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
- AGLC
- Jim D Stephenson & Payl C Donner v Dispute between Parties [1992] APO 32
- Case
- [1992] APO 32
- Decision Date
CaseChat Overview and Summary
The central legal issue was whether the patent application should proceed solely in Mr. Stephenson's name, given Mr. Donner's failure to assert his entitlement as a co-inventor. The court examined the submissions from Mr. Donner, who provided his perspective on the relationship with Mr. Stephenson but did not file the required notice of entitlement. The court concluded that Mr. Donner's submissions did not alter the fact that he did not fulfill the condition set for continuing the application in joint names.
The court found that Mr. Donner had the opportunity to assert his rights as a co-inventor by submitting the notice of entitlement, but he did not do so within the specified timeframe. Consequently, the court upheld the previous decision to direct that the application proceed solely in Mr. Stephenson's name. The court saw no reason to retract the earlier decision, as there was no impediment to granting the patent, and Mr. Donner's failure to act meant that the application would proceed without him.
The final order of the court was that the patent application No. 82395/87 should proceed in the name of Jim D Stephenson only. Mr. Donner's submissions did not change this outcome, and his failure to provide the notice of entitlement within the set period resulted in his exclusion from the patent application.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
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