John Prosper Cullen v Ringridge Pty Ltd Summary

official notice

decision of a dePUTY commissioner of patents

Application : No. PN4508 in the name of John Prosper Cullen

Title: Electrical Component

Action: Request under s.32 by Rinbridge Pty Ltd

Decision: Issued .
Abstract

The person making the s.32 request failed to provide any material in support of their request, and advised that they did not wish to be heard. The patent applicant filed brief evidence in support of his entitlement.
Application directed to continue in the name of John Prosper Cullen (alone).

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent application No. PN4508 in the name of John Prosper Cullen, and a request under s.32 by Rinbridge Pty Ltd

background

Provisional application PN4508 was filed on 31 July 1995 (and has subsequently been associated with two complete applications – 60847/96 and 60848/96). On 31 July 1996 a request under s.32 was filed by Rinbridge Pty Ltd. The request was duly advertised, and both parties advised that they wished to be heard.

Rinbridge was given until 5 Dec 1996 to lodge evidence in support of their request. They sought (and were granted) a further extension up to 24 Dec 1996. On that day Rinbridge requested a further extension of two weeks. This was not acceded to. Cullen was allowed until 13 March to file their evidence, and on 17 Feb a short declaration was filed.

Subsequently in the course of setting the matter for hearing, Rinbridge advised they did not wish to be heard; and Cullen advised that he wished to be heard only if it was likely that the decision might be adverse to him (and provided a short written submission).

The material

The only material before me in support of the request by Rinbridge is the assertion made on the s.32 request:

“Rinbridge Pty Ltd asserts a proprietory (sic) right of ownership of the invention the subject of the above application, having obtained that proprietorship by way of assignment from the actual inventor, Chan Wood Shek.”

Against this, the patent applicant has sworn a declaration, which in summary asserts:

he (J P Cullen) is the actual inventor;

he made it on his own behalf; it was not made in the course of employment by others or under commission from others;

he has not assigned his rights in the invention to anyone;

Rinbridge was a licensee of the invention, and that licence has been terminated;

Chan Wood Shek was known to him:

‘[Shek] was responsible for design of dies for manufacturing products in accordance with my invention. I know of no reason why he would consider himself to be in possession of any rights in respect of the invention, nor assert any disposal of such rights to others. I had various communications with him during the design of the dies, and at no time did he ever assert anything of this nature to me.’

Decision

In this matter, Rinbridge has made an assertion (and no more than an assertion) of ownership of the invention. There is no basis whatsoever for me to find that Rinbridge has any entitlement to the invention.

On the other hand, Cullen’s declaration generally supports Cullen’s claim to inventorship.

Accordingly, pursuant to the provisions of s.32 I direct that application PN4508 continue in the name of John Prosper Cullen (alone).

D Herald
Deputy Commissioner of Patents

Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the requestor : Shelston Waters, Sydney

The case of John Prosper Cullen v Ringridge Pty Ltd involved a dispute over the ownership of a patent application for an electrical component. The matter was heard before a Deputy Commissioner of Patents, who was tasked with deciding on a request under section 32 of the Patents Act 1990. Ringridge Pty Ltd had made a request to have the patent application, originally filed by John Prosper Cullen, transferred to their name. The central legal issues in the case were whether Ringridge had a valid proprietary interest in the invention and whether Cullen was the true inventor of the electrical component.

The Deputy Commissioner of Patents found that Ringridge had not provided any substantive evidence to support their claim of ownership of the invention. The only material presented by Ringridge was an assertion that they had obtained a proprietary right of ownership from the actual inventor, Chan Wood Shek, through an assignment. In contrast, Cullen provided a declaration stating that he was the actual inventor, had not assigned his rights to anyone, and that Ringridge's licence to the invention had been terminated. Given this evidence, the Deputy Commissioner concluded that there was no basis to find that Ringridge had any entitlement to the invention. Cullen's declaration, which generally supported his claim to inventorship, was deemed sufficient to maintain the patent application in his name alone.

The court therefore directed that the patent application, originally filed by Cullen, should continue in his name. The Deputy Commissioner found that Ringridge had failed to substantiate their claim of ownership and that Cullen's declaration sufficiently supported his claim to the invention. As a result, the application was to proceed in the name of John Prosper Cullen. This decision effectively rejected Ringridge's request and upheld Cullen's rights as the inventor.

John Prosper Cullen v Ringridge Pty Ltd

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established