JIM D STEPHENSON & PAUL C DONNER

[1992] APO 14

Official notice

decision of a delegate of the commissioner of patents

Application        :    No. 82395/87 in the name of Jim D  Stephenson and Paul C Donner.

Title:    Nursing Bottle for Infants

Action:    Section 32; dispute between parties

Decision:    Issued            .  Joint applicant directed to provide notice of entitlement, otherwise application to proceed in single name only

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 82395/87 by Jim D Stephenson and Paul C Donner: proceedings under Section 32.

INTRODUCTION

This matter relates to a dispute between joint applicants for a patent, a request for the Commissioner's determination under Section 32 that the application proceed in one name, and that the Commissioner's decision be made on the written record.

background

On 28 October 1987 Jim D Stephenson (Stephenson) and Paul C Donner (Donner) filed an application in the United States under the provisions of the Patent Cooperation Treaty. This application proceeded in Australia as application number 82395/87,in the names of Stephenson and Donner. Normal examination was requested, and the following sequence of events took place on the dates known.

26 June 1990       The examiner's first report issued containing, inter alia, an objection that the application was not supported by a declaration establishing the applicants' right to apply.

20 August 1990     A declaration was filed.

21 September 1990   The examiner further reported that the declaration was made by Stephenson only, and did not support Donner as joint applicant.

2 November 1990     The Australian Attorney provided advice, from Stephenson's United States Attorney, of a dispute between Stephenson and Donner, as a result of which Donner was refusing to sign a declaration for Australia, and requested that the application be allowed to proceed in joint names with the declaration previously filed.

8 January 1991     The attorney was advised that, either the declaration must be signed by both applicants, or a formal request must be made for the Commissioner to determine the manner in which the application should proceed.

17 April 1991      A statutory declaration by Stephenson was filed, with a request that the application proceed in that name only.

Before the date of the next official action the Patents Act 1990 came into force. The provisions relevant to this decision are similar in each Act, and I consider that this decision is made under the 1990 Act.

18 June 1991 The attorney was advised that the material filed on 17 April 1991 did not satisfy the requirements of the Patents Act 1990.

25 June 1991       The examiner further reported that the only outstanding matter is the declaration.

4 July 1991

to

19 November 1991    During this period a Section 32 request was filed by Stephenson, together with evidence of the service of a copy of the request on Donner. The request was advertised and both applicants were offered the opportunity to be heard. Both advised that they would rely on written submissions.

Submissions

A letter dated 17 February 1992 from Davies Collison Cave, the attorneys of record, asks me to take into account documentation previously filed together with a Statutory Declaration by Anthony J. Cowle. These collective submissions are:

#1A copy of a letter from Stephenson's United States Attorney dated 17 October 1990 referring to Donner's refusal to cooperate in proceeding with the application in Australia, and also stating that Stephenson is prepared to reserve Donner's rights in Australia.

#2Statutory declaration by Stephenson dated 19 February 1991 outlining differences between himself and Donner and describing difficulties in contacting Donner.

#3Form 21 request by Stephenson for the Commissioner's determination under S.32, dated 3 July 1991, with essentially the same content as the declaration #2 above.

#4Statutory declaration by Richard S. Koppel as Stephenson's attorney in the United States. Koppel declares that Stephenson has solely instructed, and paid for, prosecution of the application. Koppel also declares his belief in the truth of the statements in the Form 21 request dated 3 July 1991, and further that he has initiated service on Donner by registered mail of a copy of the request as required by Reg. 3.6.

Attached to Koppel's declaration is a copy of a registered mail docket, apparently signed by Donner as addressee.

#5Statutory declaration by Anthony J Cowle, dated 20 February 1992, as attorney responsible for prosecuting the application in Australia.  The declaration recited extracts from the declarant's file on the application, much of which is in one or more of the other submissions.

The only communications received from Mr Donner have been:

(a)a letter dated 9 October 1991 acknowledging receipt of advice of the dispute, indicating a desire to be heard, and providing an address for service in Australia, and

(b)a letter dated 1 November 1991 indicating his intention to file a written submission in lieu of attending the hearing.

No written submission has been received.

Section 29(1) and Regulation 3.1(2)

Section 29(1)  A person may apply for a patent for an invention by filing, in accordance with the regulations, a patent request and such other documents as are prescribed.

Reg 3.1(2)For the purposes of subsection 29(1) of the Act, if a complete application is made, the following documents are required to be filed before acceptance:

(a)a notice by the applicant stating the entitlement of the nominated person to the grant of the patent.

I consider that this means in the present case, that a notice must be filed, made by or on behalf of Donner, which identifies Donner as joint inventor. In the absence of such a notice the application cannot be accepted.

There is such a notice made by Stephenson, and  Stephenson recognises in submissions that Donner is joint inventor, however I do not consider that this constitutes a notice, nor is it made by or on behalf of Donner.

I conclude that the application, otherwise in order for acceptance, cannot presently proceed.

Section 32 and Regulation 3.6

Section 32If 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.

Reg 3.6 (1)For the purposes of section 32 of the Act ("disputes between applicants etc."), a request must be in the approved form.

(2)A party making a request must serve a copy of that request on each other interested party as soon as practicable after the request is made.

(3)The Commissioner must publish a notice of the request in the Official Journal.

(4)If a party wishes to be heard by the Commissioner, the party must notify the Commissioner accordingly within 2 months of the publication of the notice.

(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.

The only submissions made in this matter were made by Stephenson, or on his behalf. Nothing has been made by Donner, although he has previously advised that a written submission would be made.

Consequently the only information before me concerning relations between Stephenson and Donner is that provided by Stephenson.

Is there a dispute? I consider that a dispute between the applicants can be inferred from the submissions made, and from this action, although the full nature of the dispute may not be known. Certainly Donner is unwilling to aid the further processing of this application, and I consider it immaterial whether this is itself the dispute, or merely the consequence of the dispute.

Therefore Section 32 is correctly invoked, and I am satisfied that the requirements of Reg 3.6 have been met. In particular there is evidence of the satisfaction of Reg. 3.6(2) in the form of a declaration by Stephenson's United States attorney, and a copy of a registered mail receipt evidently signed by Donner as addressee. According to this declaration Donner signed for a copy of Stephenson's Form 21 request, which includes Stephenson's view of events occurring between himself and Donner. This has not been disputed by Donner.

Decision

Before giving my decision and the reasons for it, I have noted that the normal 21 month time for acceptance was due to expire on 26 March 1992. In view of the ruling I propose to make, further time is necessary. Due to what appears to be the reluctance of Donner to co-operate, Subsection 223(2) is not appropriate, since Donner is an applicant. However I note that since the Office was first made aware of Donner's alleged refusal to sign a declaration, (on 2 November 1990), right up to the date set for hearing or the filing of written submissions, there have been instances where the Office might have acted with greater urgency. Accordingly under the provisions of Subsection 223(1) I extend the time for acceptance by three months to 26 June 1992.

In making this decision I am very conscious of the need to recognise the interests of both Stephenson and Donner as joint inventors and, presently, joint applicants. On the one hand it is not disputed that Stephenson has solely carried the burden of prosecuting the application, which however cannot proceed without a notice of entitlement from Donner. For whatever reason Donner has not been prepared to file this notice.

On the other hand it is not disputed that Donner has an interest in the invention as joint inventor, which may be extinguished if the application proceeds to grant in one name. In coming to a conclusion I have borne in mind the statement made by Koppel in #1 of the submissions:

"If necessary to obtain a patent, Mr Stephenson would be willing to reserve whatever rights are normally afforded a co-inventor in Australia to Mr Donner, so long as Mr Stephenson is free to exploit the patented technology in Australia without account to Mr Donner."

However I believe that this is essentially a matter for Stephenson and Donner to resolve between themselves, subject of course to Sections 16 and 17.

In all these circumstances I consider that a decision must be reached which, in fairness to Mr Stephenson, permits the application to proceed, while also allowing Mr Donner to retain his interest.

The preferred solution would be for the application to proceed in joint names, on the authority of Stephenson alone, but as I have indicated earlier this is precluded by Regulation 3.1(2). Therefore I have decided that Mr Donner should be afforded one last opportunity to provide appropriate authority to meet the requirements of Regulation 3.1(2). The precise form that this takes I leave to Mr Donner, however in deference to what I assume may be his relatively limited knowledge of Australian requirements, I have arranged for him to receive, with his notification of this decision, a prepared notice of entitlement, stating the relevant facts as I understand them to be. He has the option of simply signing that notice and returning it, or alternatively he can treat it as an example of the type of notice or authority required, and choose to provide the necessary documentation in some other way. I emphasise that the choice is his.

Accordingly, I direct that Mr Donner file a notice of entitlement within two months of the date of this decision, or at the expiry of this time (subject to any appeal), I will direct that the application proceed in the name of Jim D Stephenson only.

Gavin Brown
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Davies Collison Cave, Sydney

Davies Collison Cave
GPO Box 3876
SYDNEY NSW 2001

Re: Patent application No. 82395/87 in the name of JIM D.

STEPHENSON and PAUL C. DONNER

and

Proceedings under Section 32

Your ref:     272127

Gentlemen,

Please find attached a copy of the Decision of a Delegate of the Commissioner in the above matter.

Senior Clerk, Patents

Mr Paul C Donner
C/- Frank D Donner
34 Princess Street
FLEMINGTON  VIC 3131

Re: Patent Application No. 82395/87 in the name of JIM D. STEPHENSON

and PAUL C. DONNER

Dear Sir,

Please find enclosed a copy of the Decision of a Delegate of the Commissioner in the above matter.

You will note that the Delegate has allowed you a period of two months from the date of the Decision in which  to provide this office with an appropriate notice of entitlement confirming you as a joint inventor and applicant with Jim D. Stephenson. The simplest way for you to do this is to sign and return the attached notice of entitlement if you are satisfied that the statements therein are correct. However the Delegate has stressed that you are free to establish your joint entitlement by any other means within the provisions of Australian legislation.

The Delegate has indicated that if you fail to provide the necessary documentation within the stated time limits, he will direct that the application proceed in the name of Jim D. Stephenson alone.

Senior Clerk, Patents