, Walter Joseph Nugent.
Trevor Bruhn
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Spruson & Ferguson, Sydney
Address for service for the opponent : 1 Main Street, Beech Forest, Vic. 3237
1
1
0