John McDonald v John Edward Vines - [2004] APO 33

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 2002951831 in the name of JOHN EDWARD VINES

Title: Underpants for the Treatment of Pelvic Floor Muscles and/or Bladder.

Action: Request under Section 36(1) of the Patents Act by JOHN MCDONALD for a declaration regarding entitlement to an invention disclosed.

Decision: Issued 30 November 2004.
Abstract

The subject matter broadly related to underpants which either electrically or magnetically stimulated various areas of the body to treat incontinence.
An invention allegedly obtained related to replacing the electrical stimulation electrodes with magnets.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
Of the evidence provided by Vines on his research into magnetic therapy (which was mostly in the form of print outs of Internet pages), one document did not appear genuine. Furthermore, Vines was asserting that other Internet pages were the same as those he viewed in his period of research from 1999 to May 2002, even though they were printed well after. However, it is well known that Internet pages may be changed, and there may be little correlation between a page a viewed today and a page as it existed several years ago. Hence, Vines’ evidence was given little weight. Nevertheless, from further evidence given by Peter O’Neill, the balance of probabilities was that McDonald did not suggest replacing electrodes with magnets.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
McDonald was not successful. Thus costs were awarded against McDonald.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 2002951831 by JOHN EDWARD VINES and a request under Section 36(1) of the Patents Act by JOHN MCDONALD for a declaration regarding entitlement to an invention disclosed.

BACKGROUND

John Edward Vines (“Vines”) filed provisional application 2002951831 on 7 October 2002. The patent request lists Vines as the sole inventor. On 25 March 2003 John McDonald (“McDonald”) filed a request under Section 32 of the Act for determination of a dispute between applicants. After indicating the he would defend his entitlement, Vines withdrew the application on 22 May 2003. Since a Section 32 action cannot be taken on a withdrawn application, the Section 32 action was concluded. In response, McDonald filed a request under Section 36 on 21 July 2003.
Both parties were given an opportunity to file evidence supporting their respective cases. Once the supporting evidence was filed, the evidence was exchanged and the parties each filed evidence in response.
The hearing was held in Canberra on 19 August 2004. McDonald (the Section 36 requestor) was represented by Michael Angliss, patent attorney of Cullen & Co, Brisbane, who appeared by phone. McDonald was also present via phone with Mr Angliss. Vines made no appearance, but written submissions were supplied by his attorneys, Clarke and Kann, Brisbane.
THE EVIDENCE
The supporting evidence for the Section 36 requestor consists of a statutory declaration by the Section 36 requestor himself (John McDonald), including 8 exhibits.
The applicant’s (Vines) evidence in support of his claim…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2004] APO 33
Decision Date: 30 November 2004

CaseChat Overview and Summary

John McDonald sought a declaration that he was the inventor of an invention related to underpants that either electrically or magnetically stimulated various areas of the body to treat incontinence. The invention in question related to replacing the electrical stimulation electrodes with magnets. The application was heard by a delegate of the Commissioner of Patents. The delegate considered whether the applicant, John Edward Vines, was the true and correct inventor of the invention in question, or whether McDonald had contributed to the invention in a way that entitled him to be named as an inventor. The evidence showed that Vines and McDonald had met on a number of occasions, and that McDonald had suggested the use of magnets to consolidate the stimulation of acupuncture points. However, the delegate found that the suggestion to use magnets to treat incontinence did not come from McDonald, but rather that McDonald was sought out to confirm that magnets could be used. The delegate found that Vines and McDonald had met on a number of occasions and that McDonald had suggested the use of magnets to consolidate the stimulation of acupuncture points. However, the delegate found that Vines had conducted research into magnetic therapy, and had found documents describing the use of magnets to treat incontinence. The evidence of Vines on this point was given little weight because it was not clear that the documents had been viewed during the period of research. On the other hand, the evidence of Peter O’Neill supported Vines’ claim. The evidence showed that before they met McDonald, Vines and O’Neill were investigating the possibility of treating incontinence with magnets. The overall impression was that it was not McDonald who was responsible for the invention simpliciter of using magnets to treat incontinence, but rather that McDonald was sought out to confirm that magnets could be used. McDonald was not successful in his application and costs were awarded against him.

Orders