Impact Post Anchors Pty Ltd v Vincent Charles Carsburg

[1999] APO 43

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          Nos. PP3231 and PP3254 in the name of IMPACT POST ANCHORS PTY LTD

Title:          PP3231  Fastening Means

:PP3254  A Post Assembly

Action:          Application under Section 36(1) by VINCENT CHARLES CARSBURG for a declaration regarding entitlement to the inventions.

Decision:          Issued                  .

Abstract

Section 36 request in relation to PP3254 not pursued. 

PP3231 discloses a jamming member for fixing together tubular members and used particularly for fixing a post to a ground engaging post anchor. The patent applicant (Impact) markets post anchors and began a business relationship with the Section 36 applicant (Carsburg) initially to obtain sign post components. The patent applicant became involved in an ownership dispute over their existing post anchor technology (Impact Post Anchors v Cedarbourne [1998] APO 71) and were put under some pressure to find an alternative design. A director of the company (Flanagan) and a friend (Toonen) are said to have developed the concept of the locking collar and to have asked Carsburg to machine a prototype. The prototype was used as a basis for the provisional application and Carsburg was informed that he would be listed as an inventor. It is claimed however that his only contribution was to machine the prototype.

Carsburg argues that he was told of the ownership dispute and independently set out to design a distinctive device hoping that he would be given anchor fabrication work. After showing little initial interest, Flanagan is said to have asked for a prototype. This prototype was given to Flanagan who allegedly could not see how it could work and was intrigued by a number of features including the flange and two part construction. In the alternative Carsburg argues that he made a material contribution to the invention because the prototype was machined contrary to the instructions given by Flanagan.

Found that the Section 36 applicant had not satisfied the delegate on the balance of probabilities that he was an eligible person either solely or in part. In particular Carsburg was unlikely to have sufficient imperative to make the invention at the time indicated, his workbook was not a reliable indication of his authoring the invention on the date alleged and his claim that Flanagan could only know of the flange and two part construction through the prototype was not borne out in the evidence.

Found also that if the prototype was not produced to the instructions given there was no evidence that the result was more than a preferred working embodiment and hence the contribution was not material (Falkenhagen et al v Polemate Pty Ltd [1995] APO 32).

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Provisional applications PP3231 and PP3254 in the name of Impact Post Anchors Pty Ltd, application under Section 36(1) by VINCENT CHARLES CARSBURG for a declaration regarding entitlement to the inventions described.

BACKGROUND

Provisional applications PP3231 and PP3254 were filed by Impact Post Anchors Pty Ltd (Impact) on 27 April and 30 April 1998 respectively. Vincent Charles Carsburg (Carsburg) filed a Section 36(1) application on 7 July accompanied by evidence in support.  Impact was allowed two months to file evidence in response and filed its declarations in support on 4 September. A hearing notice was issued to the parties on 6 November but by letters dated 6 and 8 January Carsburg through his attorney, Mr Dredge, indicated that further evidence would be submitted. On 18 January reasons were supplied in support of the request for further evidence and the matter came to hearing on 9 February 1999.

In my decision of 24 February 1999 (reported at [1999] APO 15) I allowed Carsburg's request for further evidence and set terms for inspection of the provisional specifications. Mr Dredge also foreshadowed a request for summonses and in the circumstances the substantive hearing was adjourned.

Carsburg did not pursue inspection on the terms granted but served his further evidence on 8 March. Impact served their evidence in response on 7 April 1999. The matter was then set for hearing on 3 June 1999 and in the mean time Carsburg sought from the Commissioner and was granted summonses to witness and a notice requiring production.

Impact was represented by one of its directors Mr J Flanagan who was accompanied by Ms E Del Aguila and Mr P Toonen. Mr T Dredge of Intellpro, Brisbane represented Mr Carsburg who also attended.

At the hearing Mr Dredge indicated that the Section 36 application in relation to PP3254 would not be pursued and hence that application is dismissed.

SECTION 36 REQUEST

The Section 36 request includes the following statement:

"Vincent Charles Carsburg is the actual inventor of the invention described in said applications. Vincent Charles Carsburg by reason of Section 15 of the Patents Act 1990 is entitled to grant of a patent in respect of the invention."

The request was accompanied by a declaration made by Mr Carsburg on 22 June 1998.

THE SPECIFICATION

Petty patent 703056 claims priority from provisional application PP3231. This patent was sealed and became open to public inspection on 11 March 1999. Consequently the provisional application is also now open to public inspection.

The provisional specification indicates that the invention relates to fastening means for fixing a cylindrically shaped member within a cylindrically shaped bore having an internal diameter which is larger than the external diameter of the cylindrical member. It goes on to say that the invention has particular application to the fixing of the cylindrical lower portion of a post within a cylindrically shaped bore of the neck portion of a post anchor.

Prior art fixing methods including a threaded member extending through aligned apertures or wedges driven between the external wall of the post and the internal wall or the neck are described with their respective disadvantages. 

One aspect of the invention said to overcome “at least one of the above disadvantages” resides broadly in:

“a jamming member for fixing a generally cylindrical shaped portion of a first member, within a cylindrically shaped bore of a second member, the diameter of the bore being larger than the external diameter of the cylindrically shaped portion of the first member, said jamming member including a generally arcuate wall portion characterised in that the curvature of an outer surface of said arcuate wall portion conforms substantially to the curvature of the bore while the curvature of an inner surface of said arcuate wall portion conforms substantially to the curvature of the cylindrically shaped portion of the first member against which it is attended [sic] to abut, said jamming member being manufactured from a deformable material and wherein the thickness of said arcuate wall portion along its periphery, though varying, is generally always greater than the radial distance separating the outer surface of the cylindrically shaped portion and the inner surface of the bore.” 

The jamming member it is said can include an outwardly directed flange or lip which may extend beyond the external surface of the second member. It can be manufactured from resilient or a variety of plastic materials including nylon. Two or more jamming members can be used to totally enclose the first member or can be spaced around the first member such that there are gaps between the side edges. The curved wall of each jamming member can also include a tapered leading portion to assist in locating the member or for removal purposes.

The preferred embodiment illustrated in the diagrams has two jamming members (15) each with a lip or flange (22) and a tapered end portion (21). The tapered portion appears to extend over about one fifth of the axial length of the jamming member.

I note also that an advantage of the invention is said to arise because:

“the post is held more firmly within the bore due to the increased area of the jamming members which frictionally bears against the surfaces of the post and the bore.”

EVIDENCE

The evidence from both sides is rather extensive and much relates to peripheral matters particularly the dispute between Impact or Mr Flanagan (Flanagan) and McConnell Industries (McConnell) (See Impact Post Anchors v Cedarbourne [1998] APO 71 (22 December 1998) also involving a Section 36 application). The most critical to this matter is found in the declarations of Carsburg dated 3 March 1999 and Flanagan’s declaration in reply dated 1 April 1999 together with declarations by Mr Toonen and Mr Tannahill.

Toonen, Tannahill and Ms Del Aguila were summonsed and I allowed cross-examination of Toonen and Tannahill on their declaratory evidence. Del Aguila had not provided evidence in this matter and when I queried Mr Dredge on the nature of the information sought I indicated that I did not think the examination appropriate in the circumstances and he did not pursue the issue. I would add that it is regrettable that the two central figures in this dispute, Carsburg and Flanagan were not summonsed and cross-examined as this may have been of greater assistance in resolving the many facts in dispute.

I will refer to the evidence and the various submissions of the parties in my decision.

DECISION

The dispute behind the present Section 36 application results from the breakdown in the business relationship between Impact and Carsburg (or his company Brendale Industries) that began when Carsburg was approached to manufacture sign posts in September 1997. Various allegations are made but it seems to be the case that as the relationship developed to include other products and developments basic steps were not taken to formalise the arrangement and to protect the intellectual property generated. Whether developments were made by one party or the other (or both) those contributions were evidently given to the other party without any formal contractual provisions in place. Agreements may have been made verbally or were implied but they do not come to light in the evidence.

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. While the provisional application does not refer to a "nominated person" it is clear from the wording on the request that the applicant Impact is claiming to be an eligible person in relation to the invention. Indeed the dictionary in schedule 1 of the Act, defines "nominated person" as "the person identified in a patent request as the person to whom the patent is to be granted".

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 Section 36(1) applicant to clearly establish to the Commissioner’s satisfaction that the nominated person is not entitled to the invention and that some other person is entitled either solely or in part. In deciding the matter the Commissioner is entitled to act on any material which is "logically probative" and 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).

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 has been approved by the Administrative Appeals Tribunal in Upham v Commissioner of Patents and Another ([1998] AATA 852).

Also potentially relevant in the present circumstances is the principle discussed in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32 (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."

The sequence of events that lead to the invention from Impact's point of view are in summary:

1. On 14 November 1997 David Fisher of Steelmark Eagle and Globe contacted Flanagan about distributing Impact's product range.

1. In mid February 1998 Impact failed in its bid to win a contract for post anchors on a Victorian pipeline. The contract instead went to McConnell Industries.

1. On 13 March 1998 David Fisher held a meeting with Flanagan in which he advised "that unless his company could offer a significantly different or superior product to that of Cedarbourne our interest in the range would diminish".

1. Also on 13 March 1998 Tannahill (then Impact's patent attorney) tells Flanagan that the Section 36 matter with Cedarbourne would not be resolved quickly and that it would perhaps be better to develop an alternative means for securing a post to the neck of a post member.

1. Flanagan consults with Toonen about this problem in the period after 13 March and he suggests a friction grip jamming device. This was said to flow from Toonen's experience with seized propeller shafts.

1. Flanagan says he discussed the machining of a gripping lock ring with Carsburg on 19, 20 and 21 March. He says Carsburg became excited about the prospect for a major breakthrough over metal locking wedges and that they discussed machining a nylon lock ring some 4.5mm thick to fill the gap between a 60.3mm OD tube and a 69mm ID tube. A depth of 30mm was considered to be sufficient with a removal lip to be incorporated.

1. On 21 March Carsburg advised that he had suitable machinable nylon available and that he would be happy to machine prototypes provided Impact supplied steel tubing.

1. Flanagan described to Tannahill in the weeks preceding their meeting of 15 April 1998 the concept of the locking ring. At this meeting Flanagan drew a sketch of the concept in Tannahill's work book (IRT1).

1. Steel tubing samples were delivered on 20 April 1998. Carsburg machined the prototypes from bar stock and gave them to Flanagan on 21 April 1998 "with considerable reluctance".

10.  At a meeting on 24 April Tannahill was instructed to file a provisional application for the locking ring. Flanagan wanted to record Carsburg as an inventor because Flanagan "felt sorry for Vince Carsburg who it appeared had led a troubled life". Tannahill advised against this as Carsburg was not an inventor. Regardless on 25 April Flanagan sends a facsimilie to Carsburg indicating that he would be listed as an inventor.

11.  From Tannahill's evidence the provisional specification was prepared on the basis of the prototype which was given to him by Flanagan.

In contrast Mr Carsburg's claim in this matter arises allegedly from the following sequence of events:

1. In early January 1998 Darrel Stow of McConnell Industries informed Carsburg that his employer had filed a patent for a post anchor using an inclined tapered wedge locking collar and that this was in conflict with a patent application made by Flanagan.

2. Knowing of the dispute between McConnell and Impact over the tapered wedge design Carsburg was determined to make his own system "so that if I was to make post anchors I could avoid the McConnell inclined tapered wedge locking collar patent". He had experience machining bushes from polyethylene bar stock and had noticed the binding effect of a slightly oversized bush.

3. He told Carl Carsburg and Shane Neilsen that he had found means to make his own post locking mechanism using nylon or plastics and on 4/2/98 sketched in his workbook (VCC8) two alternate designs.

4. Carsburg indicated to Flanagan in early March 1998 that he knew about the dispute and that he had an idea for a locking collar of his own. Flanagan however showed little interest.

5. Early April 1999 Flanagan asked Carsburg to quote on the supply of post anchors but Carsburg indicated that he preferred to develop his own system. Flanagan is said to have indicated that the patent in question was his and that he was prepared to indemnify Carsburg's company.

6. On 3 April 1998 Carsburg quoted on the tapered wedge system. "This was about the time that discussions between me and Flanagan turned to the new proposal I had mentioned to Flanagan in early March 1998"

7. Prototypes were machined and made available to Flanagan on 22 April 1998. The first did not produce sufficient grip and a second was made with an increased outside diameter which provided sufficient grip.

8. Flanagan sent Carsburg a fax on 23 April 1998 with suggested alterations which indicate in Carsburg's view that Flanagan did not understand the principle behind the concept.

Impact challenge this sequence on a number of grounds, firstly that Carsburg could not have known of the patent dispute in January 1998. Since Mr Dredge was at some pains to show that Impact was the initiator of any dispute with McConnell by a letter of Mr Tannahill dated 24 February 1998 this attack perhaps has some basis. On the other hand there was clearly some dispute between Impact and McConnell Industries prior to November 1997 as indicated by the delegate's decision in Impact Post Anchors v Cedarbourne, supra, and which presumably led to Impact moving their work to Metwork Pty Ltd late in 1997. The dispute appears from the evidence of Flanagan and others to be in relation to the quality of the anchors produced by McConnell and perhaps pricing but it also appears that both parties informed the other of the existence of their provisional patent applications. Darrel Stow may have known about this in January 1998 and may have told Carsburg but there is no corroborating evidence. I also have doubts that anyone at that time could make any conclusions about the dispute in relation to patents to the extent that they would be "determined to make my own system so that if I was to make post anchors I could avoid the McConnell inclined tapered wedge locking collar patent". If so Carsburg showed amazing foresight not only about the contents of the unpublished patent documents but also that he would later have the opportunity to manufacture post anchors for Impact. In this regard while Flanagan may have discussed post anchors with Carsburg when they first met there is no indication that Carsburg was seriously interested in the anchor manufacturing work until March. I believe it is far more likely that Carsburg found out about the patent dispute later than he indicates and after the sketches were said to have been made.

Secondly Impact allege that the drawings of 4 February 1998 (VCC8) are a fabrication. I also have doubts about this evidence for the following reasons:

• The workbook is spiral bound.

• Many pages are not dated, some are used on one side only and much of the workbook is blank. There are also long gaps between date entries, for example in the relevant period the dates shown are 3/2, 6/2, 4/2, 27/2, 16/3.

• The relevant pages both carry the same date while generally Carsburg dates the beginning of each entry or job and not subsequent pages (This is apparent from the workbook itself and others that were handed up at the hearing).

• 3 pages before the page dated 4/2/98 is a page with 3/2/98 in the top right hand corner with the date 6/2/98 part way down the page at what is clearly the beginning of a new entry.

• The drawing is corroborated only by persons closely associated with Carsburg, his son and another employee.

• There was no mention of the drawings in the evidence filed initially with the Section 36 application and there is no evidence that they were shown to anyone outside Brendale Industries until November 1998.

Mr Dredge gave an explanation for the entry of 6/2/98 on the same page as 3/2/98 but if it was a two page entry included some time later this only creates further doubt as to the reliability of the workbook. He has also indicated that the delay in presenting evidence was strategic but as I intimated in my earlier decision this can only result in the credibility of the evidence being brought into question. I note also in this regard that Mr Dredge has not declared that he was shown or was aware of the drawings in July 1998 when the Section 36 application was filed. In light of the foregoing I cannot accept the workbook drawings as conclusive evidence of the invention of the locking ring on or before 4 February 1998.

Before leaving the workbook however, I note with interest the undated page preceding the page dated 16/3/98 (Cortina Headers). This page is titled 40NB POST ANCHORS x 400 x 2.4mm. and includes prices for components (including wedges) and machining in adjacent columns (I assume non-galvanised and galvanised) with totals of "7.56" and "$9.40" then below an entry "Quote $7.50". If this page is in correct date sequence it would suggest that Carsburg was either asked to quote on wedge anchors or was preparing to do so on his own volition some time between 27 February and 16 March. I believe this is more likely to be the time at which Carsburg was informed of difficulties that Flanagan was having with Metwork and also that there were some problems with patents. This is consistent with Carsburg's first declaration where the reference to McConnell in paragraph 4 is more likely to apply to Metwork. Carsburg's statement that he told Flanagan in March 1998 that "I had an idea for a locking collar of my own that did not infringe the existing patent" is still rather odd in that there was no patent to infringe at that time, the patent applications were not open to public inspection and he would not be in a position to assume the outcome of the Section 36 matter. All Carsburg was likely to know at that stage was that there was dispute over ownership of the inclined wedge design. This is not to say that Carsburg could not have developed the locking ring concept, he certainly appears to have the suitable technical skills, but it does not appear likely that he would have had sufficient imperative to do so particularly if, as is apparent, he did not plan to do anything with the invention on his own. Furthermore if he was aware of the patent dispute at the time he allegedly made the invention it is rather surprising that he did not take any steps to protect his intellectual property. He did not file a patent application or seek an agreement with Impact but on his own evidence gave it away to Flanagan.

In the alternative I accept from the evidence of Fisher and Tannahill that at 13 March 1998 Impact had a clear commercial imperative to obtain a new post anchor design that would be acceptable to Steelmark. Mr Flanagan suggests in his declaration of 1 April 1999 that all attention was then focussed on that problem. This however is not borne out by the other evidence. After saying that "the matter of trellis tests was immediately taken off the agenda" he says in another declaration that he called Hunt Robinson about the tests on 17 March. Furthermore Flanagan apparently sent the trellis strainer drawing of VCC4 to Carsburg on 18 March 1998. Apart from the trellis issue Flanagan was also pursuing in this period the manufacture of the wedge design with Metwork and at a preliminary stage with Carsburg. Hence the phone calls between Flanagan and Carsburg on 19, 20 and 21 March could have been about the lock ring (as alleged by Flanagan), the trellis (as alleged by Carsburg), quotes for the wedge design (as apparent from the evidence) or a combination which is perhaps more likely. Nevertheless given the nature of Impact's business and the importance of its relationship with Steelmark and given Tannahill's advice I believe it is highly probable that Flanagan, even if convinced of his rights to the inclined wedge arrangement, would be seeking alternative designs and would have discussed the matter with Toonen who had previously been helpful in such matters. Hence I also think it would be more unlikely that Flanagan would ignore Carsburg suggestion of an alternative anchor mechanism if that was made after 13 March.
Flanagan's evidence in relation to the development of the concept by Toonen in mid March is corroborated by Toonen who is obviously a close friend of Flanagan. The telephone invoices however at least confirm that calls were made to Toonen on the days specified and the two calls on 14 March are consistent with the proposition that Flanagan turned to Toonen with issues raised by Fisher and Tannahill on the previous day. Tannahill indicates that he discussed the concept with Flanagan in "the weeks preceding our meeting on 15 April 1998" but in cross-examination he said this was possibly two or three weeks before but that he was uncertain. This could support both Flanagan and Carsburg's version of events depending on the detail of the concept discussed. Toonen's statement on how the concept came to him is rather sketchy but is plausible and there is evidence to indicate he has sufficient basic technical skills. Flanagan's experience seems to be more as an administrator or marketing manager of engineering and hardware supply companies and he comes across as a person with moderate rather than high technical capability or trade skills. Thus it is not surprising that he has to rely on others such as Toonen for technical advice or that he had difficulty in drawing the locking collar for Tannahill. Nevertheless I accept he has a reasonable knowledge of the products he sells and demonstrates and was capable of making the contribution to the invention he alleges. This appears to relate mostly to the flange and two part construction.

Mr Dredge attacked particularly the evidence of Tannahill perhaps recognising its importance to Impact's case. There are grounds for some concern in relation to what extent Tannahill claims to investigate the bona fides of inventors named on patent requests that he prepares. However I can accept that while one may wish to investigate issues of inventorship in detail a person in his position is very much reliant on the statements and assurances made by their client. While he was somewhat defensive in parts of his cross examination he was generally cooperative and I also give weight to Tannahill's standing as a member of the patent attorney profession and do not think it likely that he would be prepared to fabricate evidence or lie under oath in proceedings before the Commissioner, particularly when he has little to gain in this matter. Overall I am prepared to accept his account in relation to the meetings and discussions said to have taken place with Flanagan including the meeting of 15 April 1998 and accept that the figure of IRT1 was drawn by Flanagan on that date. I note here also that Mr Dredge has not seriously questioned the authenticity or date sequence of the drawing even though Tannahill's workbook has been produced. This being the case I reject Carsburg's assertion at paragraph 19 of his declaration that Flanagan could not have known about the flange or the two piece construction prior to 22 April when the prototype was made. If as Mr Dredge submitted the invention could have been communicated in a few words to Flanagan prior to 15 April it is hardly credible to suggest that Flanagan did not understand the invention on 22 or 23 April to the extent that "Flanagan's reaction to seeing the prototype for the first time was one of disbelief, it seems to me, he failed to see how it could work. He seemed intrigued by the flange atop the collar and that the collar consisted of two individual pieces, he asked why all of this was necessary". Indeed Carsburg's evidence overwhelmingly is that those features were not disclosed to Flanagan until 22 April.

There are a number of subsidiary issues with Carsburg's evidence that are perhaps worth mentioning:

1. Flanagan's facsimile of 23 April 1998 (VCC2) was sent to Carsburg on the day after the prototype was made and is said by him to indicate Flanagan's failure to understand the concept. I do not agree. The problem of the fitting being over tight had arisen in the trial the previous day and the suggestions made are not unreasonable in that context. The suggestion to increase the taper could equally be said to be a means of reducing the length of the jamming portion to reduce grip rather than some misunderstanding of the purpose of the taper. Looking at the drawing it seems unlikely to me that Flanagan meant to specify only a 5mm jamming portion but I should note that despite a number of opportunities Flanagan has not sought to clarify this issue. The drawing of 15 April certainly does not suggest a very small jamming section or that the concept was not understood.

1. Carsburg says it was company policy not to do any work without an official work order and the absence of such an order is an indication that the machining of the prototype was not done on Impact's instructions. This is an interesting point but is not verified by the evidence. For example, Carsburg alleges that he was employed by Impact to design the vineyard strainer system but no order was produced for this work even though if it existed I assume it would be readily at hand. I believe it is more probable that where there was the prospect of substantial future orders such as for the strainer system Carsburg was prepared to do preliminary work without any documentation or separate invoicing. This could extend to machining the lock ring if as seems likely Carsburg believed he would be producing the metal parts of the anchor for Impact. If it is surprising that no work order was issued by Impact it is equally surprising if Carsburg made the invention that he did not seek to invoice Impact or reach an agreement over his development work. There was certainly time for Carsburg to consider this step between when he allegedly told Flanagan about the concept in early April until the prototype was made and in that he should have recognised that his company could not ultimately produce the lock ring itself and would therefore have little opportunity to derive income from its development.

1. Flanagan suggests that if Carsburg made the invention to avoid the patent dispute with McConnell it is inconsistent that he would quote on the wedge design in early April. Mr Dredge counters that if Flanagan made the invention he would not have sought supply of the old design from Carsburg. In my view there are plausible reasons for continuing with the old design on both sides and I do not believe that this line of argument assists either party. It may be worth adding however that Impact did not proceed with an order and Carsburg did not end up manufacturing post anchors.

The onus is on Carsburg to make out his case for a direction under Section 36. My concerns with that case as discussed above are such that I can not be satisfied on the balance of probabilities that Impact is not an eligible person and I can only conclude that the invention originated with Impact through Toonen and Flanagan. I accept for the purposes of this decision that Impact legitimately derives entitlement from those two persons.

In reaching this conclusion it cannot be said that I am entirely satisfied with Impact's evidence as I have partly alluded to above. Mr Dredge submitted that Flanagan's evidence was "prepared and read through blinkers by someone convinced of the righteousness of his own case". Certainly he is very emotionally involved in this matter and the objectivity of his evidence suffers because of this. It is also clearly apparent that Flanagan does not understand what constitutes an inventor in the language of the Patents Act. For example:

• In VCC3 he suggests inappropriately that "Evelyne" be included as an inventor for the present invention;

• Toonen's contribution to the fin structure was not recognised in the request accompanying patent application 52067/98;

• The request originally filed with the application for petty patent 703056 included only Flanagan as inventor even though he had already filed evidence in this matter that Toonen was an inventor, and

• If Flanagan's statements about Dr Mollah's involvement with the trellis design are true then from VCC3 he may also have overlooked this contribution in relation to PP3254.

However this and the finding in the Cedarbourne matter does not necessarily lead to the conclusion that Flanagan has a malicious propensity for obtaining the inventions of others. It is perhaps equally consistent with an ignorance of patent law and a simple arrogance that devalues the advice and contribution of others particularly when they relate to his own business interests. This characteristic does not automatically lead to a conclusion that Flanagan obtained the invention in the present case but in deciding this matter I have viewed his evidence with some caution. Nevertheless Tannahill's evidence gives Flanagan credibility on a number of key points and hence the balance, as I have already concluded, is in favour of Impact.

The alternative case put by Mr Dredge is that in producing the prototype Carsburg made a material contribution to the invention. It is known from Tannahill that the prototype formed the basis for the provisional application but unfortunately the prototype was not produced in evidence and the drawings in the specification are so imprecise that little in relation to dimensions can be determined. The instructions from Flanagan's declaration of 1 April 1999 at paragraph 41 are said to include a "strengthening extraction lip" for which "a 10mm or 12mm square section would suffice" and "a jamming section approximately 4.5mm thick, and 30mm to 40mm long with a taper lead 15mm to 20mm deep". At paragraph 42 Flanagan also says that he asked Carsburg to saw the prototype into two 180 degree segments. From this it is at least clear that Carsburg did not machine the taper to the suggestions said to be made by Flanagan but whether the device varies otherwise from the instructions given is difficult to determine particularly when Carsburg's evidence naturally insists that no instructions were received. In this regard I do not think the instructions necessarily meant that the length of the jamming section should include the flange portion which would have resulted in a very small effective jamming section. Despite the uncertainty in the evidence on this point I believe it is more likely that the 30mm to 40mm length was meant to be in addition to the flange giving an effective jamming portion of 15 to 20mm. This is consistent with VCC2 if it is assumed that the overall length specification "35mm" was a mistake and this follows logically if you postulate that Flanagan's objective was to specify increases to the size of the flange and taper of a device which was originally made to an overall length of about 35mm. That is, he suggested changes without thinking about the effect on the overall length. I note also that the production version shown in the photograph of VCC14 is to my eye considerably longer than the prototype is said to have been with a larger flange and taper which may indicate that Flanagan's suggestions were followed through on this device.

Flanagan's facsimile to Carsburg of 25 April (VCC3) is however of some concern in this matter. It indicated to Carsburg that he was to be listed as an inventor and states that "We hope that you will see that our intentions are proper and appropriate with regard to patents". This correspondence followed the advice from Tannahill on the 24^th that Carsburg should not be listed if he wasn't an inventor and there were other ways of passing on a benefit to him. While Flanagan may have had an uneducated notion in relation to listing of inventors on patent applications and may have felt sorry for Carsburg I believe it is unlikely that Flanagan would reject this advice unless, as is apparent from the fax, Flanagan believed he had an obligation to Carsburg for his contribution.

Flanagan however insists that all Carsburg contributed was the machining of the prototype to directions given over the telephone. In terms of Falkenhagen, supra, a material contribution can be characterised as where "the resulting device is overall an improved one not merely a preferred workable embodiment of the original concept". If I accept that the instructions referred to above were given it seems to me that there is very little left in the prototype that could not be considered merely a preferred working embodiment. A relatively short taper and a longer jamming potion may give better grip and less wastage but this is merely a matter of optimisation within the overall inventive concept. Otherwise I have insufficient evidence to indicate that Carsburg made suggestions that gave rise to a "result or advantage not contemplated by the original concept". The facsimile of 25 April while somewhat mysterious is insufficient in itself for me to conclude otherwise. I should add also that whatever Mr Dredge sought to make of Tannahill's concessions on whether Carsburg may have made a material contribution if he failed to follow Flanagan's instructions, Tannahill is not Impact's legal representative and his opinion, in the circumstances in which it was given, is of little assistance.

I find that there is insufficient evidence to satisfy me that Carsburg made a material contribution to the invention disclosed in the provisional specification.

CONCLUSION

While there are deficiencies with the evidence of both parties I have found that Mr Carsburg's evidence is less convincing on a number of key points and I can only find that the balance of probabilities is that Flanagan disclosed the locking ring concept to Carsburg in mid March 1998 and subsequently asked him to produce a prototype. Carsburg may have machined a prototype which did not conform entirely with those instructions but there is insufficient evidence for me to conclude that Carsburg made a material or inventive contribution. I am not satisfied that he is an eligible person either solely or in part and consequently the application under Section 36(1) is refused.

Pursuant to Section 36(4) an appeal against this decision lies to the Federal Court.

COSTS

Having considered all the circumstances in this case I see no reason to depart from the normal practice that costs follow the event. I therefore award costs against Vincent Charles Carsburg.

Philip Spann
Delegate of the Commissioner of Patents

Patent attorneys for the Section 36 applicant:  Intellpro, Brisbane