Impact Post Anchors Pty Ltd v Cedarbourne Pty Ltd

[1998] APO 71

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          Nos. 52067/98 and 56307/98 in the name of IMPACT POST ANCHORS PTY LTD

Title:          An Anchoring Apparatus

Action:          Application under Section 36(1) by CEDARBOURNE PTY LTD for a declaration regarding entitlement to the invention

Decision:          Issued            .

Abstract

The invention disclosed by the patent applications relates to apparatus for anchoring a sign post or the like in the ground, and this apparatus is exemplified by reference to two illustrated embodiments.

The first of these is referred to in evidence as the Flanagan design.  The section 36 applicant (Cedarbourne) claims sole entitlement to the second embodiment on the basis that it arose from improvements made to the Flanagan design without the involvement of Impact.  Specifically, these improvements were directed to correcting a number of defects identified in the Flanagan design.

Impact advised that they did not wish to be heard, and failed to provide any material in response to the applications made under section 36(1).  Cedarbourne filed brief evidence in support of the applications, much of which was uncorroborated.  Despite these shortcomings, it was found on the balance of probabilities that Cedarbourne was an eligible person in respect of only one of the improvements in question, and thus shared joint entitlement with Impact to the second embodiment.

The parties were directed to advise whether the applications are to proceed to grant jointly in the names of both parties (with corresponding amendments to the patent requests and notices of entitlement).  If not so advised, Cedarbourne directed to propose wording for a declaration under section 36(1) consistent with this decision.

Partial costs awarded against the patent applicant.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application Nos. 52067/98 and 56307/98 in the name of IMPACT POST ANCHORS PTY LTD and an application under section 36(1) by CEDARBOURNE PTY LTD for a declaration stating that they are an eligible person as defined in Section 15.

background

The patent applications

Patent application 52067/98 was filed on 14 January 1998 as an application for a standard patent by Impact Post Anchors Pty Ltd (Impact).  The patent request indicates that this application is associated with provisional applications PO4608 and PO8147 which were respectively filed on 14 January and 21 July 1997.  The names of the actual inventors according to the request are John Leslie Flanagan and Everlyne Del Aguila.  Patent application 56307/98 was filed on 24 February 1998 as an application for a petty patent and derives divisional status under section 39 from application 52067/98.  Both patent applications have been advertised as open to public inspection.

Applications under section 36(1)

On 13 March 1998 Cedarbourne Pty Ltd (Cedarbourne) filed applications under section 36(1) for a declaration stating that they are an eligible person as defined in section 15 in respect of both patent applications. The grounds relied on by Cedarbourne are as follows:

"Allan Barry McConnell is [sic: the] actual inventor of the invention described in the said applications. Cedarbourne Pty Ltd by reason of Section 15 of the Patents Act 1990 is entitled to grant of a patent in respect of the invention of the said Allan Barry McConnell."

The section 36 applications were accompanied by supporting material in the form of a statutory declaration by the alleged actual inventor, Allan Barry McConnell, with exhibits MC-1 to MC-3, and written submissions by Mr Trevor Dredge, patent attorney of Intellpro.  Impact did not file any responding evidence.

The hearing

The matter was set down for hearing in Canberra on 24 November 1998.  In a letter dated 26 October 1998 Mr Flanagan requested on behalf of Impact that the hearing be deferred until early 1999 to enable certain negotiations to be concluded.  Cedarbourne objected to the request on the basis that any deferral would be prejudicial to their commercial interests.  The parties were subsequently advised that in the circumstances the hearing would proceed as originally scheduled.

On 5 November 1998 Mr Dredge advised that he would not be attending the hearing and would instead rely on further written submissions.  These were filed on 23 November 1998.  Mr Flanagan  was contacted on the day of the hearing and confirmed that Impact would not be represented at the hearing, nor did they intend to file written submissions.  Having said that, Mr Flanagan in any event forwarded written submissions on 11 December 1998 which do not in substance address issues pertinent to the present action and, consequently, are of no assistance to Impact.

section 36(1)

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."

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.

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).

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 Cedarbourne to provide clear evidence to justify a finding that on the balance of probabilities Mr McConnell made a material contribution to the invention in dispute.

THE DISCLOSURE OF THE PATENT APPLICATIONS

The subject matter disclosed is common to both applications, and relates to anchoring apparatus which finds particular application in the retention of sign posts, fence posts and the like in the ground.

Various anchoring apparatus have been developed in an attempt to overcome the difficulty of maintaining sign posts in an firm upstanding attitude when mounted in unstable soils.  Such apparatus all include means for attaching a post or the like directly to a dependent ground engaging portion which consists of a number of substantially triangularly shaped plate like members or fins arranged to define a ground piercing free end.  However, it has been found that a substantial portion of the surface area of each of the fins is in use generally surrounded by broken or loose soil.  Consequently, the sign posts are not firmly retained in the soil and may be easily dislodged.

The present invention seeks to alleviate this difficulty, and with this in mind broadly resides in anchoring apparatus for maintaining a post in a secure position relative to the ground which includes:

- attachment means including a socket adapted to receive a lower portion of the post, the post
  being retained within said socket by at least one fastener, and

- a ground engaging portion dependent from said attachment means, said ground engaging portion
  having a pointed end and including a plurality of fins.

The fins may each include a pointed end portion, which is substantially triangular in shape, and a substantially rectangular trailing portion.  The fins may also be constructed from one or more plate like members arranged such that they extend outwardly from a substantially common axis and are equi-angularly spaced from one another.  Thus the anchoring apparatus may include two, three or four fins.

Other preferred embodiments are then described.  In one of them, the post member is retained within the socket by one or more fasteners such as a bolt or rivet which extends through aligned apertures in the walls of the post member and socket respectively to resist or prevent their separation.  Alternatively, one or more wedges driven between the wall of the socket and the wall of the post member may be used to frictionally retain the post member within the socket.

Following this is a detailed discussion of the broad inventive concept in relation to the nine figures of appended drawings.  These show attachment means in the form of a socket having a pair of internally formed grooves adapted to receive a wedge and configured such that the wedge, when located therein, will bite into the side wall of the post member.  This arrangement also includes a slot in the trailing portion of each fin which acts as a seat for the socket.

decision

The main thrust of Mr Dredge's submissions is that the only patentable subject matter disclosed by applications 52067/98 and 56307/98 was conceived by Mr McConnell.  In taking this argument further, Mr Dredge asserts that the embodiment described with reference to Figures 1 and 2 (the Flanagan design) simply comprises a number of fins configured as a star picket with a tubular collar to enable a tubular post to be secured in place by a wedge.  Mr Dredge further asserts that there is nothing inventive in this design since it is made up of a number of features which themselves are commonly known. 

As succinctly put by Mr Dredge, the position of Cranbourne in this matter is that Figures 4 to 7 embody the solutions allegedly devised by Mr McConnell to overcome certain defects exhibited by the Flanagan design shown in Figures 1 and 2.  Mr Dredge submits that the only invention presently disclosed is in respect of the former embodiment and consequently seeks a declaration under section 36(1) that the patent applications proceed solely in the name of Cedarbourne.  In the alternative, a declaration is sought in relation to all aspects of that embodiment.

Regarding the declaration sought in the first instance by Cedarbourne, Mr McConnell has made no serious attempt to substantiate the assertions made by Mr Dredge concerning the inventiveness of the Flanagan design.  However, this issue is irrelevant to a determination of the present action: see Aneeta Window Systems (Vic) Pty Ltd v K ShuggIndustries Pty Ltd 34 IPR 95. A similar approach was followed in Re:Applications by CSIRO 31 IPR 67 at 72 where it was said :

"… it is well established that inventiveness is assessed by reference to whether an invention was obvious to the hypothetical non-inventive skilled addressee; the ease or difficulty to the inventor of making the invention is irrelevant.  It follows, in my view, that rights in an invention do not flow from an assessment of the inventiveness of respective contributions …"

Another related matter is that the inventiveness of the Flanagan design disclosed in the patent applications has not been tested in proceedings dedicated to that purpose, and indeed neither application has even reached the stage of being examined.

In light of the above, I do not intend to have further regard to Cedarbourne's request that they be declared the sole eligible person in relation to the patent applications.  I now turn to the declaration alternatively sought under section 36(1).

Mr McConnell declares that he is the General Manager of Cedarbourne (which trades as McConnell Industries) and has been associated with that business since 1973.  He says Mr Flanagan was referred to him on or about 8 March 1997 with a view to fabricating a post anchor according to the Flanagan design.  This design is said to be illustrated in the brochure marked as Exhibit MC-1 which promotes the use of what it calls the "Supastar" post anchor.  

The second page of the brochure describes how the Supastar device may be driven into the ground by means of an impact hammer which is attached to the anchor socket via an adaptor.  Mr McConnell explains that:

"The space for the adaptor was created by removing a section from the top of each of the three blades [viz. fins] to form a recess and then welding a section of tube in place.  The drawing … in the installation instructions does not show the tube in place.  The effect of this removal of sections of the upper portion of each of the blades, in my view, weakens the construction since the full width of the blades is not available to take any tilting force that might apply to the neck of the anchor.  I will call this the neck defect."

and refers to additional defects in the Flanagan design as follows:

"I observed or was advised by John Flanagan that in some soil types the three blade design possessed deficiencies in so far as loads applied in particular directions to the three blade design could result in movement of the anchor.  I will call this the three blade defect.

In relation to item 4 of the installation instructions there is shown a "drive locking key" which constitutes a wedge device which is driven in place to hold a post in the tubular section of the ground anchor … I observed or it was reported to me by John Flanagan that this wedge arrangement had deficiencies since it was either difficult for the wedges to be driven into place or the wedges tended to jump out when they were being driven.  I will call this the wedge defect."

Mr McConnell submits that he overcame each of the defects in question and describes the nature of the solutions allegedly devised by him in the following terms:

"In respect of the neck defect, I devised a solution whereby the tube at the top of the post anchor is slotted to take the blades so the full width of each blade is retained and welded in place.  This means that the neck is strengthened compared to the Flanagan design.  In respect of the three blade defect, I changed the design to a four blade design with the blades at right angles.  In respect of the wedge defect, I devised a design where the tube is formed with inclined tracks on opposite sides of the tube, that is inclined to the vertical, this inclined track receives respective wedges driven in and thereby set at an inclination to the vertical."

I note at the outset that although Mr McConnell's version of events rests on the proposition that the Flanagan design and the Supastar post anchor are one and the same, there is nothing before me which links the Supastar device to Mr Flanagan, or even to Impact.  Nevertheless, I see no reason having compared Figures 1 and 2 with Exhibit MC-1 to reject Mr McConnell's proposition. 

However, this is not the case with the solution to the neck problem which according to Mr McConnell involved the use of slots in the tube at the top of the anchor to retain the full width of each fin.  Mr Dredge states that these slots are shown as item 39 in Figure 5.  I do not agree.  Slots 39 are located in the upper portion of each fin to provide a seating arrangement for the "tube" (viz. socket 40 - see Figure 4) at the top of the anchor, and there is no suggestion that the slots may instead be located in the tube.

I therefore find that Mr McConnell's alleged solution to the neck defect does not constitute an invention disclosed in the patent applications and, consequently, I do not intend to further consider the question of entitlement in respect of that solution.  I find similarly with regard to the alleged solution to the three blade defect; Mr McConnell's statement that he "changed the design to a four blade design with the blades at right angles" falls well short of establishing that this solution is equivalent to the four blade design shown in Figures 4 to 7 which comprises two pairs of fins each constructed from an angled sheet of material.

Even if I were wrong in this, I note that the use of four blades per se was foreshadowed by associated provisional application PO4608 and, as this disclosure occurred before the commencement of business dealings between Impact and Cedarbourne, it is difficult to see how the provision of four blades in the Flanagan design could have arisen from Mr McConnell as alleged.

This brings me to the wedge defect of which Mr McConnell says he became aware after he had been engaged to fabricate a post anchor in accordance with the Flanagan design.  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 it was said:

"… it seems to be the case that a second person, engaged because of that person's expertise to construct a device … based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device, and this holds true even if the second person suggests ways to aid its design or operation.  However if the second person's suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device.  In this context I think the result or advantage would need to be a material one so that the resulting device is overall an improved one not merely a preferred workable embodiment of the original concept."

Although there is no direct evidence on the point, in my view the solution to the wedge defect  leads to something more than a preferred workable embodiment of the Flanagan design.  Given the nature of that defect, the use of a pair of wedges which locate within respective inclined channels to facilitate the retention of a post by the attachment means can I believe be viewed as importing material advantages not found in the original device.

The remaining question, then, with Mr McConnell's evidence is whether it is sufficient to show that the solution to the wedge defect was devised by him as alleged.  A number of difficulties arise here.  On the one hand, Mr McConnell's evidence is not, as would be expected in proceedings such as  these, accompanied by contemporaneously dated documentary evidence or other directly supporting material.  On the other hand, and in the absence of any evidence in response or written submissions of substance from Impact, there is nothing before me to counter any submissions or assertions made on behalf of Cedarbourne.

Mr Dredge submitted that as it stood unchallenged, the evidence put forward by Mr McConnell must be accepted at face value.  This seems to be a reiteration of a more general rule of evidence as expounded for example in Cross on Evidence 1970 Australian edition at 202:

"The general rule of the law of evidence is that the court may act upon the uncorroborated testimony of one witness, and such requirements as there are concerning a plurality of witnesses, or some other confirmation of individual testimony are exceptional."

I have already mentioned 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.  I therefore do not consider that the general rule of evidence set out above opens the way for Cedarbourne to relieve the burden of proof they carry simply by arguing that unsubstantiated evidence has not been challenged by Impact.

I find support for this view in Glenwood Systems Pty Ltd v Gooden (1993) AIPC 90-985 where it was decided that the uncorroborated evidence of a single declarant was sufficient proof provided that :

1. the evidence was prima facie credible;

2. there was no contradictory evidence; and

3. the declarant was an independent witness

Although it is true that this decision relates to the opposition ground of prior use, it is nevertheless of particular assistance in the present circumstances where the standard of proof required is the same.

The second point above clearly falls in favour of Cedarbourne, but it is equally apparent with regard to the third point that Mr McConnell is not an independent witness.  In relation to the first point, Mr McConnell's account of how he was alerted to the difficulties experienced with the use of a single wedge in the Flanagan design seems plausible given his relationship with Mr Flanagan at the time.  I also accept that as a result of his technical background Mr McConnell had the expertise necessary to develop a solution to the wedge defect.  Although somewhat persuasive, these factors are of course not of themselves decisive of the extent to which Mr McConnell's evidence can be seen as credible.  This to my mind turns on his statement that he considered the solution to the wedge defect to be the most important of the various improvements made to the Flanagan design and, as a consequence, filed provisional application PO6184 "before disclosing this feature to John Flanagan".

The invention disclosed by this provisional application generally relates to a tube locking system wherein a pair of wedges are driven into respective inclined channels to perform the locking function.  The invention may be used where posts or poles are located in separately positioned bases or cradles, and thus clearly embraces the solution to the wedge defect which Mr McConnell asserts was his idea.

The concept of inclined channels was first disclosed by Impact in provisional application PO8147 filed on 21 July 1997.  However, this date is some 3 months later than the date of filing of provisional application PO6184 which in my opinion adds credibility to Mr McConnell's contention that the solution to the wedge defect came from him and not Mr Flanagan.

Further support for this may be gained from Exhibit MC-2 which comprises a copy of a letter dated 2 November 1997 from Mr Flanagan to Mr McConnell concerning the commercial relationship between the parties.  More particulartly, Mr Flanagan expresses concern that this relationship had been "complicated further still by your patenting of the taperlock wedging system" which I take to be a reference to the locking system disclosed by provisional application PO6184.  Mr Flanagan also says that it is "most difficult to understand your reasoning that any improvements  … should not accrue to our product".  Significantly, though, Mr Flanagan does not
claim inventor status or otherwise contest Cedarbourne's entitlement in respect of this system.

The difficulties which arise from the limited amount of material put before me have been discussed earlier.  Clearly, there can be no absolute determination of the present action in these circumstances.  However, the standard of proof is the civil standard of proof on the balance of probabilities and, on this basis, I accept the evidence of Mr McConnell that he alone solved the wedge defect. 
Conclusion

I have found that on the balance of probabilities Mr McConnell invented the solution to the wedge defect as alleged, with the consequence that he may be regarded as an eligible person by virtue of section 15. However, section 15 also specifies other persons who may be granted a patent, including a person who derives title to an invention from the inventor. In the present case it is clear that such beneficial rights lie with Cedarbourne.

I therefore find it appropriate to make a declaration under section 36(1).  The declaration alternatively sought by Cedarbourne is said by Mr Dredge to be in relation to all aspects of the McConnell design and in relation to any claims directed to that design.  However, I am not convinced that the position is as clear cut as Mr Dredge seems to have assumed, for the following reasons.

Cedarbourne's principle submission is that the embodiment described with reference to Figures 4 to 7 is the anchoring apparatus as devised by Mr McConnell.  However, I have found that his contribution so far as that embodiment is concerned is restricted to the features which comprise his solution to the wedge defect.  In other words, Cedarbourne is not the sole eligible person in relation to this embodiment, but rather has joint entitlement to it together with Impact.  Furthermore, the features in question have by themselves already been made the subject of provisional application PO6184.

These features are also the subject of claims 4 and 6 of application 52067/98, but this is not necessarily the case with claim 5, which reads:

"An anchoring apparatus as claimed in Claim 4, wherein said channel has a substantially "V" shaped transverse cross-section and said wedge has a substantially rectangular transverse cross-section, said wedge having a longitudinal side edge which in use bears against a side wall of the post."

None of these features are specifically disclosed by provisional application PO6184, nor is there any evidence before me to demonstrate that they formed part of the solution devised by Mr McConnell to the wedge defect (although I observe without stating any conclusions in the matter that this much could perhaps be inferred given his inventor status with respect to the inclined channel concept).  This also applies to the latter portion of claim 2 of application 56307/98 where the same features are defined.

Having regard to the foregoing, I direct that (subject to any appeal against my findings above):

• Within 60 days of the date of this decision, Cedarbourne is to file, and serve on Impact, proposed wording for a declaration under section 36(1), consistent with this decision;

• Within 30 days of Impact being served the proposed wording of the declaration, Impact are to file and serve submissions (if any) on that proposed wording; and

• Within 30 days of Impact being served the proposed wording of the declaration, the parties are to file and serve any other submissions in the matter, or indicate whether they wish to be further heard.

The parties may of course wish to settle their dispute without the need for a declaration under section 36(1) by agreeing to amend the request forms and notices of entitlement of the patent applications to record multiple inventorship and entitlement.  In this event, I shall require written agreement from both parties within 60 days of the date of this decision.

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.  In the present case I have found in favour of Cedarbourne's claim regarding the wedge defect, but their claims in relation to the neck and three blade defects have proven unsuccessful.

Having regard to all the circumstances I do not believe Cedarbourne is entitled to full costs and I therefore award 50% of their costs against Impact.

O L Haggar
Delegate of the Commissioner of Patents

Patent attorneys for the section 36 applicant:  Intellpro, Brisbane