Infra Red Technologies Pty Ltd v Dirk Domenico Cortesi
[1997] APO 6
•28 February 1997
official notice
decision of a delegate of the commissioner of patents
Applications : Nos. 65606/94 and 16473/95 in the name of INFRA RED TECHNOLOGIES PTY LTD
Invention: Apparatus for the thermal processing of particulate material
Action: Request by DIRK DOMENICO CORTESI under s.32; hearing - only Cortesi sought to be heard.
Decision: Issued
Abstract
Cortesi entered into a business relationship with various persons and companies associated with the applicant. Cortesi claimed inventorship of the invention disclosed in these applications (he is listed as the inventor on the patent requests) and claimed entitlement to any patent rights to the invention. He requested a determination under s.32 as to the person who may proceed with the applications.
Found that Dirk Domenico Cortesi is the sole inventor of the rotary thermal processor being the invention disclosed in the specification of applications 65606/94 and 16473/95, and for that matter disclosed in the specification of application PL 8418.
Found that on the balance of probabilities Infra Red Technologies Pty Ltd is not an eligible person in relation to the rotary thermal processor being the invention disclosed in the specification of applications 65606/94 and 16473/95 and that Dirk Domenico Cortesi is the sole eligible person in relation to the invention as so disclosed.
As applications 65606/94 and 16473/95 have both lapsed it was not considered appropriate to make any determination under s.32 in regard to enabling the applications to proceed whilst they remain in a lapsed state. It is however open to Cortesi to advance his claim through the provisions of s.36.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 65606/94 and Petty Patent Application No. 16473/95 both by INFRA RED TECHNOLOGIES PTY LTD and request by DIRK DOMENICO CORTESI under s.32.
background
Standard patent application 65606/94 arose from International application PCT/AU94/00208 filed on 21 April 1994 by INFRA RED TECHNOLOGIES PTY LTD (hereinafter referred to as “Infra Red”) and designating Australia. Application 65606/94 claims priority from Australian provisional specification No. PL 8418 filed by NORZON MANAGEMENT LIMITED (hereinafter referred to as “Norzon”) on 21 April 1993. Petty patent application No. 16473/95 was filed on 13 April 1995. This application was divided from application 65606/94. Both application 65606/94 and 16473/95 identify DIRK CORTESI (hereinafter referred to as “Cortesi”) as the actual inventor. Applications 65606/94 and 16473/95 were laid open to public inspection on 8 November 1994 and 20 July 1995 respectively.
On 30 November 1995 a transfer of interest request was filed for petty patent application 16473/95 by patent attorneys Griffith Hack & Co. The request seeks a direction from the Commissioner that the application proceed in the name of GRA AUSTRALIA PTY LTD (hereinafter referred to as “GRA”): GRA claims an assignment from Infra Red. Actioning of this request is outstanding since insufficient evidence of the assignment has been furnished to the Commissioner.
On 15 May 1996 Cortesi filed a request for determination under s.32 in respect of applications 65606/94 and 16473/95. The request seeks a determination of the person who may proceed with the applications. Evidence in support of the request had been filed by Cortesi on 27 March 1996. A copy of the request and evidence was served on the applicant via its address for service. In accordance with regulation 3.6(3) a notice of the request was published in the Official Journal of 6 June 1996. No party apart from Cortesi indicated a wish to be heard on the request - in fact Griffith Hack & Co, the then address for service for Infra Red, advised that their client did not wish to be heard.
I heard Mr Cortesi in the matter at a hearing set down in Canberra on 3 September 1996.
SECTION 32
Section 32 of the Patents Act 1990 provides as follows:
“Disputes between applicants etc.
32. If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.”
From the dictionary in the act “"interested party", in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person”.
And regulation 3.6(5) provides:
“(5) If, as a result of a request, the Commissioner determines under section 32 of the Act to change the name of a nominated person, notice of the determination must be published in the Official Journal.”
In the present matter Cortesi claims sole entitlement to the grant of a patent on the applications. The legislative provisions enable the Commissioner to make a determination to that effect. However before making such a determination the Commissioner needs to be satisfied from evidence provided that the requestor is so entitled to the exclusion of other parties, particularly those presently named on the patent request.
THE INVENTION OF THE PATENT APPLICATIONS
The applications are concerned with apparatus for processing particulate material. The specifications indicate the field of the invention thus:
“This invention relates to an apparatus for the thermal processing of particulate material and, in particular, but not exclusively, to an apparatus for the thermal processing of particulate foodstuffs.”
The applications describe apparatus including a rotatable drum-like body through which particulate material can be moved by the combined action of gravity and rotation of the drum, the drum being positioned with its rotation axis near horizontal. Within the drum there is arranged a radiant heat source which imparts heat to the foodstuff thus effecting the necessary processing. Cooling means are also provided within the drum to absorb a proportion of the radiant heat so as to protect the heat source from overheating. These are the main features of the apparatus. Foodstuffs for both human and animal consumption can be processed by the apparatus - where a roasted, dried, cooked or sterilised product is required. Apparatus of this type is commonly called “micronizers”.
Each specification includes the same 5 appended figures. Figure 1 shows a side view of the apparatus in partial cross section.
Claim 1 of application 65606/94 as filed is as follows:
1. An apparatus for the thermal processing of particulate material comprising:
an elongate hollow rotatable body through which said particulate material passes;
a radiant heat source disposed within said body for illuminating the interior of said body and said particulate material with radiant heat;
a cooling means extending through said elongated hollow body for absorbing a first proportion of (said radiant) heat to protect said radiant heat source from overheating,
whereby, in use, said particulate material transverses the length of said body by the combined action of gravity and the rotation of said body and is thermally processed by the absorption of a second proportion of said radiant heat, said cooling device operating to prevent overheating of said radiant heat source.
Claim 1 of the petty patent application 16473/95 as filed differs from the above by the omission of the underlined words and the inclusion of the bracketed words.
MATERIAL FILED IN SUPPORT OF THE REQUEST
Mr Cortesi filed on 27 March 1996 a statutory declaration made by himself which constitutes material in support of his request. This declaration consists of a proforma “Statutory Declaration” cover sheet including the formal statutory declaration wording and which refers to the following 30 sheets thus:
“See 1) Letter (1-2)
2) Statutory declaration (3-5)
3) Addendums A - M (6-30).”
All sheets are signed and witnessed.
The “Letter” (sheets 1-2) briefly summarises Cortesi’s claim to entitlement to the invention and any patents granted on the applications. The sheets 3-5 refer to dealings between Cortesi and individuals and companies in both Australia and South Africa from 1993, with references to the copies of documents A - M of the Addendums (sheets 6-30). Attached hereto as Appendix A is the text of the sheets 3-5 : I have included bracketed numbers after paragraphs to aid later reference.
At the hearing I expressed some shortcomings in the material before me where there appeared to be incomplete documentation relating to certain dealings between Cortesi and other persons and I asked whether Cortesi had further material relevant to these points. Subsequent to the hearing Cortesi filed copies of a further 4 documents (N, O, P & Q) comprising a total of 18 sheets. Copies of these documents were forwarded to the attorneys representing the applicant and an opportunity given to provide any submissions thereon - no submissions were filed in the time allowed.
BASIS FOR MR CORTESI’S CLAIM TO ENTITLEMENT TO THE INVENTION
Mr Cortesi submitted that since around 1979 he has been associated with his own companies in South Africa in businesses relating to milling and food processing, including food dehydration. He said he investigated the possible use of infra red as a heat source for food processing and built and developed a machine using such a source in the early 1980’s. He said he modified the machine, known in the industry as a micronizer, over subsequent years in order to process a wider range of foods and to enable better control of the processing.
He says he was approached by representatives of South African and Australian companies seeking to market and perhaps manufacture his machines more widely, including in Australia. This occurred during 1992 and in October 1992 he reached agreements with these parties to market and manufacture his machines. He asserts that the provisional patent application lodged in Australia on 21 April 1993 (without his knowledge) was his invention, the drawings being based on drawings he supplied to representatives of the applicant prior to that date. The applications 65606/94 and 16473/95 both list Cortesi as sole inventor. He says he has never assigned any patent rights to the invention and was never an employee of the patent applicant but merely a consultant, and that he frequently asserted to the patent applicant that the invention of the patent applications was his and had not been assigned to them.
In order to further understand and assess Mr Cortesi’s claim, I will briefly list chronologically relevant events as evident from the material filed and submissions at the hearing. I am aware that some of the matters presented by Cortesi in submissions at the hearing are not elsewhere collaborated by evidence, and thus in deciding this matter I will need to consider what weight should be given to such submissions and matters raised. However I should add that from the hearing I did not get an impression of Mr Cortesi as being other than truthful in presenting his version of events leading to the present action by him.
Relevant events by date
October 1992
Cortesi said The Dryden Combustion Co (Pty) Ltd (a South African company) approached him with a view to marketing his machines. As part of this approach and discussions, “Mr. G. Roberts and Mr.A. Dommisse, directors of GRA Australia PTY Ltd and Infra Red Technologies Pty Ltd (IRT) visited my factory in South Africa several times and Mr. Dommisse and a director of their companies in South Africa signed confidentiality agreements.” (see para [3] of Appendix A). The visits were in October 1992 and the confidentiality agreements are dated 28 October 1992 (see para [4] of Appendix A).
19 October 1992
By cover of letter dated 19 October 1992, (Addendum E) Cortesi faxed “the complete set of engineering drawings” (6 sheets) to Roberts in Western Australia of Norzon Management Ltd. Norzon’s address is Guernsey Channel Isles. The letter is headed “AGREEMENT: NORZON AND D. D. CORTESI”, an agreement stated to be “signed by Adriaan Domisse (sic) on behalf of Norzon Management Ltd.” The letter also states:
“Copies of said drawings will also be faxed to Mr Adriaan Domisse, of Industrial Plant and Machinery Distributor Pty Ltd, and Mr Gordon Slater of The Dryden Combustion Co (Pty) Ltd. Please note that these drawings must be treated with the utmost confidentiality and the contents must not be divulged to any person(s) apart from yourself, Adriaan Domisse and Gordon Slater.
Permission is hereby granted to The Dryden Combustion Co (Pty) Ltd to build two micronizers for export to Australia.
....
A secrecy agreement, as consented to by all parties, will be forwarded to you forthwith for your approval and signature.
....
Patent registrations will be finalized by Adams and Adams within the next couple of weeks.
I look forward to a mutually beneficial trade relationship.”28 October 1992
Confidentiality agreements signed (see paras [3] and [4] of Appendix A). The agreement of Addendum C is signed by Dommisse for Industrial Plant and Machinery Distributor Pty Ltd, a South African company, and the agreement of Addendum D is signed by Slater for The Dryden Combustion Co (Pty) Ltd. Document N provided after the hearing is a full copy of a Confidentiality agreement also dated 28 October 1992 with one Stephanus Terblanche. Clause 1.5 indicates that the restraints of the agreement extend worldwide. No evidence has been presented of a signed confidentiality agreement with Roberts or Norzon although Addendum E refers to the secrecy agreement issue and Addendum A, a letter by Cortesi to Roberts dated 20 December 1993, refers “to our already agreed upon secrecy agreement”. Mr Cortesi asserted at the hearing that he did secure a secrecy agreement with Roberts and his associated companies.
25 March 1993
By letter of this date (Addendum L) patent attorneys Griffith Hack & Co wrote to GRA Australia Pty Ltd (attention Mr G Roberts) regarding “Proposed New Australian Provisional Patent Application - ROTARY MICRONIZER”. The letter refers to a granted and published South African patent no 91/5864 and makes some comments about how the proposed micronizer differs from the referenced patent. The letter also states:
“Finally, we confirm that the right to the grant of a patent on the rotary micronizer must be derived from the actual inventor. Therefore, if a patent application is to be filed in a name other than that of the inventor, a Deed of Assignment or other document transferring rights to the applicant must be executed prior to grant”
21 April 1993
Australian provisional specification No. PL 8418 filed by NORZON MANAGEMENT LIMITED. The invention is entitled “Apparatus for thermal processing of a particulate material”. Figure 1 of the provisional specification shows in side elevation the outline of a machine with a horizontally arranged drum.
8 July 1993
Cortesi says he commenced his first visit to Australia on this date (see para [3] of Appendix A). He said at the hearing that during this visit he attended a Food Processing show in Sydney where one machine of his design, which had been exported to Australia by Dryden and had not been sold, was displayed. He also said he made a return visit to Australia “a month or so later” to follow-up enquires from the show.
29 September 1993
Roberts for GRA sends a facsimile (Addendum F) to Cortesi in South Africa commenting “We are pushing hard on the Micronizer from this end ...” and requesting drawings of a Model 600 micronizer “and as much information as possible ... as I have to arrange for manufacture.”
11 October 1993
Cortesi sends 36 pages of drawings etc re Micronizer 600 by facsimile to GRA (see Addendum G).
12 October 1993
Cortesi sends more information to GRA by facsimile. He also informs Roberts that he is “busy with a very interesting water jacket design” and will let him know how a prototype tests (see Addendum H).
13 October 1993
Roberts acknowledges to Cortesi receipt of the drawings, and regarding the jacket design mentioned by Cortesi remarks “Please advise if you wish me to register a provisional patent” (see Addendum I and para [11] of Appendix A).
20 December 1993
Cortesi wrote to George Roberts. The document is headed “AGREEMENT - MICRONIZERS” and lists 12 main points concerning the involvement of Cortesi and Roberts or his companies to “mutually market and manufacture the micronizers in the world, except Africa”. The document includes the following sentence near the end, “Please bear in mind that this proposal in (sic) open to change and discussion, as you may have different views.” (See Addendum A and paras [3] to [5] of Appendix A.)
Cortesi said at the hearing that in late 1993, because of changing conditions in South Africa and other factors, he decided to emigrate to Australia and control his business interests from Australia. He said that the above document documented the agreement reached with Roberts and his companies regarding their business relationship involving micronizers.
19 January 1994
Griffith Hack & Co wrote to Norzon regarding their provisional patent application PL 8418 informing them that if they wished to proceed with the application a complete application must be filed before 21 April 1994 (see Addendum J1).
1 February 1994
Cortesi said at the hearing that he arrived in Australia on 1 February 1994.
21 February 1994
Roberts sends a copy of the letter of Addendum J1 (sheet 22) to Cortesi and requests his “urgent comment”. In response, on 23 February 1994, Cortesi asks for a copy of the application concerned. (See para [6] of Appendix A and Addendum J2.)
Cortesi said at the hearing that he provided assistance in preparing the PCT application including ensuring that his most recent development features of the micronizer relating to temperature control and feed control were incorporated in the application.
21 April 1994
International application PCT/AU94/00208 was filed on 21 April 1994 by Infra Red. It designated Australia thus giving rise to the filing of Australian application 65606/94 the subject of this action. This application claimed priority from PL 8418.
I note that in relation to para [7] of Appendix A, the relevant application filed on 21 April 1993 was in fact application PL 8418 by Norzon.
4 July 1994
Letter from Griffith Hack & Co to Norzon (attention Roberts), with cc. to Cortesi, re Infra Red’s application PCT/AU94/00208 and the need to correct defects (including formal drawings) and provide other details (see Addendum J).
Cortesi said at the hearing that he arranged the preparation of the relevant formal drawings - he said that the original drawings included hand drawn features because of time constraints before the original filing.
17 October 1994
Letter from Griffith Hack & Co to Norzon (attention Roberts) advising that a demand for International Preliminary examination has been filed for application PCT/AU94/00208. The letter also draws attention to the issue of proprietorship and assignment of the patent rights involving “Dirk” (Cortesi) and Infra Red. (See para [12] of Appendix A and Addendum K.)
20 March 1995
On this date Cortesi says he terminated his relationship with GRA (see para [14] of Appendix A).
13 April 1995
Petty Patent Application No. 16473/95 was filed by Infra Red. (Note para [15] of Appendix A).
21 April 1995
Patent Attorneys Spruson & Ferguson acting for Cortesi write to Infra Red, with cc. to Griffith Hack & Co, concerning the issue of proprietorship of applications PCT/AU94/00208 and 16473/95, asserting the absence of assignment from Cortesi as inventor to any other party and proposing terms to settle the matter. (See Addendum M and para [17] of Appendix A.)
Other submissions or elaboration of relevant events
I have briefly referred to Addendum A dated 20 December 1993 above. Other relevant paragraphs of that document written by Cortesi to Roberts are as follows:
I shall re-locate to Sydney, Australia and dedicate all my knowledge and energy to this project on a full time basis, for at least eight months per year. ...
I shall receive no salary, but would be entitled to a comisin/royalty (sic) on all sales of micronizers in the area. ...
I shall make available to you or your companies, all relevant information to successfully manufacture all micronizers. Any new developments and information will be made available to you on a regular basis.
You will receive the sole rights to sell any of my micronizers anywhere in the world, except Africa.
You must adhere to our already agreed upon secrecy agreement.
Any patent, if any, must be in my name, and remains my property.
Mr Cortesi said that attempts to otherwise formalise the agreement between himself and Roberts or his companies in Australia was never concluded prior to him terminating his relationship with the companies and persons involved. Addendum B is a letter to GRA from their solicitors dated 24 January 1994 proposing a revised version of the “Agreement with Mr Cortesi”. The text of the letter indicates that the draft is “on the basis that Mr Cortesi will be a consultant to the company and not an employee.” In a memo to GRA dated 20 March 1995 Cortesi refers to the issue of non finalised formal agreement between the parties (per Document Q).
Regarding the PCT application and its filing and further to matters mentioned under 21 February 1994, at the hearing Cortesi said that he did not have a worry about the application being filed in the name of Infra Red. He said this was because his agreement with Roberts was that he (Cortesi) would be offered a majority shareholding in that company, and with the patent being held by the company he would thus retain a major interest in the patent, and on that basis he had no concern that the filing be in the name of Infra Red. He said his shareholding as promised did not materialise. Further, concerning this agreement, as I understood his submissions, he said that at the time the company Infra Red was still to be formed and on formation he would be offered a majority shareholding with the company holding the patent rights. He also said that he had not effected any assignment to Infra Red, and as he was never an employee of GRA or Infra Red, the invention the subject of patent protection did not fall within an employee/employer relationship (see also para [13] of Appendix A).
At the hearing Cortesi said that everything in the PCT application was matter either contained in documentation provided by himself to Roberts and Roberts’ companies in Australia as part of their original agreement or additional features included from his further development of the micronizers in South Africa prior to settling in Australia. At the hearing I drew attention to the absence in the material before me of any drawings which originated from Cortesi and which were given to Roberts and I asked whether relevant drawings could be provided. Document O provided after the hearing by Cortesi includes 3 sheets of drawings - sheet O2 bears references to “D D C ENTERPRISES”, Cortesi’s South African company, “JOB Micronizer Model 150”, and is dated “10/10/92”. It shows a side view of the Assembly - Fig 1 of patent application PL 8418 and Fig 1 of patent application PCT/AU94/00208 show a drawing of a machine with many features common to the representation on sheet O2. Sheet O3 is identified as a drawing of a “Micronizer 600 Control Panel” dated “21.6.93”. Sheet O1 shows details of a water cooled element holder for a “Mealiemeal Dryer” and is dated “15/09/92”. From Addendum E Cortesi sent drawings to Roberts in Australia on 19 October 1992.
DECISION
I am mindful in deciding this matter that the only evidence and submissions before me are those from the s.32 applicant Mr Cortesi. I can only speculate why no other party who may have an interest in the matter or the applications, including the applicant of record, has not sought to be heard. Cortesi’s evidence suggests Infra Red went into liquidation (in September 1995) and the Patent Office records indicate that GRA sought to record an assignment for the petty patent application in November 1995.
In deciding a matter such as this the Commissioner is entitled to act on any material which is "logically probative" of the issues under decision. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see eg. Dunlop Holdings Ltd's Application 1979 RPC 523). In the present matter I must consider the evidence and decide the issues mindful of these general parameters.
In the terms of s.32, Mr Cortesi is clearly an “interested party” and thus entitled to seek a determination of the person who may proceed with the application in accordance with that section. Given the nature of the dispute, what I need to determine is the eligible person(s) (ie. who is entitled to be granted a patent) in relation to an invention disclosed in the specification of applications 65606/94 and 16473/95. In considering that matter I believe the following issues need to be assessed:
1.Was Cortesi the sole inventor of the invention disclosed in the specification of application 65606/94 and 16473/95?
2. Is Infra Red entitled to the invention either solely or jointly?
3. Is Cortesi entitled to the invention either solely or jointly?
Inventor
In my view there is compelling evidence to conclude that Cortesi is the inventor of the invention disclosed in the patent applications. The original filing PCT/AU94/00208 (AU 65606/94) identified Dirk Cortesi as inventor. It is clear from Addendum K that the patent attorneys handling the application understood that Cortesi was the inventor. Furthermore figure 1 of provisional application PL 8418 and the other applications show a side elevation of a machine with many common features with that shown in Document O at sheet O2 (dated October 1992). The commonality is too strong to suggest other than that sheet O2 itself or other drawings which originated from Cortesi were used to prepare the drawings for the provisional application, and I note that Cortesi submitted he assisted in preparing the PCT application for filing. There is no evidence before me which suggests that Cortesi is not the true inventor of the thermal processor the subject of these applications or that any other person may qualify as a joint inventor in respect of the invention.
I therefore find that Dirk Domenico Cortesi is the sole inventor of the rotary thermal processor being the invention disclosed in the specification of applications 65606/94 and 16473/95, and for that matter disclosed in the specification of application PL 8418.
Entitlement
Given my finding of Cortesi’s status as inventor, entitlement to patent rights to the invention reside with him unless he has assigned his interest, or title otherwise devolves to a party such as through a contractual or employment relationship.
Although at filing applications 65606/94 and 16473/95 indicated Infra Red Technologies Pty Ltd as applicant and nominated person, little documentation has been provided by that applicant to establish its entitlement to the invention. No notice of entitlement has ever been filed for application 65606/94. The absence of a notice of entitlement was raised as an objection to petty patent application 16473/95 in a notification by the Commissioner dated 1 June 1995. In response a request to transfer interest from Infra Red to GRA was filed but sufficient evidence of that transfer has never been filed. A notice of entitlement by GRA was also filed with the response mentioned which stated that Infra Red “had engaged the actual inventor to conceive and develop the said invention” and thus the nominated person would be entitled to have assigned to it a patent granted for the invention to the actual inventor.
The evidence provided by Cortesi indicates that he always considered the agreement and association with Roberts and Roberts’ companies in Australia as involving a marketing and manufacturing association involving his design of micronizers, and that he would be personally involved as a consultant for their marketing and manufacturing efforts. His evidence is that he was never an employee of Infra Red or GRA, and that the draft agreement supplied to GRA by its solicitors (Addendum B) was drafted on that basis. In the face of this evidence the applicant had an opportunity to provide proof of its stated entitlement by employee/employer relationship. I accept the evidence of Cortesi and on balance, despite the statement on the notice of entitlement provided on 30 November 1995 for the petty patent application, conclude that rights to the invention the subject of the applications did not flow from Cortesi to Infra Red or GRA by virtue of an employee/employer or other contractual relationship.
From the submissions of Cortesi at the hearing it seems that at the time of filing the PCT application, Cortesi allowed, or did not object to, the filing being in the name of Infra Red given his understanding that an earlier agreement reached by him with Roberts and others (which would permit him to acquire a majority shareholding in Infra Red), would be given effect. There is no documentary evidence of this particular agreement nor of any documentation from Cortesi either approving the PCT application filing in the name of Infra Red or otherwise formally assigning the invention to Infra Red. I note from evidence supplied, for example Addendum A, that Cortesi insisted at that time (December 1993) that any patents remain his property. Also, the attorney’s letter of 17 October 1994 (Addendum K) draws attention to the need for an assignment from Cortesi. Document P1, a memo dated 3 March 1995 from Cortesi to GRA and Infra Red concerning their association, briefly states “The matter of proprietorship of the patent and intellectual property, has always been clear in my mind, .... My viewpoint has never changed, and that is ‘The patent remains my property’.”
The full extent of what transpired between Cortesi and other parties leading to the filing of the PCT application is not apparent from the material before me, including Cortesi’s submissions. Cortesi said he provided assistance in preparing the application for filing but also said there were time pressures given the imminent due filing date if priority was to be preserved (from PL 8418) - these time pressures led to informal drawings being filed. It is not clear whether time pressures played any part in negotiating or deciding in what name the application should be filed. According to Cortesi, because of his understanding of an earlier agreement, he did not have a worry about the application being filed in the name of Infra Red. Fulfilment of that agreement would have resulted in Cortesi having a majority shareholding in Infra Red and Infra Red having entitlement to the patent rights from the PCT filing. To me it appears that an assignment from Cortesi to Infra Red was implied subject to Cortesi receiving consideration by way of a shareholding in Infra Red - according to Cortesi that shareholding did not materialise. However, if the company Infra Red did not exist as an entity at the time of the PCT filing, and I have nothing before me to confirm when it was formed, I do not see how any assignment from Cortesi to Infra Red existed at that time. It is not apparent from material before me who was responsible for and paid the costs associated with the preparation and filing of the PCT application.
There is evidence before me which indicates, firstly, that Cortesi has always been protective of his technical and business knowhow and has insisted that patent rights to his inventions remain with him and, secondly, that at least from the time of filing the PCT application through to March 1995, when Cortesi terminated his relationship with Roberts and his associated companies, the entitlement of Infra Red to the patent rights was an issue of concern raised not only by Cortesi “at least 10 times over the last eighteen months” (Document P1) but also by Infra Red’s patent attorneys. Given Cortesi’s stated insistence, before he knew of the filing of application PL 8418 and before any consideration of the filing of the PCT application, that he would retain any patent rights for his inventions, I feel that it was unlikely that Cortesi would have allowed the PCT filing in the name of Infra Red (if he had a say in it) without regard to his interest in the invention and thus for good reason. In my view, from the material before me, there is a high probability that the circumstances leading to the filing of the PCT application in Infra Red’s name were as Cortesi has explained. In addition, the material before me also indicates that any assignment from Cortesi regarding the patent rights which may have arisen in favour of Infra Red was not completed due to non-fulfilment of an “agreement” and consideration due to Cortesi, the effect of which would be that those rights remain with Cortesi. Furthermore, if at the time of filing Infra Red did not exist, then Cortesi, in the absence of any formal assignment to any other party at the time or since, would be entitled to the patent rights to the invention.
I have already concluded that no rights accrued to Infra Red by virtue of an employee/employer or other contractual relationship, which from the documentation before me is the only basis on which Infra Red claimed entitlement. From the material before me, I conclude that there is a high probability that no assignment of Cortesi’s patent rights to the inventions disclosed in applications 65606/94 and 16473/95 has been effected to Infra Red or to any other party. Accordingly,
I find that on the balance of probabilities Infra Red Technologies Pty Ltd is not an eligible person in relation to the rotary thermal processor being the invention disclosed in the specification of applications 65606/94 and 16473/95 and that Dirk Domenico Cortesi is the sole eligible person in relation to the invention as so disclosed.
Determination under s.32
Section 32 allows the Commissioner to “make any determinations he thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.” I need to consider whether it is appropriate to make any determination for the patent applications of the present s.32 request.
Patent application 65606/94 lapsed on 17 May 1996 under s.142(2) when the applicant of record failed to request examination of the application following a direction by the Commissioner. Additionally, petty patent application 16473/95 lapsed on 21 August 1996 under s.142(4) when the applicant of record failed to respond to a notification by the Commissioner under s.50(2). Mr Cortesi filed his s.32 request on 15 May 1996. There are no express provisions in the Act or Regulations which otherwise stay these lapsings in the circumstances of the present s.32 request (see reg 13.4).
At the hearing I foreshadowed the possibility of not being able to make a determination given that the applications had lapsed. After further consideration of the issues, in the circumstances, as the applications are in a lapsed state, I do not consider that a determination can now be made under s.32 in regard to enabling the applications “to proceed”. In this regard I do not believe that a determination under s.32 can include matters which would restore an application so that it can otherwise proceed with, for example, different applicants or nominated persons - such restoration would seem to conflict with the express provisions of s.223 which enable restoration of a lapsed application under specific circumstances. Accordingly I do not consider it is appropriate, and I do not propose to make, any determination under s.32 regarding patent applications 65606/94 and 16473/95 whilst they remain in a lapsed state.
It should be noted however that s.36 allows a person to seek a declaration from the Commissioner regarding entitlement to an invention disclosed in a patent application which has not been accepted and whether or not the application lapses or is withdrawn. Thus if the referenced applications were subject to a request within the terms of s.36 on the same basis as the present s.32 request, given my findings above on the facts, a declaration regarding entitlement could be given. It is open to Mr Cortesi to advance his claim through that provision. If s.36 requests are so filed, under reg 22.24 the Commissioner will determine how the matters will be progressed. Furthermore I do not consider that it is appropriate for the Commissioner to merely treat the present s.32 request in the alternative as a s.36 request.
CONCLUSION
To summarise,
I have found that Dirk Domenico Cortesi is the sole inventor of the rotary thermal processor being the invention disclosed in the specification of applications 65606/94 and 16473/95, and for that matter disclosed in the specification of application PL 8418.
I have found that on the balance of probabilities Infra Red Technologies Pty Ltd is not an eligible person in relation to the rotary thermal processor being the invention disclosed in the specification of applications 65606/94 and 16473/95 and that Dirk Domenico Cortesi is the sole eligible person in relation to the invention as so disclosed.
As applications 65606/94 and 16473/95 have both lapsed I have considered that it is not appropriate, and I do not propose to make, any determination under s.32 in regard to enabling the applications to proceed whilst they remain in a lapsed state. It is open to Mr Cortesi to advance his claim through the provisions of s.36.
Pursuant to s.224 of the Patents Act 1990, application may be made to the Administrative Appeals Tribunal for review of a decision of the Commissioner under section 32.
Trevor Bruhn
Delegate of the Commissioner of Patents
Patent attorneys for the patent applicant : Griffith Hack, Perth
Address for service of Mr Cortesi : P O Box 318, Mosman, NSW 2088
APPENDIX A
Statutory Declaration.
My name is Dirk Domenico Cortesi. I am resident at 6/54 Milson Road, Cremorne Point and was formerly a resident of South Africa. While in South Africa, my company manufactured infra-red roasting machines, the subject of patents 65606/94 and divisional 16473/95.
Micronizers is the internationally acknowledged word used to describe the subject machine of the patents. [1]
There are three people mentioned in the documents.
George Roberts is the MD of GRA (Australian) and Dryden (South African) and Director of IRT (Australian).
Adrian Dommisse is the MD of IRT (Australian) and Director of GRA (Australian).
Gordon Slater is the Director of Dryden (South African). [2]
Mr. G. Roberts and Mr.A. Dommisse, directors of GRA Australia PTY. Ltd. and Infra Red Technologies Pty. Ltd. ( IRT ) visited my factory in South Africa several times and Mr. Dommisse and a director of their companies in South Africa signed confidentiality agreements. I made my first visit to Australia commencing on the 8th July, 1993. I subsequently came as a migrant on the basis of the agreement in A and subsequently was a consultant to GRA Australia Pty Ltd and Infra Red Technologies Pty Ltd - see docs A and B. In connection with remuneration A shows the only agreed to relationship document between myself and George Roberts who is acting on behalf of GRA and IRT. [3]
A, page 2 specifically says that, "You must agree to our already agreed upon secrecy agreement." The letter is written by me and you is George Roberts.
See the AGREEMENT OF CONFIDENTIALITY AND RESTRAINT C and D (first and last pages only shown for the purpose of showing the dates) signed by Gordon Slater and Adrian Dommisse, director of GRA and MD of IRT - the date of the secrecy agreements is 28th October 1992. By lodging a patent application based on information flowing from those agreements with publication to follow, George Roberts had effectively agreed to a provision which had already been broken. [4]
A , page 2 specifically says, "Any patent, if any, must be in my name and remains my property.” My refers to Dirk Cortesi. Even though the document containing this clause was agreed to verbally, the patent application had already been made some months previously without informing me. No attempt to inform me at that time was made. For the clause to take effect, GRA or IRT should have assigned ownership of the patent to me. Instead, they tried to insert clauses in later draft agreements which would have taken away my patent rights. [5]
On the 21st February [1994] I received a fax (document J1) from George Roberts relating to the patent - see note signed by George across the top of the fax - “Dirk - for urgent comment - George". This was based on the same document J1 sent to George Roberts four weeks earlier on the 19th January. If an urgent reply was needed, why the delay? My reply J2 on the 23rd February, 1994 attached to J1 was, “Could I have a copy of such application before I comment. Regards Dirk.” Document for some reason was sent again from Griffith Hack to George Roberts on the 30th March and then to me again on the 5th April, 1994. The possible explanation was that time was running out. [6]
This was the way I was officially informed for the first time that GRA (sic) had lodged a patent application 65606/94 (sic) on the 21st April, 1993 without my knowledge or approval or agreement. I am listed as the inventor. I gave them the drawings for the purpose of manufacturing but not patenting. This was prior to my having a personal (non-business) relationship with GRA or Infra Red Technologies Pty. Ltd, in any way shape or form. It showed my original drawings that were the basis of the drawings lodged in the patents and obviously copied from them. [7]
B page 1 last para, second line says, “We have drafted the Agreement on the basis that Mr. Cortesi will be a consultant to the company and NOT AN EMPLOYEE.” That agreement from GRA's own solicitors was not signed by me nor was any other but it clearly shows that the intention of GRA was that I, D.D. Cortesi should not be an employee. [8]
There is no way that GRA could claim that my invention was made while in their employ prior to coming to Australia. I had my own business in South Africa and only had a business relationship with the companies of which George Roberts, Gordon Slater and Adrian Dommisse were directors. [9]
E,F,G, H and I all show that drawings were passed to George Roberts PRIOR to my arrival in Australia and therefore prior to any consultancy relationship with GRA or IRT. The drawing attached to the patent application PCT AU/00208 was a drawing J, supplied in South Africa. [10]
Please note the last two lines of I from George Roberts to me.
“Please advise me if you wish me to register a provisional patent.”
The date of I was the 13th October, 1993. The provisional patent had already been lodged SIX MONTHS previously. [11]
K page 2, a letter dated 17th October, 1994 from Mr. G. Roberts own patent attorney states,
“.... it is essential that Dirk formally assign his rights to the invention to INFRA RED ...”. In other words, well into the working relationship with Dirk Cortesi, George Robert's own patent attorney is telling him that he needs to have an assignment. There was no change in the relationship with GRA or IRT from October 1994 until my departure on March 20, 1995. No assignment has ever been made. Every letter to IRT stated that I would not transfer my patent rights. To overcome this problem of my not signing an assignment, the petty patent was lodged after my departure and without my knowledge in the hope that what could not be obtained by assignment might be obtained in some other way. [12]
During the whole period of my relationship with GRA and IRT in Australia there was much correspondence and discussion to establish an agreement about my arrangements with GRA and IRT regarding the patent but no agreement was ever reached and I never transferred any rights to GRA or IRT regarding the patent. In all correspondence I never once agreed to transfer my patent rights to GRA or IRT. I never worked for GRA or IRT and therefore they cannot claim an employer/employer (sic) relationship. I only worked as an independent consultant. [13]
Owing to the failure of GRA to sign or implement any agreements and through other problems, I terminated the relationship on March 20, 1995 in which I had been acting as a consultant. [14]
After my departure from Infra Red Technologies Pty Limited, Infra Red Technologies on the 13th April, 1995 filed the petty patent 16473/95 as a divisional from the original. This was done without my knowledge or approval. I understand that this petty patent was never listed as an asset of IRT when it went into liquidation. How a non-existent asset can be transferred to another party requires some imagination. As a divisional, it must contain fewer claims than the original or the same claims as the original, and can therefore only take its existence from the original claim and its status is clearly dependent on the original patent. Clearly I was not an employee of GRA Pty Ltd in April, 1993 and therefore it is absurd to claim that I, as an employee (which I was not) of Infra Red Technologies Pty Ltd at a later date, could be seen to have added novelty to a patent claim when as a divisional, there was something less than in the original. [15]
Whatever my relationship with Infra Red Technologies in 1994, there is no way that my relationship at that time can be seen to have produced anything novel because by definition it already existed in the form of patent application 65606/94 prior to the beginning of the relationship. The total subject matter of both patents can be seen to have existed prior to my coming to Australia. Both applications were lodged without my knowledge or approval. The letter from the patent attorneys Griffith Hack show that Mr. G. Roberts was informed very early of the need to get my approval and assignment of the patent. This was never done. [16]
M is a letter from Mr. F.P. Old, Patent Attorney with Spruson & Ferguson to IRT on the 21st April, 1995. Nothing has happened to alter those circumstances. [17][
CONCLUSION
The conclusion is that the subject matter of the patent applications was made prior to my arrival in Australia and any relationship being formed with GRA Australia Pty Ltd or Infra Red Technologies Pty Ltd. Therefore the subject matter of the patents cannot be seen to be the result of employment with those companies. There being no employment with those companies, they cannot claim ownership of my intellectual property. [18]
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