Jim D Stephenson & Payl C Donner v Dispute between Parties

[1992] APO 32

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

Decision           :   Issued            .  Application to    proceed in the name of Jim D Stephenson                         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

In a decision on this matter dated 10 April 1992, I directed that Mr Donner file a notice of entitlement within two months from that date, failing which I would direct that the application proceed in the name of Jim D Stephenson only.

A response from Mr Donner was received on 4 June 1992.  This response, in the form of a letter and supporting documents, gives Mr Donner's version of the relationship between Mr Stephenson and himself, and concludes with the request that "you do not grant the Patent to Stephenson, even with my normal rights as
co-inventor reserved."  A notice of entitlement has not been supplied.

The submissions from Mr Donner would perhaps have been more appropriate to the original proceedings than now.  Even so they are not particularly helpful and I do not consider it necessary to refer them to Mr Stephenson for comment.  At best they confirm the existence of a dispute, although, not surprisingly, the respective parties see the circumstances differently.  More significantly Mr Donner confirms, rather than disputes, that he and Mr Stephenson were co-inventors.

Even if it were open to me to do so, I see no reason to retract my previous decision.  There is no reason not to grant a patent.  Mr Donner was given the option of having the application continue in joint names by the simple expedient of providing a notice of entitlement, a suitable form of which was provided for his signature.  He has not done so within the alloted time.  I 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