George Stack v Davies Shephard Pty Ltd and GSA Industries (Aust) Pty Ltd
[1996] APO 1
•5 January 1996
official notice
decision of a deputy commissioner of patents
Application : Petty Patent No. 645740 in the name of GEORGE STACK
Title: Water Meter Assemblies
Action: Section 28 notices by DAVIES SHEPHARD PTY LTD, and GSA INDUSTRIES (AUST.) PTY LTD.
Decision: Issued .
Claim admitted two arrangements of features. One arrangement was fairly based, and if the claim was limited to it the claim would be entitled to an early priority date. The other arrangement was not fairly based. As the other arrangement was introduced in an amendment, the claims had a priority date determined by s.114. As a result the claims were anticipated by use involving the first arrangement of features between the early priority date and the late priority date.
The notice of entitlement merely stated that ‘The person nominated is entitled to the grant of the patent’. Onus lies with the patentee to substantiate their entitlement when there is proper cause to query it. The available material is consistent with a company (G S Technology Pty Ltd) being the eligible person (not the patentee). Circumstances are apparently inconsistent with a clerical error or obvious mistake, and thus an adverse finding might not be correctable. Patentee allowed an opportunity to request to serve further evidence, with the opponents having the opportunity to object. Finding on entitlement deferred pending consideration of possible further evidence.
Decision on whether to afford the patentee an opportunity to amend deferred until the decision on entitlement made.
patents act 1990
decision of a dePUTY commissioner of patents
Re:Petty Patent No. 645740 in the name of GEORGE STACK , and section 28 notices by DAVIES SHEPHARD PTY LTD, and GSA INDUSTRIES (AUST.) PTY LTD.
background
Petty Patent 645740 was filed on 25 August 1993, as application 44897/93. The application was filed as a divisional application based on patent application 85236/91 (PCT/AU91/00404) which was filed on 30 August 1991. In turn, that application claims priority from two provisional applications - PK2036 filed on 30 August 1990, and PK5286 filed on 26 March 1991.
(For the purpose of completeness, I note two other related applications. Petty patent 662284 was filed on 17 February 1994 as a divisional application based on 85236/91; the petty patent was sealed on 24 August 1995. Application 32815/95 was filed on 21 September 1995 as a divisional application for a standard patent, again based on patent application 85236/91. Finally, I note that 85236/91 lapsed on 24 Sept. 1995 through failing to be accepted within 21 months of the first examination report.)
The applicant filed amendments to the petty patent application on 10 and 18 November 1993. The petty patent was granted on 20 Jan 1994. On 20 Dec 1994 Davies Shephard Pty Ltd, and GSA Industries (Aust.) Pty Ltd, filed their s.28 notices with identical evidence. After the patentee had filed evidence in response the matter was heard in Canberra on Nov 23 and 24, 1995. The patentee was represented by Mr A Abaza (solicitor). Davies Shephard was represented by Mr B Caine of counsel instructed by Mr T Collins (patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne), whilst GSA was represented by Mr Collins.
The parties to this action are also currently before the Federal Court in an action for infringement and revocation of this petty patent. On 4 August 1995 Cooper J handed down his decision (reported in 32 IPR 69, (1995) AIPC ¶91-164) on a preliminary matter concerning whether the Brisbane City Council (BCC) was exempt from an action for infringement by reason of s.163 of the Patents Act. In accordance with O58 of the Federal Court Rules, the patentee served the Commissioner (on 4 Oct 1995) with copies of the (amended) application made to the Federal Court.
S.28. (1) provides that a person may, within the prescribed period after the grant of a petty patent, notify the Commissioner, in accordance with the regulations, that the person asserts, for reasons stated in the notice, that the petty patent is invalid on one or more of the following grounds:
(a) that the patentee was not entitled to be granted the petty patent;
(b) that the invention is not a patentable invention because it does not comply with paragraph 18 (1) (a) or (b);
(c) that the specification does not comply with subsection 40 (2) or (3).
The notices of both informants set out all grounds available under s.28. At the commencement of the hearing both informants confirmed that they relied upon all grounds.
Some weeks prior to the hearing, the patentee filed a request to record an assignment of the petty patent from Mr G Stack, to a company G S Technology Pty Ltd (of which Stack is apparently a director, and the chief executive officer). The assignment has been duly recorded in the Register. However (as will become apparent later) there are issues concerning whether the petty patent was granted to an entitled person. A finding that the petty patent was not granted to an entitled person must put in doubt the validity of any assignment of the petty patent by the patentee. Accordingly this decision is predicated on the name of the person to whom the petty patent was granted - viz Mr G Stack - who attended the hearing in person to instruct Mr Abaza in the presentation of the patentee’s case.
The Specification
The specification describes a water meter assembly having four basic components - a manifold, a stop valve on the inlet side, a non-return valve on the outlet side, and a measuring element.
A particularly relevant feature of the combination is the arrangement for the non-return valve. The specification describes the non-return valve as being housed in a tubular housing. The housing is held in sealing arrangement with the measuring element at one end. The other end is slidably located in the flow passage within the manifold, downstream of the measuring element.
One particular problem of water meters is the ability to easily service the meter when in location. This problem is said to be addressed by having the measuring element and non-return valve located in an upwardly opening port, such that when the measuring element is removed the valve can be removed. A second problem arises from differing dimensions of measuring elements from different manufacturers, which results in differing distances between the sealing surface on the outlet path of the measuring element and the manifold in which to locate the non-return valve. This problem is addressed by providing a range of valve assemblies having a shoulder in a different location (depending on which meter it will be used with), or a single valve assembly having several recesses in which to locate a circlip. In use, the shoulder or circlip bears on a ledge in the manifold; the measuring element bears against the other end of the valve housing; and the assembly, or the circlip location, is selected on the basis of the brand of water meter being used. This arrangement:
locates and holds the non-return valve in position; and
provides for a sealed flow path from the measuring element to the outlet of the manifold, through the non-return valves.
The Claims
The patentee exhibited in evidence a water meter assembly produced by him, and one produced by an alleged infringer. From a cursory inspection, both meters correspond closely to the arrangement described in both the provisional specifications, the parent specification, and in the petty patent specification. However the monopoly rights are defined by the claims - not the described embodiments - and accordingly I must properly construe the claims of the petty patent.
The instant petty patent has three claims, but for present purposes I need focus only on claim 1. Further, the circumstances of the present case are such that there are but two features in claim 1 that I need to focus attention on, both relating to the manner of retaining the non-return valve housing in location (especially at the end remote from the meter) - the relationship between the operative position of the housing and a stop means, and the use of the word only. Claim 1, with relevant portions highlighted, is as follows:
A water meter assembly of the type including a unitary manifold forming a flow passage having an inlet, an outlet and two upwardly opening access ports intermediate said inlet and outlet and comprising a stop valve access port adjacent said inlet and a threaded meter access port adjacent said outlet, a removable flow-through measuring element assembly threadedly engaged in said meter access port, a manually operable on/off stop valve assembly engaged in said stop valve access port for closing the flow passage upstream of the access port and a removable back-flow prevention assembly whereby water may flow through the water meter assembly only from the inlet through the measuring element assembly and thence through the back-flow prevention assembly to the outlet, characterised in that:-
said manually operable on/off valve assembly is a stop valve which cooperates with a valve seat formed in said manifold upstream of said threaded meter access port;
said removable back-flow prevention assembly includes a cylindrical sleeve-like housing having tandemly arranged non-return valve assemblies therein;
said sleeve-like housing is sealably and slidably supported in a cylindrical portion of the flow passage disposed substantially co-axially with said threaded access port and downstream thereof whereby water must flow through said sleeve-like housing to said outlet;
said sleeve-like housing has stop means limiting its movement into said cylindrical portion and an upper end which forms an annular land against which said measuring element assembly sealably engages so as to restrict water flow from said measuring element assembly to flow into said sleeve-like housing, and
said removable back-flow prevention assembly is retained in its operative position in said cylindrical portion of the flow passage only by said removable flow-through measuring element assembly whereby said removable back-flow prevention assembly may be removed from said manifold through said threaded meter access port after unscrewing said removable flow-through measuring element assembly from said threaded meter access port.
Of particular importance is how the claim defines the retention of the housing. Several features are apparent:
the housing is slidably supported in the downstream flow passage (which I take as excluding arrangements where, for example, the housing is screwed into the passage);
the housing has a stop means limiting its movement into the flow passage; and
the assembly (housing) is retained in its operative position in the flow passage only by the water meter.
There are two issues of note. Firstly, the claim specifies the existence of a stop means having a particular function (limiting movement of the housing into the cylinder), and refers to the assembly being retained in its operative position. However the claim does not specify any relationship between the stop means and the operative position. On the one hand, the operative position might correspond to the position in which the stop means is in engagement. On the other hand, the operative position might not require the stop means to be in engagement - given the functional definition of the stop means, it could conceivably constitute no more than a means to prevent the assembly ‘falling’ into the cylindrical portion to a position where it could not be readily retrieved. There is nothing in the claim to indicate that one or other of these possibilities is excluded.
The second issue is the significance of the word only. In the claim, only is used as an adverb qualifying ‘is retained’. As is readily apparent from the dictionary meanings of the word, it imposes exclusivity on the means of retention. By way of illustration of the effect of the exclusivity, I observe that it is one thing to say that the assembly is retained in place by the measuring element; such a requirement is non-exclusive, and permits the presence of other integers which might assist in providing the retention. But to say that the housing is retained in place only by the measuring element is to exclude any other integers from assisting in providing the retention.
However, the extent of exclusivity imposed by the word only depends upon what other integers are necessarily present in the arrangement - and in particular, whether the operative position is defined by the stop means being in engagement. As a result, the claim covers two possible arrangements:
In the operative position, the stop means is (by definition) in engagement. In this case, whatever role the stop means might provide in assisting retention is not excluded by the use of only. The use of only only limits any other means for retention to be solely the measuring element; and
In the operative position, the stop means need not be in engagement. The use of only limits the retention to being provided by the measuring element alone, without any cooperation of (inter alia) the stop means.
I should add that in my view the second interpretation is not excluded as a reasonable interpretation of the claim, either by proper reference to the body of the specification or by reliance upon purposive construction of the claims.
Fair Basis
The specification contains a consistory statement in the same terms as claim 1, and essentially two main embodiments of the invention. The first embodiment has a single non-return valve which is not contained in a separate housing. The retention occurs by the measuring element forming a closure to a passage within which the valve is located, without necessarily bearing on the valve. It is clearly not an embodiment of the invention claimed, and I disregard it.
The second embodiment is illustrated in Figs 2, 4 & 5, and has two non-return valves in an adjustable sleeve. This embodiment apparently relates to the invention claimed. The specification states (at page 9):
The embodiments (sic) illustrated in Fig. 2 has a common cylindrical mounting sleeve 60 which is slidably and sealably supported in the outlet passage 44, sealing engagement with the body being effected by O-ring 58. The upper end 61 of the sleeve abuts the end face of the outlet passage from the measuring element 17. The sleeve 60 is retained in its operative position by a circlip 62 engaged in a selected one of the circlip grooves 63 formed in the outer surface of the sleeve 60. This arrangement is provided so that the end face 61 may be height adjusted by engaging the circlip 62 in the appropriate groove 63 so as to position the end face 61 to suit different measuring elements. ...
which makes clear that in this embodiment, when the sleeve is in its operative position the stop means (ie the circlip) is in engagement. This is consistent with the specification as a whole, which generally describes a cooperative arrangement of the measuring element bearing on one end of the housing, and the stop means bearing on the manifold, with no other integers being provided for the retention. I think that to describe the retention as being only by the measuring element is an apt description of this arrangement - providing it is understood that the stop means is necessarily in engagement in the operative position. Accordingly I consider there to be a fair basis for my first interpretation of the claim.
On the other hand, there is no disclosure of the valve assembly being retained in its operative position by the measuring element only, absent any assistance from the stop means. Accordingly I consider there is no fair basis for my second interpretation of the claim.
Thus, of the two possible arrangements for retention of the valve assembly one has no fair basis in the specification. Accordingly claim 1 is not fairly based, and the ground under s.28(1)(c) is made out.
Priority Dates
The informants contend that, by reason of the word only, the claims are not entitled to a priority date earlier than the date the amendment was proposed (ie 10 November 1993), including from either provisional specification. As the claims embrace my second interpretation, I agree - there is no disclosure of this arrangement in the specification prior to this amendment, and their priority dates must be determined in accordance with s.114 to be 10 November 1993.
However, it is also appropriate that I consider the priority date of the claims should they be limited to my first interpretation - an interpretation that would be fairly based on the specification. In order for such a claim to obtain a priority date extending back to the provisional applications, it must not claim matter not in substance disclosed in the specification as filed (otherwise s.114 operates to accord the date of the amendments as the priority date); it must be fairly based on the specification of 85236/91 as filed [Reg 3.12(1)(c)]; and it must be fairly based on one or other provisional specification [Reg 3.12(1)(b)].
The first specification for me to consider is the petty patent specification as filed. The consistory statement is somewhat different to the present claim. It refers to:
“... characterised in that the removable back-flow prevention assembly includes a sleeve-like housing having a lower end which nests sealably in the manifold ...”.
and otherwise devotes much attention to the structure of the valves and valve seats. On page 3 the specification states:
“The back-flow prevention assembly may be retained by being mechanically interlocked with the manifold such as being screwed into the manifold or it may be retained in the manifold by the measuring element or the closure means for an access opening through which the measuring element and the back-flow prevention assembly may be removed, such as for servicing.”
and on page 4
“... The back-flow prevention assembly may be adjustably supported .... . This may be achieved by mounting the back-flow prevention assembly reciprocally within a suitable guide within the body and providing selectively adjustable stop means such as an adjustable nut or spaced circlip grooves ...”
The specification has essentially the same drawings and accompanying description. S.114 operates to accord a ‘late’ priority date if the claims claim matter which was in substance disclosed as a result of an amendment. This criterion is not the same as the test of fair basis under s.40(3). The specification before amendment would certainly appear to have had a different focus to that after amendment, and the specification as filed clearly disclosed ways of retaining the back-flow prevention assembly using more than the measuring element only. But it also quite clearly discloses an arrangement where retention is by the measuring element in conjunction with the stop means - as per my first interpretation of the claim - in the principal embodiment. Consequently I consider the specification as filed disclosed inter alia retention by means of the measuring element only (as in my first interpretation); and s.114 would not operate if the claims were limited to my first interpretation.
I turn now to the question of whether such claims would be entitled to the priority dates associated with the parent application 85236/91. Pursuant to Reg 3.12(1)(c), if the claim is fairly based on matter disclosed in this specification as filed, the priority date of the claim is the date that would have been the priority date if the claim had been included in that specification. That is, if it is so fairly based, it is entitled to at least the filing date of 85236/91; if additionally it is fairly based on the associated provisional applications, it is entitled to the filing date of the relevant provisional specification.
The consistory statement of 85236/91 is directed essentially to the structure of the manifold, including an access opening, and non-return valves. The specification states:
“The access opening may be closed by standard closure means but preferably the closure means is adapted to operatively retain the non-return valve assembly in the support means....”
and on page 3:
“... The non-return valve assembly may be retained by being mechanically interlocked with the support means such as by screwed (sic) into the support means or it may be retained by the measuring element or the closure means for the access opening such that the non-return valve assembly may be removed for servicing upon removal of the measuring element or the closure means.”
Thus it is quite clear that the retention of the valve assembly is envisaged as being by way of any suitable means. Thus, while the principle embodiment is the same as the present petty patent, the specification itself is significantly different in that while the petty patent has an exclusive method of retention, 85236/91 allows any form of retention, specifically including arrangements outside the scope of the first interpretation of the claim.
Nevertheless, the question is not whether the claim would comply with the fair basis requirements of s.40(3) if it were in this specification. Rather it is whether it is fairly based on matter disclosed in the specification. In this regard I note that the principal embodiment described in 85236/91 is the same as for the present petty patent. In my view this embodiment fairly describes an arrangement where the valve assembly is retained in position by the measuring element only (as per my first interpretation of the claim). The presence or absence of the word only in the verbal description of this embodiment is not particularly relevant. The question is whether there is a ‘real and reasonably clear’ disclosure of this requirement (CCOM Pty Ltd v Jiejing Pty Ltd, 28 IPR 481, (1994) AIPC ¶91-079). This must be answered in the context of the skilled addressee understanding the import of the words used in the description (as well as the import of the drawings), eschewing an overmeticulous verbal analysis. In my view the specification does provide a real and reasonably clear disclosure of an arrangement whereby the valve assembly is retained in position only by means of the measuring element (with a stop means bearing against the manifold housing when in the operative position). Accordingly I consider a claim limited to my first interpretation would be entitled to at least the date of filing 85236/91 as its priority date.
The two provisional specifications have essentially the same principal embodiment of the invention as for 85236/91 (and the present petty patent). The same reasoning applies when determining whether the claim, if present in 85236/91, is fairly based on matter disclosed in either of the provisional specifications. Accordingly I consider that if claim 1 was limited to my first interpretation, it would be entitled to the date of filing PK2036 as its priority date - viz 30 August 1990.
In respect of the remaining claims:
Claim 2 adds features defining the structure of the non-return valves which are present in all relevant specifications. Accordingly its priority date would similarly be 30 August 1990.
Claim 3 adds a further qualification of the shape of the non-return valve assembly which first appears in 85236/91. Accordingly its priority date would be 30 August 1991.
Novelty
The test for novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228. The informants have provided evidence of use of water meters which correspond to my first interpretation of the claim. That evidence unequivocally establishes use before 10 November 1993, the date which I have found to be the priority date of the claims. Accordingly I am satisfied that all three claims lack novelty based on this prior use - irrespective of the relevance of the paper anticipations otherwise cited by the informants.
Again, as for the consideration of priority dates, it is appropriate that I consider the situation if the claims are limited to my first interpretation - in which case the relevant priority date would be 30 Aug 1990 (except for claim 3). Some citations (including the alleged anticipations by sale) occurred after the priority date, and are therefore non-anticipatory. Otherwise, relevant citations are:
GB2210465. This differs from the invention claimed by having a single non-return valve, which is retained in place by a threaded collar separate from the measuring element. It therefore does not disclose all the features of the combination claimed, and does not deprive the claims of novelty.
Australian specification 633441, which was published on 2 January 1992 (after the present priority date.) It was applied for on 27 June 1991 (again after the priority dates of claims 1 and 2), but claimed priority from PK0921 filed on 29 June 1990, and is thus part of the prior art base under the ‘whole of contents’ provisions. However, while the complete specification clearly discloses a dual non-return valve, the provisional specification only discloses a single non-return valve - and therefore the notional priority date for the relevant disclosures of 633441 is no earlier than 27 June 1991. Accordingly this citation does not deprive claims 1 and 2 of novelty. With respect to claim 3, there is no disclosure in the complete specification of the citation of the feature claimed - thus the citation does not deprive claim 3 of novelty.
AU29701/89, published on 10 August 1989. This discloses a water meter with a non-return valve. The valve is shown as a single ball valve (with the ball being lighter than water so that it floats) and a valve seat. The valve seat is held in place by a central member of a threaded boss, with the measuring element being screwed into the boss. As a result, the non-return valve assembly is not retained by the measuring element only, and the citation does not deprive the claims of novelty.
EP61908. This discloses a water meter with a non-return valve. The valve is retained by a member which is held in place with a number of screws. A measuring element is explicitly an optional feature of the device. The non-return valve assembly is not retained by the measuring element only, and the citation does not deprive the claims of novelty.
Tender Documents from the Brisbane City Council. On 8 August 1990 the Brisbane City council advertised an offer for tender. The tender documents state:
“In the case of manifold type meters Tenderers are required to indicate if suitable adaptors are available to accommodate meters with differing base connections. The manifolds shall be so designed that they can accommodate different types and makes of meters.”
“A dual check valve in accordance with AS2845 is preferred ...”
“Tenderers are required to submit full details of the type and placement of the back-flow Prevention Device including the following -
(f) facility to maintain, clear or replace the device.”
Drawing WM8 of the tender documents shows a water meter with two non-return valves. The valves are not in a common housing. The depicted dimensions of the measuring element and its supporting ‘meter transition piece’ are such that the measuring element could not engage the non-return valves. The drawing shows no means of retaining the non-return valves in position, other than an abutment at the bottom end, and the tender clearly envisages the particular arrangement for retention will be specified by the tenderer.
Accordingly, the tender documents do not disclose an arrangement whereby the non-return valve assembly is retained by the measuring element only, and therefore do not deprive the claims of novelty.
In summary the claims of the petty patent lack novelty, but would be novel if limited to my first interpretation.
Inventive Step
Considering solely the situation if the claims are limited to my first interpretation, I note that the citations relied on with regard to want of novelty generally retain a non-return valve in place with a means separate from the measuring element. That is, the prior art teaches away from the arrangement claimed, whereby in the particular type of water meter construction the non-return valve is retained by the measuring element only. The informants have also provided evidence of other water meter constructions in which a non-return valve was retained by the measuring element alone (such as the ‘Neptune’ meter), other constructions involving non-return valves (such as the ‘Febco’ devices), and general information about non-return valves. In my view this other evidence does not dispel the teaching away from the solution provided by the present invention. Accordingly I find that claims limited to my first interpretation would not lack an inventive step.
Manner of Manufacture
The informants argued that the invention claimed is not a manner of manufacture. I am satisfied that this ground is not made out. The invention clearly belongs to the useful arts as distinct to the fine arts [National Research Development Corp v Commissioner of Patents 102 CLR 252], and it is not apparent on the face of the specification that the subject matter of the claim is, by reason of the absence of the necessary quality of inventiveness, not a manner of new manufacture for the purpose of the Statute of Monopolies [Philips v Mirabella 32 IPR 449, (1995) AIPC ¶91-196].
Entitlement
A patent may only be granted to an eligible person (section 15). When granting a patent, the Commissioner normally does not require proof of entitlement; rather the patent is granted on the basis of the prima facie claim to entitlement that the applicant provides in the ‘notice of entitlement’ required by regulation 3.1(2). In my view, where there is proper cause to query the entitlement of the patentee it is incumbent upon them to provide substantiation of their asserted entitlement to the grant of a patent. Inability to substantiate entitlement must prima facie leave it open to find that the patentee was not entitled to be granted the patent.
In the present case the informants assert that the petty patent was not granted to an entitled person.
Evidence in support of entitlement
The petty patent was applied for (as a divisional application) by George Stack, specifying himself as the nominated person. In support of Stack’s entitlement, the notice of entitlement (dated, and filed, on 10 Nov 1993) merely states:
‘George Stack and Alan Grieves are the actual inventors.
The person nominated is entitled to the grant of the patent.’
(The parent application similarly identifies both Stack and Grieves as inventors, and Stack alone as the entitled person.)
The evidence before me relevant to establishing entitlement is as follows:
An extract from the company minutes of G S Technology Pty Ltd, stating:
On 7.09.90 G S Technology Pty Ltd resolved:
Mr Stack agreed that all designs and applications for copyright in respect of products associated with the water meter contract and any other designs or copyright applied for by G S Technology or himself, shall now become the sole property of G S Technology Pty Ltd. It was always intended to form a company to be the registered owner.
(I note that Stack is a director and the chief executive officer of the company. The inference to be drawn by the manner of reliance by Stack on this resolution is that it reflects a real decision of Stack.)
A deed of assignment dated 16 Mar 1993 (after the petty patent had been granted) from G Stack to G S Technology Pty Ltd.. (I note here that the assignment, being made by the registered patentee, has been duly recorded in the Register.)
At the hearing Mr Abaza advised, on the instructions of Mr Stack, that:
Þ entitlement from Grieves arose from an employer/employee relationship (In addition, written submissions were provided by Stack. These referred to Edisona Ld v Forse (1908) 25 RPC 546, British Reinforced Concrete Ld v Lind (1917) 34 RPC 101, Adamson v Kenworthy (1931) 49 RPC 57, and Triplex Safety Glass Co v Scorah (1938) 55 RPC 21, all of which relate to employer/employee relationships); and
Þ apart from the material quoted above, there are no other documents presently in existence to support Mr Stack's entitlement - including no relevant contracts of employment vis-a-vis Grieves.
Consideration of the evidence
The facts of the present case are such that I think there is a serious question concerning whether the petty patent was granted to an eligible person. From the available material I deduce:
There is no evidence of any assignment directly from Grieves to Stack.
It would appear probable that entitlement deriving from Grieves flowed to his employer G S Technology Pty Ltd, by reason of employer/employee relationship - although apparently there is no contract of employment.
There is no evidence of any assignment of Grieves’ interest in the invention from G S Technology Pty Ltd to Stack.
At the hearing Mr Stack indicated that Grieves was, like himself, a director of G S Technology Pty Ltd. If entitlement was transferred from Grieves to G S Technology Pty Ltd as a result of an employer/employee relationship, I would think it likely (absent specific agreements) that the entitlement of Stack would similarly have been transferred to G S Technology Pty Ltd.
The minutes of G S Technology Pty Ltd are apparently relied upon before the Federal Court as a basis for that company being the beneficial owner of certain industrial property, from which the present petty patent derives. Accepting that the documented minutes are to that effect (they nowhere refer to patents, but a liberal interpretation of 'designs' as used in those minutes would cover this interpretation), it would appear that in September 1990 Stack acknowledged that G S Technology Pty Ltd was entitled to relevant patents. That is, after Sept 1990 the entitlement in respect of Stack’s inventive contribution prima facie lay with G S Technology Pty Ltd.
An additional issue arises in respect of the embodiment of fig 7 which is claimed in claim 3. The relevant feature is the provision of a relatively flat region on the exposed portion of the return valves. A Mr Robert Cornish asserts that he invented this feature while employed by Reliance Manufacturing Company (RMC). Apparently RMC was involved in a redesign of the water meter that G S Technology Pty Ltd was offering to the Brisbane City Council. His evidence, together with the evidence from Osborne and (especially) Flynn, establishes that Cornish developed this feature, and communicated it to Grieves in March 1991. This date is consistent with the details of this valve arrangement first appearing in 85236/91, and not in either provisional specification. This evidence has not been substantially controverted. The notice of entitlement does not list Cornish as an inventor, and there is correspondingly no established basis for entitlement flowing from Cornish.
None of the material before me is supportive of Stack (alone) being an entitled person. At most Stack might have had partial entitlement as a joint inventor, but it seems more likely that the entitlement of Stack was assigned to G S Technology Pty Ltd. In either event, there is nothing to suggest that entitlement arising from Grieves inventorship was assigned to Stack - nor the entitlement arising from Cornish’s inventorship. Indeed, the available evidence as a whole is fully consistent with the eligible person being G S Technology Pty Ltd for claims 1 and 2, and the eligible person for claim 3 additionally involving an entitlement deriving from Cornish (which does not flow to Stack, and likely does not flow to G S Technology Pty Ltd.)
The present situation is somewhat unusual, with the closest relevant precedent that I am aware of being ex parte Martin (1953) 89 CLR 381. Arguments about whether a patentee is an eligible person are usually mounted by a person who alleges that the invention was obtained from them. Yet for the major part of the present invention there is no person making those allegations. G S Technology Pty Ltd has not filed a s.28 notice (which is not surprising given the apparent close relationship of this company to George Stack), and there is no evidence whatsoever from Grieves. But irrespective of this, the difficulty exists and the onus remains with the patentee to reasonably establish his entitlement to the grant of the patent.
Further evidence
At the hearing:
Mr Abaza indicated that he would like to produce further evidence in support of Mr Stack's entitlement. The substance of the further evidence was not specifically identified (although there were suggestions that perhaps G S Technology Pty Ltd had impliedly consented to Stack making the application, as well as a suggestion of amending the patentee to G S Technology Pty Ltd on the basis of correcting a clerical error or obvious mistake.) Also, as noted above, Stack conceded that there are no other documents presently in existence to support his entitlement.
The informants argued that further evidence should not be permitted on the basis that the issue of entitlement was clearly present in the evidence and submissions of all parties.
I did not resolve the issue of further evidence. Rather I reached agreement with the parties that I would issue my decision in all other matters. If I considered that the request for further evidence ought to be considered, both parties would be given an opportunity to be heard.
I agree with the informants that the issue of entitlement was clearly present in the evidence and submissions of all parties - and this does not favour the admission of further evidence. Of even greater significance is the absence of any suggestion by Stack that there is a specific piece of relevant evidence that the patentee has failed to submit. Indeed the request for further evidence seems to be based on a realisation at the hearing that there is a real problem with entitlement, and that the patentee ought to try to come up with some (unspecified) evidence to overcome the problem. Given the specific concession that there are no other documents presently in existence to support Stack’s entitlement, it would seem that any further evidence is likely to be unsupported by documentation contemporary with the events discussed above, and potentially be of limited probative value. All these issues weigh strongly against allowing further evidence.
The consequences of an adverse finding is likely to be quite severe. Any request to amend the patent must be made under reg 10.7, which is limited to correcting a clerical error or obvious mistake. However the circumstances as presently put before me do not obviously involve a clerical error or obvious mistake (cf ex parte Martin, supra), and there must therefore be considerable doubt whether the patent can be amended to correct an adverse finding. Furthermore, as neither G S Technologies Pty Ltd, nor Cornish, filed a notice under s.28, there is apparently no relevant person who could benefit from the operation of s.33(2). That is, there is a real possibility that an adverse finding is incapable of being rectified in any manner or form.
Given the seriousness consequences of a finding adverse to Mr Stack, it seems to me that if there is indeed some credible evidence to substantiate Mr Stack’s entitlement to the patent, it would be denial of justice if I were to preclude him from presenting that evidence. I am also conscious that any appeal against this decision will be heard de novo - and if such evidence exists, it could be presented on appeal. Accordingly, and subject to relevant objections from the informants as well as close scrutiny of any evidence that might be presented, I consider that I should afford Mr Stack one last opportunity to further substantiate his entitlement.
Effect of the assignment
As noted earlier in this decision, in 1993 Mr Stack executed a purported assignment of the petty patent from himself to G S Technologies Pty Ltd. It might be thought that this overcomes the entitlement problems discussed above. However, I am unaware of any basis in law for a person to validly assign property which they do not lawfully own. If Stack never had entitlement to the petty patent, then (as currently advised) he had nothing to assign. If that is the case, the 1993 assignment from Stack to G S Technology is wholly ineffective, and the entitlement problems discussed remain.
Conclusion
There is a serious question with regard to Mr Stack’s entitlement to the patent. I consider that I should afford Mr Stack an opportunity to further substantiate his entitlement. In general accordance with an agreement made at the hearing, I give the following directions:
Mr Stack has 3 weeks from the date of this decision to file and serve a request for further evidence in support of his entitlement to the patent. The request is to be accompanied by that further evidence.
The informants will then have one week:
Þ to request to be heard on whether I should admit that further evidence;
Þ to indicate whether (if that evidence is admitted) they would wish to file and serve any evidence in response; and
Þ to advise whether they would wish to be heard on the substantive issues arising from the evidence if it is admitted.
I foreshadow that if it is necessary to hear the parties, it would be my desire to hear the parties on both the admissibility, and substantive effect, of the evidence at the same hearing - unless one or other of the parties provides me with very good reason why that should not be the case.
If the patentee does not make a request for further evidence within the time that I have allowed, I will proceed to make my decision on whether the patentee was entitled to be granted the petty patent on the basis of the material presently before me.
With regard to the other grounds of objection, I have found that claim 1 has two possible interpretations, one of which is not fairly based. The interpretation that is not fairly based arose from an amendment - and as a consequence the priority date of the claim is the date that amendment was proposed, and the claim is anticipated by various uses that occurred before that late priority date. In my view these deficiencies with claim 1 can be overcome by amendment. However I reserve my decision on whether to afford an opportunity to amend until I make my decision on whether the petty patent was granted to an eligible person.
Finally, and for the avoidance of any doubt, I observe that in the event that either party appeals this decision, the above directions regarding further evidence and my deciding the question of Mr Stack’s entitlement continue to apply unless the court orders either a stay of this decision or a relevant injunction.
Costs
In matters before the Commissioner, costs usually follow the event. I see no reason in the present case to depart from the usual situation. Accordingly I award costs up to the date of this decision against the patentee, Mr G Stack.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the informants : Phillips Ormonde & Fitzpatrick, Melbourne
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