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 Since a Section 32 action cannot be taken on a withdrawn application, the Section 32 action was concluded.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 consists of single statutory declarations by John Edward Vines with 24 exhibits and Peter Michael O’Neill (“O’Neill”) with 3 exhibits.
Once the supporting evidence was exchanged, the parties filed evidence in response. McDonald’s evidence in response consisted of another declaration by himself, with a further 6 exhibits. Vines’ evidence in response was another declaration by himself, with 3 further exhibits, and a declaration by O’Neill.
I note at this point that Vines’ and O’Neill’s declarations were substantially identically worded.
I will refer to the evidence in more detail, where appropriate, in my decision.
APPLICABLE LAW
Section 36(1) of the Patents Act 1990 reads:
“(1)If:
(a)a patent application has been made … and
(b)an application for a declaration by the Commissioner is made by one or more persons (the Section 36 applicants) in accordance with the regulations; and
(c)the Commissioner is satisfied, in relation to an invention disclosed in the specification filed in relation to the application for the patent:
(i)that the nominated person is not an eligible person, but that the Section 36 applicants are eligible persons; or
(ii)that the nominated person is an eligible person, but that the Section 36 applicants are also eligible persons;
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention so disclosed.”
I note that Section 36 allows the Commissioner to make a declaration whether or not the patent application lapses or is withdrawn (sub-section 36(2)).
In deciding a matter such as this the Commissioner is entitled to act on any material which is "logically probative" of the issues under consideration. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holdings Ltd's Application, (1979) RPC 523). In so doing, the Commissioner may consider the evidentiary weight to be applied in light of any doubts he or she may have as to the credibility of the declarants and may come to a view of events on the balance of probabilities which is different to that alleged by either party. Furthermore it is clear from the authorities (see, for example, Stamp v W J Powell Pty Ltd, (1918) 24 CLR 339) that it is incumbent upon an opponent to prove its case. Thus in this case the onus is on the Section 36 applicant, Mr John McDonald, to provide clear evidence to justify a finding that the inventor of record, Mr John Edward Vines, is not the true and correct inventor of the invention which is the subject of this application.
In Row Weeder Pty Ltd v Nielsen and Others 39 IPR 400 the delegate considered a number of earlier decisions of the Commissioner and said the common theme from these was that a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the invention. This approach has been approved by the Administrative Appeals Tribunal in Upham v Commissioner of Patents and Another ([1998] AATA 852).
In arriving at this approach, the delegate in Row Weeder gained guidance from a number of decisions, including Harris v CSIRO 26 IPR 469:
"The Harris v CSIRO decision (sic) (26 IPR 469) decision puts forth a number of questions to consider. These are-: (1) what the invention(s) is/are of the person making the Section 36(1) request; (2) what the invention(s) disclosed in the specifications is/are of the person who made the patent application; and (3) whether one person has any rights in the invention of the other, and vice versa. The decision also suggests a more significant question of whether the invention would have occurred without a particular person's involvement."
Also potentially relevant in the present circumstances is the principle discussed in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32 where it was said:
"……it seems to be the case that a second person, engaged because of that person's expertise to construct a device based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device, and this holds true even if the second person suggests ways to aid its design or operation. However if the second person's suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device. In this context I think the result or advantage would need to be a material one so that the resulting device is overall an improved one not merely a preferred workable embodiment of the original concept."
The Invention
Vines’ invention relates to underpants for treating pelvic floor muscles and/or the bladder to minimise or eliminate incontinence. In one form, the underpants are fitted with electrodes to deliver transcutaneous electrical nerve stimulation (TENS) to muscles. In another embodiment, the electrodes are replaced by magnets. The underpants include “positioning means” which urge the electrodes/magnets against the wearer of the underpants. The electrodes are disclosed as being positioned at sites of the body such as a lumbar, sacral and/or perineal region of the wearer. The magnets are disclosed as being positioned on meridian lines and/or acupuncture points of the wearer. The lines and points used are the ones believed to aid the treatment of the condition in question when exposed to magnetic fields.
McDonald makes no claim to be the inventor of underpants that treat the pelvic floor muscles and/or bladder by electrode stimulation alone. What McDonald alleges has been obtained from him is:
(a)underpants that treat the pelvic floor muscles and/or bladder which incorporate the use of magnets alone or in combination with electrical stimulation; and
(b) [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
VERSIONS OF EVENTS
McDonald’s Version
McDonald’s version of events, taken primarily from his first declaration, is that “shortly before 29 August 2002” he met with Vines and O’Neill to discuss his “possible involvement” in the development of the IncontElim underpants.
McDonald says that the concept of Vines’ underpants was to treat incontinence, particularly in females, by electrical stimulation with electrodes of the pudendal nerve and perineal tissues, especially the pelvic floor muscles. He says that Vines and O’Neill wanted to know, based upon his experience (which is extensive), which acupuncture sites should be stimulated to get the desired effect. McDonald identified various sites. Specifically McDonald identified the second sacral foremen as the primary site to be stimulated.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
McDonald also states that during the discussions (which may or may not have been at the same time) he suggested using magnets “along with the electrodes” as this would consolidate the stimulation of the acupuncture points when the electrodes were not being used.
On 11 March 2003 (with apparently no other communication between times), McDonald received a draft provisional patent application for an invention entitled “System, Method and Article for the Treatment of Conditions in the Pelvic Region”. He was invited to comment. He met with Vines and O’Neill on 12 March 2003 and discussed, among other things, his involvement in the patent application he had been given. At this meeting he was informed that Fisher Adams Kelly, the patent attorneys for Vines and O’Neill, had advised them that his (McDonald’s) contribution was not an inventive one. McDonald objected to this.
Subsequently, he received a letter from O’Neill in which it was stated (inter alia):
“Following our discussion on [12 March 2003], we have advised Fisher, Adams Kelly that we want you to be included and they have agreed that, based on the information we have provided, you do qualify and that your name will be included in the patent application we are filing for the Incontelim system.”
On 17 March 2003 McDonald, Vines and O’Neill met again and McDonald was given a partially executed Deed of Assignment in which McDonald assigned his rights to Biomed Holdings Pty Ltd (the company set up for the IncontElim system) for an invention entitled “System, Method and Article for the Treatment of Conditions in the Pelvic Region”.
On 18 March 2003 McDonald received an email from O’Neill. This email states:
“we have had further discussions with our Patent Attorneys and intend lodging our application this week without your name (or John Vines name) on the application. Providing we can reach a satisfactory arrangement with you regarding your contribution, we will add your name to the patent prior to the final [patent application being lodged within the next 12 months. Please understand that we have had to provide certain information to try to convince Fisher Adams Kelly (Patent Attorneys) to add your name to our patent application, at this time, and this matter is still subject to their final decision regarding your inclusion.”
At some point during the meeting of either 12 or 17 March 2003, O’Neill gave McDonald various documents. One of those documents was apparently a letter from Fisher Adams Kelly to Vines dated 25 October 2002 discussing the filing of the current provisional patent application (2002951831). (This appears to be the first McDonald knew of this filing.) He subsequently wrote a lengthy email in which he pointed out his contribution and asked to be included on the current provisional.
Vines’ Version
Vines’ version (and, to a certain extent, O’Neill’s, since their declarations are almost the same) is that, having worked in nursing homes, he was aware of problems in treating the elderly for incontinence. He wanted to invent a better method of treatment. He conducted research from 1999 to May 2002 and found a number of alternative devices and methods for the treatment of incontinence. These alternatives included:
(a)magnetic therapy
(b)magnets stimulating acupuncture points
(c)electrical stimulation of acupuncture points
(d)electromagnetic therapy
Vines was particularly interested in a product called “WeeStopper”. This was used to treat incontinence using pulsed electrical stimulation to the sacrum and perineum in a manner which strengthened the pelvic muscles. Vines considered the “WeeStopper” had poor patient compliance because it required the patient to attach electrodes to the perineum and/or inter-vaginally. This required privacy and a static location. Attachment was, sticky, time consuming, and required shaving of the contact area. When he (Vines) approached O’Neill in March 2002 his concept at that point was to stimulate the sacrum and perineum with electrical stimulation (as was known) via appropriately positioned electrodes in a pair of pants.
In April 2002 Vines contacted an American company, Axlegaad, which supplied adhesive patches. The intention was to fix the electrodes to the underpants with adhesive. Other methods, such as press studs or pockets were also contemplated. To improve the problems with patient compliance, Vines designed an improved electrode holder to overcome problems. “In or about May 2002” Vines and O’Neill approached a design company OMI to produce drawings of his underpants and electrodes holders.
On 30 May 2002 Vines and O’Neill met with Mark Horsbrough and Andrew Cale of Fisher Adams Kelly to draw up a provisional patent application for Vines’ “ideas as they were at that point”.
Vines also states that, during his research, he had become interested in using the stimulation of acupuncture points to treat incontinence. His “difficulties in getting the design right using “WeeStopper” in early 2002” led him to consider using magnets. He also came to the conclusion that his modified electrode holder would only marginally improve patient compliance.
In early June 2002 he discussed with O’Neill the use of electromagnetic fields to treat urinary incontinence. His research had revealed a device called the “Neotonus Chair” which applied electromagnetic fields to a (seated) patient. Vines became “very interested” in researching more about static magnets and their therapeutic effect on incontinence.
In “early June 2002”, Vines indicated to O’Neill that he thought [PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]. To this end they met with McDonald “at 3pm on 27 June 2002”.
At this meeting, Vines and O’Neill asked McDonald to sign an confidentiality agreement (which he agreed to), they said they were interested in having him as a director on the board of the company (which he said he would consider), they explained the “WeeStopper” and asked McDonald if incontinence could be treated by stimulation of acupuncture points (which he said could be done).
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
On or about 4 July 2002 Vines and O’Neill met with McDonald again. At this meeting, Vines indicated that he thought magnets were a good method to stimulate the acupuncture points, and he had medical papers backing this up. Vines says that McDonald “was excited” by this and agreed that magnets would be an effective treatment method, as it would allow patients to use magnets outside his practice (in which he used heated needles). Further discussions on methods, magnets and acupuncture points also occurred. Vines stats that he and O’Neill were both of the understanding that McDonald was providing technical information and nothing else. Vines also met with McDonald around 4 August 2002 for further discussion on acupuncture points.
On 9 July 2002 Vines and O’Neill had a telephone conference with Andrew Cale of Fisher Adams Kelly and asked him to include the use of magnets to stimulate acupuncture points in the provisional patent specification. They received a draft specification on or about 15 July 2002 which referred to magnets attached to the underpants so that the magnets lay adjacent meridian lines and/or acupuncture points.
From June 2002 to September 2002, Vines and O’Neill explored the possibilities of using electrical stimulation. However, they came to the conclusion that permanent magnets in specially designed pants were the best commercial option and they concentrated on this approach.
Another draft specification was prepared on 1 October 2002, and was filed on 7 October 2002.
DECISION
Meetings
While it is common ground in the evidence that Vines and O’Neill did, at some point in time, visit McDonald, the number of meetings and their actual dates are subject to some confusion. Vines (and O’Neill) states in his first declaration that the date of this meeting was 27 June 2002. Furthermore, Vines and O’Neill both declare that they had a second meeting with McDonald on 4 July 2002. McDonald, in his second declaration, states that he has no evidence that a meeting took place on 4 July 2002. In support he supplied copies of the relevant page of his diary which showed no meeting had been booked. In his first declaration McDonald states that the meeting took place “shortly before 29 August 2002”. McDonald supplies no diary evidence of when the first meeting took place. This date of 29 August 2002 comes from a letter that he exhibits. The letter is from O’Neill summarising various points that had been discussed at a “recent meeting”.
In addition, according to McDonald’s second declaration, there appears to have been a meeting on 24 September 2002, and then no other contact from this time until 12 March 2003. Nevertheless I note that the letter dated 29 August 2002 refers to a “recent meeting”, and Vines declares that he met with McDonald around about 4 August 2002. I also note that the letter dated 29 August 2002 mentions discussions on having him as a director on the board of the company, which Vines and O’Neill said they discussed at their meeting of 27 June 2002.
While 27 June 2002 is not what I would consider to be “shortly before” 29 August 2002, and despite McDonald not supplying any evidence that such a meeting took place, even though he clearly possess a diary that covers the relevant period (c.f. his diary page for 4 July 2002), I am prepared to accept that a meeting took place on or about 27 June 2004. I am also prepared to accept that at least one other meeting was held before 12 March 2003, either just before or after 29 August 2002.
Magnets
It is clear from McDonald’s first declaration that he must have had some idea what Vines had invented because he describes (in paragraph 6) the concept of the pants system as being one in which electrodes attached to a TENS machine were used to stimulate the pudendal nerve and perineal tissues. This matches what is given in as one embodiment in 2002951831, which he has never seen. No such embodiment existed in the draft provisional that he was sent.

It would appear from McDonald’s first declaration that, at their first meeting, McDonald suggested to Vines that he should redesign the undergarment to include magnets to “consolidate the treatment on the acupuncture points”.
McDonald states that he also identified the desirability to increase the nocturnal urine concentration to control overnight urinary volume. To achieve this, McDonald states that he suggested the pants be redesigned to include a higher waistline above the level of L2/3 to treat the relevant acupuncture points. He states that Vines and O’Neill regarded this as the “vital missing link”.
To support this position McDonald exhibits various letters from Vines and/or O’Neill. McDonald’s position is that, given the passages from these letters that are noted above, Vines and O’Neill appear to concede that they consider him to be an inventor (but their patent attorneys do not). There is also the incomplete assignment as further evidence of this concession. He also exhibits the draft provisional specification which was sent to him by O’Neill for comment.
However, the title of the draft provisional specification is “System, Method and Article for the Treatment of Conditions in the Pelvic Region”. This is identical to the title that appears on the assignment. The title of the present application is “Underpants for the Treatment of Pelvic Floor Muscles and/or Bladder”. Therefore, it seems clear that the application for which Vines and O’Neill wanted McDonald named as an inventor is not the present application. The title appearing on the draft provisional specification and the assignment is the title given in a later provisional application (now withdrawn). Clearly, Vines and O’Neill are not conceding that he was an inventor of anything in the present application, contrary to McDonald’s position.
Vines naturally disputes much of what McDonald has to say. He states in his first declaration (in paragraph 3) that he had conducted research “from 1999 to May 2002”, and had found many documents describing magnetic therapy. His position is that it was he (Vines) who had come up with the idea of using magnets not McDonald.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
In support of his contention that he conducted research and found documents describing magnetic therapy, Vines exhibits the documents he said he found. They are exhibits JV9 to JV16. All appear to be print-outs of Internet pages. Most have, at the bottom of the page, the Internet address of the page, and a date. From my own personal experience of printing Internet pages, the date that appears at the bottom of the printout is the date it was printed from the Internet. I have no reason to suspect that the date at the bottom of the exhibits is any different. I note that some (exhibits JV9 and JV10) appear to be Internet pages that have been stored on the hard drive of a computer and then printed out from there. At the bottom of these pages is the hard drive folder they were apparently stored in and, apparently, the date of printing.
There are serious problems with most of these documents. To begin with exhibits JV10, JV12, JV13 and JV15 have printing dates later than May 2002. Indeed, exhibits JV10, 12 and 13 all have printing dates in 2003. Assuming the correctness of my observation in paragraph 49, they cannot be documents that Vines found in his research. In any event, exhibit JV9, which supposedly was printed on 5 May 2002, is of an Internet page that clearly bears the line “This page last updated: 5-Jan-2004”. There is also what appears to be the date that the page was visited. This date is given as “Tuesday 3-Feb-2004”. It would seem impossible for this page to have been printed out during the period of his research, let alone the specific indicated date of 5 May 2002. It does not appear to be genuine. Consequently, I also have serious doubts regarding exhibits JV11 and JV14 which bear no date of printing but which were purportedly found before May 2002. To compound matters, Vines did not appear at the hearing to explain these discrepancies.
It may be that Vines, in his research between 1999 and May 2002, did in fact come across the websites that are indicated at the bottom of his exhibits, and they may have mentioned magnetic therapy. It is possible that having viewed them, or printed them out, he failed to retain a copy. When he then received notice of this action, he may have then searched the Internet to find the same websites he remembered visiting and printed them out. Nevertheless, in this situation, the most favourable position that I can take on Vines’ evidence is that, while the Internet pages he has exhibited are of recent date, he is asserting that they are the same as those he viewed in 1999 to May 2002. However, it is well known that Internet pages may be changed – so that there may be little correlation between a page a viewed today and a page as it existed several years ago. The end result of the above is that I have serious reservations as to the credibility of Vines’ evidence.
As noted above, the Commissioner may consider the evidentiary weight to be applied in light of any doubts he or she may have as to the credibility of the declarants. In my opinion, given the discrepancy in the dates and the possibility of changes to Internet pages, the evidence of Vines on this point is to be given little weight.
On the other hand, O’Neill’s evidence would appear to support Vines’ claim. While, as I noted above, the declarations of Vines and O’Neill are substantially identically worded, and despite Mr Angliss’s submissions on this point, I do not think this lessens the weight. It is not uncommon for very similar declarations to be filed, particularly where an attorney is assisting. While Vines’ evidence may be given little weight, I cannot see why the same lack of weight should be given to O’Neill’s evidence. There is no evidence of misrepresentation as there is in Vines’ evidence.
In his first declaration, O’Neill exhibits two pages (exhibits PO2 and PO3) from a note pad which he says are true and correct copies of notes that he took during two separate conversations he had with Vines. The date at the top of the pages are the dates 14/6 and 25/6 respectively. This is before the earliest possible date of the first meeting between Vines, O’Neill and McDonald. The first set of notes (exhibit PO2) is the most relevant.
Exhibit PO2 has the following form:
I/Elim 14/6
Compliance – major issue W/Stopper
Use magnets to stimulate acupuncture
electrostim of acupuncture points – [illegible]?
Magnetic Therapy – chinese use it
Acupuncture Sites w [illegible], sacrum, etc
Acupuncture can treat UI[?] – use magnets?
- strength? many sites sacrum/lumbar
- more info
J McDonald? – [illegible] – [illegible]
Confid agr
S.BAIN? – No
These notes clearly indicate that there was an idea to “Use magnets to stimulate acupuncture”. I assume that “UI” in the notes stands for “urinary incontinence”. There seems to be discussion on using magnets at “many sites” around the sacrum and/or lumbar areas. From this would appear that, before they met McDonald, Vines and O‘Neill were investigating the possibility of treating incontinence with magnets.
Mr Angliss sought to interpret these notes as not supporting Vines’ position by suggesting that the magnetic therapy that was being talked about was not with permanent magnets but with a particular electromagnetic chair device which was being successfully used to treat urinary incontinence. This is identified by Vines and O’Neill in their declarations as the “Neotonus Chair”. However, even though in paragraph 9 of his declaration O’Neill says that the notes were taken during a phone conversation in which the Neotonus Chair was discussed, the notes do not support Mr Angliss’s interpretation. The use of the plural term “magnets”, the indication that they are going to “Use magnets to stimulate acupuncture” and the references to “many sites sacrum/lumbar” all point to a system of placing individual magnets at acupuncture points rather than to a system in which a magnetic field is generated with no ability to focus on particular points.
The notes also suggest that, while they had thought of using magnets to treat incontinence, they did not, as they suggest, have any concrete ideas of what were the best acupuncture points to treat. The clearly needed help in putting the invention into practice. Otherwise, why write “J McDonald” and suggest that they needed a confidentiality agreement (c.f. “Confid agr” in the notes)? They clearly meant to meet with McDonald and ask for help. This also supports an initial meeting between Vines, O‘Neill and McDonald in late June 2002 or early July 2002, since they would have wanted to meet him soon after this conversation.
While it is true, as Mr Angliss pointed out, that the notes taken at the meeting between Vines, O’Neill and Fisher Adams Kelly on 30 May 2002 make no mention of magnets, these notes were made of Vines’ “ideas as they were at that point”. This was before the conversation noted in exhibit PO2, where magnets are seen for the first time. It is not surprising that it is missing.
Mr Angliss also made submissions that the pant designs produced by OMI, which were seemingly only completed in September 2002, were apparently directed to electrical stimulation, and it would appear that Vines and O’Neill were still committed to the idea of electrical stimulation well after meeting McDonald. The inference I believe I am supposed to draw is that Vines and O’Neill were overwhelmingly focussed on electrical stimulation and magnets would never had entered their heads without McDonald suggesting it. However, I believe that this behaviour was nothing more than Vines and O’Neill “keeping their options open”. As O’Neill states in his declaration, he and Vines “were not initially convinced that permanent magnets held in a pair of pants could successfully stimulate acupoints to produce a satisfactory therapeutic effect”. In such a situation, I find it likely that Vines and O’Neill would not want to “give up” on their work on electrical stimulation, while they investigated magnetic treatments further. It would appear that Vines and O’Neill wanted McDonald to help them in this investigation.
The overall impression that I get is that it is more likely that it was not McDonald who was responsible for the invention simpliciter of using magnets to treat incontinence. In my opinion, McDonald was sought out to merely confirm to Vines and O’Neill that magnets could be used.
I note here that I am merely saying that McDonald did not supply the suggestion. Whether the idea came from Vines or O’Neill is not to be decided. I note that, while Vines says it was his research that led him to magnets, the evidence he provides to support has been given little weight. I have relied on O’Neill’s evidence to reach my conclusion that it was not McDonald.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
CONCLUSION
On balance, the suggestion to use magnets to treat incontinence did not come from McDonald. In reaching this conclusion I have relied on the evidence of O’Neill rather than Vines. Vines’ evidence on the research that he claims to have carried out on using magnetic treatment has very little weight. It contains at least one document which does not appear genuine, and many which the evidence suggests were obtained much later than he indicated.
[PASSAGE NOT PUBLISHED BY REASON OF CONFIDENTIALITY]
COSTS
In this case McDonald has not established that he was responsible for the invention disclosed in the provisional application, i.e. using magnets to treat incontinence. In the normal course of events, the practice is that costs follow the event. I see no reason to depart from the usual practice. I award of costs against McDonald.
GREG POWELL
Delegate of the Commissioner of Patents
30 November 2004
Patent attorneys for the applicant : Clarke and Kann, Brisbane
Patent attorneys for the requestor : Cullen & Co., Brisbane