Gary John Brown v Colin Noelker
[1998] APO 67
•30 November 1998
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : Nos. 16348/97 and 27577/97 in the name of GARRY JOHN BROWN
Title: Rotary Trash Harrow
Action: Application under Section 36(1) by COLIN NOELKER for a declaration regarding entitlement to the invention
Decision: Issued .
Abstract
The core invention disclosed by the patent applications relates to cultivating apparatus known as a harrow in which one or more spiked rollers are supported within a certain range of angles to the direction of travel. One embodiment of the invention which is described but not claimed includes an additional roller locally centrally of the main rollers to ensure complete ground coverage and thus avoid the problem referred to in evidence as the "gap".
Mr Noelker claims entitlement to the centre roller either alone or jointly with a Mr Frank Frawley who is a licensed manufacturer of the harrow. Although not a party to the proceedings, Mr Frawley meets the description of "some other person" in section 36(1).
Found:
- inventiveness is not relevant to a determination of the present action, and the centre roller could
therefore be regarded as an "invention disclosed" for the purpose of section 36(1);
- there was insufficient evidence to show that on the balance of probabilities Mr Noelker and/or
Mr Frawley were eligible persons arising from any material contribution made together or
individually to the centre roller; and
- although the evidence for Mr Noelker included material which was not relevant to the present
action, this did not justify an award of costs to Mr Brown on some higher scale.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application Nos. 16348/97 and 27577/97 by GARRY JOHN BROWN and an application under section 36(1) by COLIN NOELKER for a declaration stating that he is an eligible person as defined in Section 15.
background
Patent applications 16348/97 and 27577/97 were respectively filed on 14 March and 23 May 1997 by Garry John Brown, with each claiming an earliest priority date of 27 May 1996.
On 28 July 1997 Colin Noelker filed an application under section 36(1) for a declaration stating that he is an eligible person as defined in section 15 in respect of both applications. The grounds relied on by Mr Noelker were said to be set out in evidentiary material which accompanied the applications made pursuant to section 36. Further evidence to support these applications was filed on 13 August 1997.
In a letter dated 29 July 1997 Mr Alfred Tatlock, patent attorney of A Tatlock & Associates, argued on behalf of Mr Brown that as neither patent application was open to public inspection, it was not possible for Mr Noelker to claim eligibility in respect of an invention the nature of which was not yet publicly known. The parties were subsequently advised by the Patent Office that:
Mr Brown had 2 months in which to file any evidence in response to the evidence filed to date by Mr Noelker
Mr Noelker had until 5 February 1998 to file any evidence which resulted from the patent applications becoming open to public inspection
Mr Brown had until 25 March 1998 to file evidence in response to any evidence filed by Mr Noelker following publication of the applications
In the event Mr Brown filed his initial evidence in response on 10 November 1997. On 5 February 1998 Mr Noelker filed evidence resulting from publication of the patent applications which was responded to by Mr Brown on 27 April 1998 after being granted an extension of time of 1 month unopposed.
The matter came to hearing in Melbourne on 6 August 1998. Mr Brown was represented by Mr Tatlock, and Mr Noelker by Mr Keith Callinan, patent attorney of Freehills Patent Attorneys. Mr Brown and Mr Noelker, among others, were also in attendance.
THE LAW
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 as so disclosed.
From the dictionary in schedule 1 of the Act, a ""nominated person" means the person identified in a patent request as the person to whom the patent is to be granted", and an ""eligible person", in relation to an invention, means a person to whom a patent for the invention may be granted under section 15." In the present case Mr Brown alone is named as the inventor and nominated person in respect of applications 16348/97 and 27577/97.
The wording of 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 person making an application under section 36(1) to clearly establish eligibility whereby the Commissioner is satisfied that the nominated person is not entitled to the invention either solely or in part and that some other person is entitled. If such a case is not established the Commissioner is bound not to find other than for the nominated person of record.
Two further issues emerge from the provisions of section 36(1) that are particularly relevant to the present case. First, the determination of whether or not a person is an eligible person is in regard to an invention disclosed in a specification filed in relation to the application, rather than the invention as claimed, which is a broader test than that for obtaining under the 1952 Act. And second, the "other person" with whom eligibility may reside need not be the same person making an application under section 36(1).
The evidence
The evidence filed in support of the application under section 36(1) comprises:
a first declaration by Mr Noelker dated 23 July 1997 accompanied by exhibit 1 - Mr Noelker is the principal of Metalloy Welding Products (Aust.) which is in the business of fabricating farm machinery, and Pyramid Hill Welding Supplies; he further declares that he is a welding consultant with over 30 years experience in the welding industry
a second declaration by Mr Noelker of the same date accompanied by exhibit 2 (which
comprises a series of photographs)
first and second declarations by Robert Norman Bath both dated 27 July 1997 - Mr Bath is a farmer and also the principle of Gramip (Aust) Pty Ltd which distribute a range of agricultural machinery produced overseas
The evidence filed in response comprises:
a declaration dated 5 November 1997 by Geoff Coutts
a declaration dated 6 November 1997 by Brian Phillips
a first declaration by Frank Frawley dated 6 November 1997 accompanied by exhibit FF1 - Mr Frawley works for a manufacturing firm known as F.X. and P.M. Frawley
a first declaration by Mr Brown dated 7 November 1997 accompanied by exhibits GB1
to GB16 (exhibit GB13 is a video tape) - Mr Brown declares that he is a fitter and turner by
trade and has acquired experience in the construction industry
As already mentioned, the above material was filed before either of applications 16348/97 and 27577/97 had become open to public inspection. The following additional evidence was filed subsequent to publication:
a third declaration by Mr Noelker dated 4 February 1998
a third declaration by Mr Bath of the same date accompanied by exhibits RNB1 to RNB4
a declaration dated 5 February 1998 by Keith William Callinan, the attorney for Mr Noelker
together with
a second declaration by Mr Brown dated 24 March 1998 accompanied by exhibits GB21
to GB24
a second declaration by Mr Frawley dated 27 April 1998 accompanied by exhibit FF2
I will refer to the evidence where appropriate later in my decision.
THE PATENT APPLICATIONS
The subject matter disclosed is common to both applications, and relates to apparatus having cultivating members which are arranged to be drawn over the ground to pulverise and smooth the soil. Apparatus of this type is conventionally referred to as a harrow.
Known harrows utilise cultivating members in the form of spikes, spring teeth or discs. However, when the ground has stubble, weeds or other trash on its surface, the cultivating members become clogged so that it is necessary to cease cultivation and clear away the trash. The broadest form of the invention disclosed by the applications is said to alleviate this shortcoming of the prior art by providing a harrow comprising:
a main beam, means for attaching the main beam to a prime mover to be drawn at right angles to the direction of travel, at least one sub-frame fixed to the main beam and extending rearwardly of the main beam, each sub-frame supporting a spiked roller at an angle of between 50o and 55o to the direction of travel.
In use, trash caught up in the spikes is pushed towards the outer or inner edges of the area traversed by the harrow due to the disposition of the roller(s) with respect to the direction of travel. The preferred angle between each roller and the direction of travel is 53o.
Other preferred embodiments are then described. In one of them, the spikes on each roller are preferably located on a helical line around the surface of the roller, with the helices on all rollers running in the same direction. The angle of such a helix to the axis of the roller is between 50o and 55o, preferably 53o. Preferably, each spike extends from the surface of the roller so that the angle between the axis of the spike and the axis of the roller is between 50o and 55o. Again, the preferred angle between the axis of the spike and the axis of the roller is 53o.
It is also preferred that the angles between the roller and the direction of travel, and between the axis of the spike and the axis of the roller, are chosen such that the axes of the spikes are substantially parallel to the direction of travel when the spikes at the trailing edge of the roller pass through a horizontal plane.
Following this is a detailed discussion of the key inventive concept in relation to the three figures of appended drawings. The illustrated embodiment comprises two pairs of spiked rollers but a further embodiment having only one roller has apparently been found useful in confined areas such as between the rows of trees in an orchard.
The final passage of the description briefly refers to a further embodiment in which a relatively smaller roller is disposed centrally of the other rollers of the harrow. As it happens, Mr Noelker regards this embodiment as significant to his claim to entitlement.
Background to the section 36 applications
Development of the present harrow
The evidence as a whole traces the development of the present harrow through reference to a number of modifications which were made to the prototype machine first devised by Mr Brown primarily in response to feedback received from the farming and manufacturing sectors. As explained by Mr Frawley in his second declaration:
"… there were various modifications made to the Prairie Trash Harrow after the production of the first prototype both to ensure that the harrow could provide effective and durable service, to generally improve the harrow as a result of feedback from purchasers and to meet requirements of various individual purchasers. Some of these modifications were incorporated in all new machines, some were used in machines for specific purchasers and some were retrofitted. The desirability of modifications, did, on occasions come through Noelker and Robert Bath … or were brought forward by specific licensee manufacturers. Some were discussed at manufacturer's meetings."
I have already indicated that the core invention disclosed by applications 16348/97 and 27577/97 resides in the provision in a rotary harrow of at least one spiked roller which is supported at an angle of between 50o and 55o to the direction of travel. The evidence variously refers to "the Harrow" or "the machine" without specifying whether that machine actually included the angled roller(s). Indeed, the evidence is wholly silent as regards the origin of angling the roller(s) to the direction of travel. However, for reasons which will become apparent, nothing turns on this.
Put simply, the modifications of relevance to the present case relate to the incorporation of spring tensioners and a "centre" roller, and I will discuss these in further detail at a later stage. For the moment I think it appropriate to provide a summary of relevant events which lead to their implementation.
Mr Brown states that he is a fitter and turner by trade who because of an accident several years ago finds difficulty in working in his normal capacity. To supplement his disability pension, Mr Brown has undertaken various tasks for local farmers in Victoria.
In early 1996 Mr Brown was commissioned by Mr Coutts to fabricate a harrow initially with the intention of using the principle of what was known as a prickle chain harrow. After some experimentation Mr Brown produced a prototype machine in April comprised of a single spiked roller and carrier frame which was trialled by Mr Coutts on his farming property. Although encouraging, the machine did not perform satisfactorily under certain conditions of operation which necessitated some changes to its configuration.
At some point during the trials, the prototype machine was viewed by Mr Noelker and Mr Bath at Mr Coutts' property. There is some dispute between the parties as to when this inspection actually took place, and the circumstances which led to it. Mr Noelker and Mr Bath both state that they visited Mr Coutts' property on 9 May 1996 to inspect the machine, while Mr Brown is quite adamant that this did not occur until much later in the month. Curiously, the evidence of Mr Coutts is totally silent as regards the inspection.
However, the timing of the inspection is not decisive to the question of entitlement. Suffice to say that Mr Noelker suggested and arranged a demonstration of the prototype machine for Mr Frawley and others within the area to gauge their interest in manufacturing the machine under a licensing agreement. The demonstration was held at the premises of Mr Brown on 7 June 1996 who had by that time filed the two provisional applications (PO0081 and PO1180) from which priority is claimed. During June and July Mr Brown made a second machine for Mr Phillips (a neighbour of Mr Coutts) which differed principally from the original machine in that its outer section could be folded to enable the machine to be legally towed along public roads. This machine is shown in the photographs exhibited with Mr Noelker's second declaration.
Arrangements were made for a Mr Austin Freeman to manufacture and deliver a harrow to Mr Bath's site at the Speed Field Days held on 31 July and 1 August 1996. The evidence fails to conclusively establish whether these arrangements were made by Mr Brown or by Mr Noelker. Nevertheless, following positive reaction at this and later field days, Mr Bath arranged for Mr Frawley to manufacture as licensee another machine having a folding mechanism that could be used for demonstration purposes. This machine was taken to field days, demonstrations for land care groups, and property demonstrations for farmers throughout New South Wales, Victoria and South Australia. The addition of spring tensioners was a direct result of trials with the demonstration model, however, there is marked disagreement between the parties as to who between them arrived at this modification.
The video tape of exhibit GB13 shows a number of harrow machines demonstrated at the Elmore Field Day on 4 October 1996. The demonstration machine built for Mr Bath is said in evidence to be "sitting next to Mr Phillip's machine", but any structural differences between these machines are not clearly visible. More relevantly, and contrary to the evidence of Mr Noelker, none of the machines shown on display appear to be fitted with a central roller. Indeed, a major point of contention is whether this modification had been taken under consideration by either of the parties prior to the Elmore Field Day.
The machines manufactured by or on behalf of Mr Brown apparently became known as the "Prairie Prickle Rotary Trash Harrow" (see eg. exhibit GB 7) and under this title won a number of awards including the Queensland Inventor of the Year Award for 1996, and an encouragement award at the Orange National Field Days. The harrow featured at the latter event is said in evidence to have incorporated both modifications at issue, viz. a spring tensioner and a central roller.
Basis of the section 36 applications
Although having no bearing on the outcome of this decision, I note at the outset that the section 36 applications were not accompanied by a notice stating the grounds on which the applications are made as required by regulation 3.7(b). Moreover, the applications themselves state that the grounds are set out in the first declarations of Mr Noelker and Mr Bath, yet this evidence raises a broad range of issues quite unrelated to the question of entitlement.
However, the grounds relied on by Mr Noelker are alluded to in paragraph 15 of his first declaration as follows:
"Although I have not been able to obtain a copy of the specification of patent application [sic] 16348/97 and 27577/97, I believe that those specifications, or one of them, will disclose my inventions in relation to the Harrow …"
and it is clear from the evidence that by "my inventions" is meant the modifications referred to above which were conceived during the developmental stages of the present harrow. At the hearing Mr Callinan explained that the subject matter disclosed by the patent applications relating to:
the range of 50o to 55o, preferably 53o, so far as it concerns the angle of the roller to the direction of travel, the angle of the "prickles" (viz. spikes) on the roller, the angle of the helix to the roller; and
the helix in which the "prickles" are arranged on the roller
was not in dispute, with the effect being of course that entitlement to this subject matter rests solely with Mr Brown. However, Mr Callinan went on to indicate that the provision of the centre roller was pivotal to the applications made under section 36, and submitted that on the evidence this feature was conceived by Mr Noelker alone or in collaboration with Mr Frawley. Mr Brown refutes this claim.
Although Mr Frawley is not a party to these proceedings, it will be appreciated from the comments I have made earlier that section 36(1) is couched in terms which would allow him to be declared as an eligible person in place of or alongside Mr Brown.
decision
Application of the law
In deciding a matter such as this the Commissioner is entitled to act on any material which is "logically probative" of the issues under consideration. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holding Ltd's Application (1979) RPC 523). However, I would again emphasise that it is incumbent upon a person making an application under section 36(1) to clearly establish a case whereby the Commissioner is satisfied that the nominated person of record is not entitled to the invention either solely or in part and that some other person is entitled.
Furthermore, and so far as I am aware, there has ben no authoritative judicial pronouncement regarding the tests to be applied when determining entitlement since the introduction of the 1990 Act. Nevertheless, 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 was recently followed with approval by the Administrative Appeals Tribunal in Upham v Commissioner of Patents and Another (N97/1517, dated 3 November 1998).
Thus in the present case the onus is on Mr Noelker to provide clear evidence to justify a finding that on the balance of probabilities it was he (and possibly also Mr Frawley), and not Mr Brown, who made a material contribution to the invention in dispute.
Before deciding this matter, I need to consider the issue of inventiveness which was canvassed at the hearing.
Does the centre roller constitute an invention
According to Mr Bath, a field demonstration conducted by him at the property of a Mr Paul Harrington revealed that the ground between the innermost rollers (generally referred to in the material before me as the "gap") remained uncultivated due to the lack of sufficient roller overlap in this region of the harrow. This is not disputed in the evidence for Mr Brown, and indeed it is agreed between the parties that the concept of the centre roller arose from the need to address the problem of the gap in ground coverage.
Mr Tatlock submitted that the provision of a centre roller was an obvious solution to this problem, and therefore could not of itself be considered an invention for the purposes of section 36(1). Mr Brown seems to take a similar line in his first declaration where on page 18 he intimates that centre rollers are "basically well known in the farm machinery industry".
However, the key issue in the present case is not one of inventiveness, but entitlement. Inventiveness is therefore not relevant to a determination of the section 36 action (per Re:Applications by CSIRO 31 IPR 67, and Aneeta Window Systems (Vic) Pty Ltd v K ShuggIndustries Pty Ltd 34 IPR 95). Furthermore, there has not been any investigation of the inventiveness of the subject matter disclosed in the present applications - neither has even reached the stage of being examined.
Mr Callinan indirectly raised another issue of some relevance here through his submission that the centre roller is embraced by omnibus claim 11. I do not agree with Mr Callinan on this point with the result that the centre roller is not the subject of any of the claims. Prima facie, this would have put an end to the matter under the 1952 Act. However, this is immaterial under the 1990 Act since the centre roller has been disclosed in both patent applications which, as I have previously indicated, is all that is required by section 36(1).
In view of the foregoing, I intend to proceed on the basis that the subject matter at issue may properly be viewed in the context of the definition in the 1990 Act that an invention includes an alleged invention.
Mr Noelker's case ultimately relies upon his alleged contribution to the development of the centre roller. Nevertheless, it is clear given the substance of the evidence before me that my decision on this matter must necessarily take into account the relationship between the parties at the relevant time.
Relationship between the parties
Following its demonstration at Mr Coutts' property, Mr Brown and Mr Noelker reached an agreement regarding the development and commercialisation of the harrow. According to Mr Noelker in his first declaration, he "was to be in charge of all marketing and administration, making arrangements for manufacturing, the collection of royalties, and the demonstration of the product at field days." Mr Brown apparently "was to handle all the engineering side of things." Mr Bath had also realised the potential of the harrow and became involved with field day demonstrations and exhibitions.
The business association between Mr Brown and Mr Noelker (which was never formally concluded) deteriorated for various reasons, and eventually was terminated in July 1997.
Mr Noelker states that due to the nature of his role in the business association he was advised of problems farmers (including Mr Bath) had experienced during use of the harrow, which in turn were discussed by Mr Noelker with its manufacturers, and in particular with Mr Frawley. This is confirmed by Mr Brown and Mr Frawley. However, both declarants dispute Mr Noelker's claim that "in most instances, the problems were solved by me directly with the manufacturers." As put by Mr Frawley in his second declaration:
"… it was my experience the [sic] whilst Noelker was on occasions in my workshop whilst I was developing and completing modifications to the Prairie Harrow he has not input into that actual modifications [sic], although he may have raised, I believe directly or indirectly as a result of feedback from users the desirability of certain changes. I am not directly aware of any input he may have had to other manufacturers but each manufacturer was made aware of modifications and there is no case where I have been told that a modification was suggested in specific terms by Noelker."
Mr Brown for his part asserts that Mr Noelker acted as a "conduit between Frawley and myself".
One problem Mr Noelker alleges to have solved was the tendency of the harrow to lift and bounce in certain soil conditions, thus decreasing its effectiveness. In his first declaration Mr Noelker states that he was made aware of the problem of bounce in September 1996 which appears somewhat inconsistent with Mr Bath's third declaration where he implies that this problem was not recognised until after the Elmore Field Day in October. Mr Brown claims that the problem was already known to him as a result of the trials conducted at the property of Mr Coutts.
Whatever the case may be, it is common ground between the parties that the problem of bounce was overcome through a modification to the harrow which I have previously referred to as the spring tensioner. There is, however, marked disagreement as to who contributed to this solution.
Mr Brown states that the problem was overcome by Mr Frawley "in conjunction with myself". In his first declaration he says:
"Frawley developed the spring arrangement using a Holden Camira spring, which was tested and adopted after several other approaches had been considered … Noelker thought he could contribute by purchasing flat truck springs … These were considered to be an option as it was a suggestion by me."
On the other hand, Mr Noelker states that he jointly developed the spring tensioner with Mr Frawley which appears to find support in the evidence of the latter declarant where it is said that the use of truck leaf springs was suggested by Mr Noelker. Mr Frawley goes on to explain that he discarded this option in favour of Holden Camira coil springs, and then states:
"I designed and manufactured an arrangement using these springs, and this worked satisfactorily. Noelker was present whilst I did this and whilst the device was tested but he had no direct input into the selection of the springs used, or the actual construction."
Although this statement makes no mention of Mr Brown's alleged involvement with the development of the spring tensioner, I note that Mr Frawley has exhibited a list prepared by him of modifications "in which Gary Brown and I were involved" (see exhibit FF2). The second modification appearing on the list is worded "spring tensioners". I also note that Mr Frawley's evidence seems at odds with the assertion made by Mr Noelker that his proposal (shown in the rough sketch which comprises exhibit 1) "was subsequently incorporated into the design of the Harrow."
Overall the evidence is of little assistance in determining who between Mr Brown and Mr Noelker devised the solution to the problem of bounce. I have no reason to reject their evidence that both were aware of the problem, but there is nothing before me to establish who conceived the actual structure employed, or the level of the respective contributions made to its development.
The credibility of Mr Noelker and, to a lesser extent, Mr Brown, has been referred to throughout the evidence. However, the evidence so far as is relevant to the question of entitlement, particularly as regards their background experience, is in my view of sufficient weight to support a claim by either declarant to technical competence and innovative activity in the relevant field. Mr Noelker had apparently designed a machine known as the "Pinacle" harrow, and Mr Brown's activities are of course best demonstrated by his inventorship role in relation to the present harrow.
Mr Frawley, who is essentially impartial to the parties, has stated that a number of modifications (including the spring tensioner) were made by him "in consultation with" Mr Brown. Mr Frawley unfortunately does not elaborate on the precise nature of his association with Mr Brown and, furthermore, his comments regarding the selection of springs are suggestive of at least some initial input from Mr Noelker. However, and as submitted by Mr Callinan, what the evidence does reveal is that the involvement of Mr Frawley with the development of the spring tensioner cannot be disputed. I agree and as a consequence will return to this matter at a later stage.
The issues raised concerning the development of the spring tensioner closely parallel those raised in relation to the centre roller modification. I will therefore consider this central issue mindful of the above shortcomings in the evidence.
The centre roller
Mr Noelker states that the problem of the gap was under active consideration by him at the same time he was addressing the problem of bounce, that is, in September 1996. He continues as follows:
"I therefore proposed a modification to add a centre roller and Mr Frawley believed the central roller would solve the problem. Mr Frawley and I therefore designed the appropriate centre roller and added it to the specifications for the Harrow. It solved the problem."
He also says that Mr Brown was not in attendance when the centre roller was developed. According to Mr Noelker, the problem was resolved in September, and a centre roller was incorporated into the harrow which was demonstrated at the Elmore Field Day held early the next month. I have some concerns with this aspect of his evidence.
First, and as already stated, none of the harrows recorded on the video tape of exhibit GB13 which were on display at the Elmore Field Day appear to include a centre roller. Second, Mr Noelker subsequently claims that he discussed the matter of the centre roller with Mr Frawley at the insistence of Mr Bath. Mr Bath, it will be recalled, has given evidence to the effect that the problem of the gap was not realised or communicated to Mr Noelker until after the field day which lends credence to Mr Brown's testimony that the problem "did not become of any importance until October". Finally, Mr Noelker's statement regarding the alleged non-attendance of Mr Brown does not appear to sit well with evidence given by Mr Frawley, including the following passage from his second declaration:
"The problem was discussed with Gary Brown and, almost certainly with Noelker but as far as I am concerned, Noelker had no input into the form of centre roller adopted."
Mr Callinan submitted that this apparent inconsistency could be explained by the fact that Mr Frawley's remarks were directed to the form of the centre roller, and thus did not reflect the situation regarding the orientation of the roller which was devised by Mr Noelker. I have difficulty accepting this line of argument, not the least because none of the material before me even refers to these characteristics of the centre roller. The centre roller is not mentioned until the final statement in the body of the specification of each patent application, which reads:
"Yet further embodiments of the invention incorporate a relatively smaller roller disposed centrally of the other rollers of the harrow. Such an embodiment of the invention could be similar to the embodiment of Figure 1, but differing from that figure in that there is a fifth roller disposed between the innermost two rollers, and straddling the central axis of the machine. The longitudinal axis of such a roller may be at an angle either clockwise or anti-clockwise from the direction of travel. Such a roller covers the gap in ground coverage between the inner edges of the two inner rollers, and can also be used for spreading chemicals."
Figure 1 in fact depicts a fifth or centre roller having its longitudinal axis at an angle anti-clockwise from the direction of travel, and parallel to one of the pairs of rollers of the harrow which are disposed in the same direction. Although not stated (and there is no direct evidence on the point), it seems unlikely given the thrust of the core invention that this centre roller would be disposed at an angle to the direction of travel other than between 50o and 55o.
Assuming that this disclosure relates to the "orientation" of the centre roller as Mr Callinan has suggested, I do not see how Mr Noelker can be credited with its conception given his tacit acknowledgement that the idea of locating the rollers within a certain range of angles to the direction of travel originally came from Mr Brown alone.
However, it seems from the evidence as a whole that the problem of the gap was not overcome by the selection of a centre roller having a particular form or orientation; rather, the evidence suggests to me that the solution simply lay in the provision of a centre roller per se. Mr Callinan himself appeared to concede this point, and I intend to proceed on that basis. This means of course that the evidence of Mr Frawley cannot be disregarded as initially argued by Mr Callinan.
Mr Tatlock submitted that aside from the fact that the provision of the centre roller was not inventive in the patent law sense (in which case it was not open to any of the parties to claim inventorship status in respect of this subject matter), there is insufficient evidence to show on balance who arrived at the idea of utilising a centre roller with the present harrow. I share these concerns: the evidence is largely based on a number of unsubstantiated or contradictory assertions, and, consequently, does not conclusively establish the facts regarding entitlement to the subject matter at issue.
As a further illustration of this, I refer to the evidence concerning the respective contributions allegedly made by Mr Brown and Mr Noelker to the provision of the centre roller. In his third declaration, Mr Noelker states:
"Peter White of Ag-Mac in Queensland suggested a roller behind the main harrow assembly. After considering that proposal and others, Mr Frawley and I jointly developed the centre roller."
The position of Mr Brown is set out in his first declaration where he says:
"On 23rd of October, 1996, Frank Frawley, his staff and I, worked together … and developed a centre roller … This was trialled twice, during this day. … The first centre roller was made by Frawley from a damaged roller from Mr Bath's demonstration machine. This was done so that at a meeting to be held that evening, it was hoped to have a response to this problem [ie. the gap]."
Mr Frawley is not directly supportive of either party on this issue. He states that the problem of the gap was discussed by him with Mr Brown and (almost certainly) Mr Noelker and, although he has corroborated Mr Brown's involvement with the centre roller by way of exhibit FF2, his evidence is totally devoid of information concerning its origin. Mr Frawley has also said nothing of the activities alleged by Mr Brown to have occurred on 23 October, and in fact omits any reference to the date on which the centre roller was adopted. However, I note that the evidence of Mr Bath tends to lend support to Mr Brown's contention that the centre roller was developed in October 1996, and not September as has been stated by Mr Noelker.
Exhibit GB14 is a copy of the minutes of the meeting held on 23 October which evidently was chaired by Mr Noelker. Page 2 of the minutes contains the following entry:
"GAP WORRIES - varying widths on different soils
doesn't show up behind tyned implements
evident when used on own
modification required
give client option to recall to add new apparatus
after trial machine remains square with add on
small amount to recall at present…………
Motion
All manufacturers agree to modify with add on.
Mvd. Norm 2nd Robert"
Mr Brown states that the expression "add on" refers to the solution to the problem of the gap, which was later called a centre roller. This is not contested by Mr Noelker who instead points to the fact that the minutes do not indicate when the solution was actually created. With this I agree - the minutes merely serve to confirm that the "gap worries" had been resolved by the time the meeting was held.
Mr Callinan submitted that the divergent nature of the evidence was consistent with a failure on the part of Mr Brown to appreciate that the final form of the centre roller, while embodying the invention, did not constitute the inventive concept itself. In taking this argument further, Mr Callinan said that the notion of what was required in order to overcome the problem of the gap came from Mr Noelker, and this idea was reduced to practice by Mr Frawley on 23 October with the assistance of Mr Brown.
The principles which apply here were discussed in Falkenhagen et al v Polemate Pty Ltd (unpublished decision on application 84712/91 dated 16 June 1995) where the delegate said at page 19:
"From the law references I mentioned earlier it seems to be the case that a second person, engaged because of that person's expertise to construct a device or prototype 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."
In the present context Mr Callinan's position seems to be that the involvement of Mr Brown may have led to a preferred workable embodiment of the centre roller, but it did not change the result contemplated by the original concept of Mr Noelker. In other words, Mr Brown can only be regarded as the "second person" referred to above.
Whilst the evidence it not entirely inconsistent with this aspect of Mr Callinan's version of events, the fact remains that the issue to be ultimately decided is whether the evidence clearly demonstrates that in the present case the aforementioned "first person" is Mr Noelker.
The evidence for Mr Brown endeavours to discredit Mr Noelker's claim to entitlement through reference to his alleged lack of expertise in, and involvement with, technical matters concerning the harrow.
I have already indicated that the first leg to this assertion is unfounded. As to the second, Mr Frawley has stated that any problem raised was generally discussed between Mr Brown and the licensee manufacturers, which is said by Mr Brown to be confirmed by the copy of the letter sent by Mr Noelker to all manufacturers in which he says that "engineering queries are Gary's department not mine" (see exhibit GB8). However, this letter is dated 22 February 1997 which is some 5 months or more after the centre roller was developed, and thus does not establish that enquiries of a technical nature have never been directed to Mr Noelker. Indeed, it seems reasonable to assume given his business arrangement with Mr Brown at the relevant time that Mr Noelker would have been the point of first contact by at least some users of the harrow.
For his part, Mr Noelker has stated that it was suggested to him (presumably after discussing the problem of the gap with Mr White of Ag-Mac) to use a roller behind the main harrow assembly. There is no dispute that this "trailing" roller is distinct from the centre roller at issue. He also says that after discussing this and other proposals with Mr Frawley the centre roller was developed between them. This "joint effort" is not confirmed by Mr Frawley who instead merely indicates that Mr Noelker was more than likely present when he (Mr Frawley) discussed the problem with Mr Brown.
Furthermore, Mr Noelker's evidence is not supported by contemporaneously dated documentary evidence, nor does it refer to specific relevant input from him to the discussions held with Mr Frawley. This opens the possibility that the only proposal put forward on his part was the one already suggested to him by Mr White. More relevantly, Mr Noelker's evidence does not, as would be expected in the circumstances of this case, contain any suggestion of how the centre roller was conceptualised by him and if, for example, he derived the idea of a centre roller from Mr White's suggestion. He also fails to explain whether he even gained a general understanding from this or other sources of what was required to solve the problem of the gap.
Having regard to the various issues I have discussed above, the evidence is in my opinion inconclusive as to whether Mr Noelker contributed anything of material benefit to the centre roller. Mr Noelker has made an assertion of ownership of this subject matter which is contradicted or at least unsubstantiated by the evidence of others at the centre of the present dispute who, in the case of Mr Frawley, have instead somewhat favoured the position of Mr Brown. Mr Frawley, it is true, has stated that "he [Mr Brown] may not have been in my workshop when particular aspects were done" and "Noelker was on occasions in my workshop whilst I was developing and completing modifications". However, contrary to Mr Callinan's submission on this point, Mr Frawley's evidence when viewed overall is not suggestive of any primary or collaborative role on the part of Mr Noelker in the development of the centre roller.
Indeed, there is little by way of evidence to support what I perceive to be Mr Noelker's underlying contention that his involvement was essential to all problem-solving exercises undertaken during the development of the harrow. In his third declaration Mr Bath states that he passed any problems to Mr Noelker "as I knew the problem would be addressed quickly and competently", but this falls well short of establishing that Mr Noelker was himself responsible for solving any of these problems. I note here again the evidence of Mr Brown that Mr Noelker merely acted as a "conduit" between users of the harrow and himself and Mr Frawley.
I therefore find that there is insufficient evidence to show that on the balance of probabilities Mr Noelker made a material contribution, either solely or jointly with others, to the centre roller. I now turn to the other ground on which the section 36 application relies, namely, whether the centre roller would have occurred without Mr Frawley's involvement.
There seems no doubt that Mr Frawley was engaged because of his engineering expertise, and contributed to the design and construction of a number of modifications made to the harrow. He states that the problem of the gap was discussed with Mr Brown, and that he and Mr Brown were involved with the centre roller modification. However, Mr Frawley has gone no further than this with the result that I am not in a position to determine whether his "involvement" led to the creation of anything more than a preferred workable embodiment of the centre roller. Importantly, although having had ample opportunity to do so, Mr Frawley has said nothing to the effect that the idea of a centre roller arose from him alone or as part of a collaborative effort with Mr Brown.
On balance I find that there is insufficient evidence to show that the concept of a centre roller required the input of Mr Frawley. Furthermore, there is nothing in evidence to suggest that beneficial rights to the centre roller rest with Mr Frawley.
Other issues
In a letter dated 28 July 1998 Mr Callinan expressed the belief that as a result of the hearing of the section 36 applications it may be necessary for the Commissioner to give certain directions in relation to applications 16348/97 and 27577/97. Mr Callinan enclosed an application under section 32 in respect of each patent application so as to allow those directions to be given. The facts relied on were stated to be "in accordance with the declarations that have been submitted in the application under section 36".
Section 32 is a vehicle not only for resolving disputes by joint applicants, but also for third party intervention by a party claiming eligibility, as is the case here. Given that my findings in the present action would on the same evidence have effect in any section 32 action before the Commissioner in which the issue of eligibility arose, I do not propose to have further regard to the section 32 applications filed by Mr Noelker.
Furthermore, Mr Callinan advised at the hearing that a considerable volume of the evidence for Mr Noelker was also to be considered under section 27. Although it is inappropriate for me to consider the evidence in that light, I note in passing that a principal ground of invalidity alleged is want of novelty by reason of prior use which is of course to be disregarded during examination of an application for a standard patent (see regulation 3.18(1)).
conclusion
I have found that the evidence does not conclusively show that on the balance of probabilities Mr Noelker or Mr Frawley made any material contribution to the centre roller, with the consequence that it has not been established to my satisfaction that either is an eligible person in relation to the invention in dispute. As Mr Noelker has failed to discharge the onus that rests with him in the present action, I also find that Mr Brown is the sole eligible person in respect of this invention.
This being the case, I have no basis for making a declaration as provided by section 36(1).
costs
The power of the Commissioner to award costs is discretionary, so I must take into account all relevant considerations.
Ordinarily in proceedings such as these, costs follow the event. There are no special circumstances applying in the present matter which warrant varying that approach. Mr Tatlock submitted that if Mr Brown was successful he should be awarded costs above scale because the evidence for Mr Noelker was not confined to the issue of entitlement and thus unnecessarily difficult to follow. While I can sympathise with Mr Tatlock's concerns, I do not consider they warrant an award of costs on a higher scale.
I therefore award costs in accordance with schedule 8 against Mr Noelker.
O L Haggar
Delegate of the Commissioner of Patents
Patent attorneys for the patent applicant: A Tatlock & Associates, Melbourne
Patent attorneys for the section 36 applicant: Freehills Patent Attorneys, Melbourne
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