Gary John Brown v Colin Noelker - [1998] APO 67

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…

Grounds of appeal

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

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

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

Consideration

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

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

Continue reading Gary John Brown v Colin Noelker

Details

AGLC: Gary John Brown v Colin Noelker [1998] APO 67
Case: [1998] APO 67
Decision Date: 30 November 1998

CaseChat Overview and Summary

The matter before the delegate was an application by Colin Noelker under section 36(1) of the Patents Act 1990 for a declaration that he was an eligible person in relation to the invention disclosed in two patent applications filed by Garry John Brown. The applications related to a rotary trash harrow, which was an agricultural implement designed to cultivate the soil and remove debris. Noelker claimed that he, and possibly Frank Frawley, a licensed manufacturer of the harrow, were eligible persons in relation to the invention. The delegate found that although the centre roller, which was one of the modifications to the harrow, was not inventive, it was properly regarded as an "invention disclosed" for the purpose of section 36(1). However, there was insufficient evidence to show that Noelker and/or Frawley made a material contribution to the centre roller. The delegate also found that the evidence for Noelker included material which was not relevant to the present action, but this did not justify an award of costs to Brown on some higher scale. The delegate therefore dismissed Noelker's application and awarded costs to Brown in accordance with schedule 8.

Orders