Lazaros Minas v Brooklite Pty Ltd - [2016] APO 90

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Lazaros Minas v Brooklite Pty Ltd [2016] APO 90

Patent Application: 2008258278

Title:Liquid waste disposal unit

Patent Applicant:                   Brooklite Pty Ltd
Opponent:  Lazaros Minas
Delegate:  R Subbarayan
Decision Date:  23 December 2016
Hearing Date:  7 March 2016 and 19 July 2016, in Melbourne;

Catchwords:  PATENTS – section 59 – opposition to grant of patent – whether claims are not novel by reason of prior use – whether claims lack inventive step – whether applicant obtained invention from opponent – entitlement to the invention – whether claims are fairly based – whether claims are entitled to priority date – grounds not made out – costs awarded

Representation: Patent applicant: Ben Fitzpatrick of Counsel instructed by Nadia Odorico of Griffith Hack
Opponent:Kerry Chrysiliou and Allen Chan of Chrysiliou IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008258278

Title:Liquid waste disposal unit

Patent Applicant: Brooklite Pty Ltd
Date of Decision: 23 December 2016
DECISION
The opposition is unsuccessful. The claimed invention is not anticipated by prior use. It is also inventive and fairly based. The applicant is also entitled to the invention.
Costs are awarded according to Schedule 8 against the opponent Lazaros Minas.
Subject to any appeal, I direct that the applicant proceed to grant.
REASONS FOR DECISION
BACKGROUND

Application 2008258278 in the name of Brooklite Pty Ltd (the applicant) was filed on 6 June 2008 as an international application (PCT/AU2008/000816) and claims an earlier priority date from priority application US 60/943007 filed on 8 June 2007. Following examination, the application was advertised as accepted on 26 June 2014. Grant of the patent has been opposed under section 59 of the Patents Act by Lazaros Minas (the opponent). The Statement of Grounds and Particulars (SGP) of the opposition was filed on 29 December 2014.
Evidence in support was completed on 30 March 2015 and the evidence in answer was completed on 30 June 2015.The opponent did not file any evidence in reply but however amended the SGP on 1 September 2015 on the basis of information that came to light in the evidence in answer filed by the applicant. The matter was heard on 7 March 2016. A few days prior to the hearing, on 4 March 2016, the opponent filed new evidence along with a request for the Commissioner to have regard to this new evidence under the provisions of regulation 5.23. At the hearing both parties presented submissions as to whether I should or should not bring this new evidence into the proceedings.
Post hearing, based on the submissions from the parties and having had regard to this evidence I decided to bring this new evidence into the proceedings and gave the parties an opportunity to file evidence in answer and evidence in reply. This further evidentiary stage was completed on 17 May 2016 and at the request of the parties, a further hearing took place on 19 July 2016 to hear submissions in relation to the new evidence.
GROUNDS OF OPPOSITION
The SGP lists the grounds of opposition as lack of novelty, lack of inventive step, lack of entitlement to the invention and lack of fair basis.
ONUS OF PROOF
A request for examination in relation to the present application was filed on 10 October 2011. As a consequence, the substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. This includes the amendment to subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition has been made out. Instead, the onus in this opposition proceeding lies with the opponent, who must establish the grounds of opposition to the traditional standard. That is, the opposition will only succeed if I am clearly satisfied that the patent, if granted, would not be valid (F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; 50 IPR 305 at 311, 319, or it is "practically certain that the patent to be granted on the specification would have been invalid" (Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17])). In Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061 Besanko J noted that a lesser standard may apply to the primary facts, but not to the ultimate facts:
"The primary facts are to be established on the balance of probabilities, but the ultimate facts – the facts leading directly to a conclusion of a lack of novelty or a conclusion of obviousness – must be proved to the level of practical certainty.”
SPECIFICATION
The present invention relates to a waste disposal unit for collecting waste liquid and in particular to the “collection of waste oil where the oil has been used for cooking or in machinery as a hydraulic fluid or lubricating oil”.
The specification states that spent cooking oil from a deep fryer is often disposed manually by pouring the spent oil into a waste storage unit and that an “alternative to manually handling spent oil is to pump the oil from the waste source through a liquid pump directly into a waste storage unit”. The waste oil in the storage unit is collected through an appropriate collection service for bulk disposal.
The specification then states that the problem with the pumping method of collection is that “the pump eventually becomes blocked as a result of the particles entrained in the waste oil becoming lodged in the pump's componentry. The pumping equipment therefore requires regular cleaning and maintenance in order to operate effectively, but in general the pump equipment has a shorter than expected life and will require early replacement” and that there is therefore “a need for a manner of disposing waste liquid that as well as being safe to operate is also effective and reliable”.
The solution presented by the present invention is to provide a tank that can be sealed and a vacuum pump that can create a low pressure inside the tank in order to draw liquid from the waste liquid source into the interior of the tank so that pump componentry is never in direct contact with the waste liquid. This is best illustrated in figures 1 and 2 of the specification which are reproduced below:
The waste disposal unit comprises a tank 12 with an opening 14 at the top that can be closed by a hinged lid 15 to create a substantially sealed environment in the tank interior 17. A vacuum pump 20 is housed in a compartment 18 below the tank 12 and is in communication with the upper portion of tank interior 17 through a vacuum tube 22 that extends upwardly into the tank through a sealed opening in a bottom panel 23 of tank 12. A flexible delivery hose 30 is connected to the upper part of the tank and is used to transfer waste liquid from the waste liquid source to the interior of the tank through a delivery outlet 33.
In use a nozzle 34 at the free end of the delivery hose is inserted into the waste liquid source and the vacuum pump is operated to create a low pressure in the interior of the tank. This low pressure draws liquid from the waste liquid source into the tank through the delivery hose. A ball float valve 43 turns off the vacuum pump when the liquid level in the tank reaches a predetermined maximum. Open end 24 of vacuum tube 22 is located in the tank interior at an opposite end to the delivery outlet 33 so as to reduce the likelihood of waste liquid entering the vacuum tube. The open end 24 is further provided with a shroud 26 to deflect any liquid splashing in the vicinity of the open end.
The specification ends with 17 claims of which independent claims 1 and 14 read as follows:
1.A waste disposal unit for collecting waste liquid entrained with particles from a waste liquid source, comprising:
a tank for collecting waste liquid having an access that when closed creates a substantially sealed environment in the interior of the tank;
a vacuum pump in communication with the tank interior for creating a low pressure in the tank interior;
a vacuum tube coupled to the vacuum pump and extending upwardly through the tank interior with an open end of the vacuum tube facing upwardly in the tank interior to draw air from an upper end of the tank interior;
a delivery hose sealingly coupled to the tank interior to draw liquid from the waste liquid source to the tank interior when the pressure in the tank interior is lower than the pressure at the waste liquid source; and
means for protecting against liquid entering the vacuum tube.
14.A method of collecting waste liquid entrained with particles from a waste liquid source using a waste disposal unit, including:
inserting a delivery conduit into a waste liquid source, the delivery conduit being sealingly coupled to a tank of the waste disposal unit;
activating a vacuum pump that is in communication with an interior of the tank to create a low pressure in the tank interior; and
a vacuum tube being coupled to the vacuum pump and extending upwardly through the tank interior with an open end of the vacuum tube facing upwardly in the tank interior to draw air from an upper end of the tank interior; drawing waste liquid through the
delivery conduit and into the tank interior by way of the pressure in the tank interior being lower than the pressure at the waste liquid source; and
protecting against liquid entering the vacuum tube.
While the features of the claimed invention are clear, it is worth noting that the claimed invention does not specifically require that the vacuum pump is located at the bottom of the unit, it only requires that the vacuum tube that is coupled to the pump extend upwardly through the tank. Also “the means for protecting against liquid entering the vacuum tube” is not limited to a shroud over the open end of the vacuum tube. It can merely be placing the outlet of the delivery hose away from open end of the vacuum tube so that there is no possibility of liquid splashing into the open end.
THE EVIDENCE
As the opponent’s case in relation to lack of novelty relates to public prior use of the claimed invention rather than any documentary information, the evidence provided by the parties becomes critical in establishing whether the claimed invention is anticipated. Much of the evidence is based on recollections of events and/or actions that took place more than 10 years ago. I will now summarize the evidence from both parties.
The Opponent’s evidence
Evidence from the opponent comprises the following:
·Declaration of George Minas dated 30 March 2015 with exhibits GM-1 to GM-7 (G Minas)
·Declaration of Lazaros Minas dated 30 March 2015 with exhibits LM-1 to LM-5 (L Minas #1)
·Declaration of Dimitrios Minas dated 30 March 2015 (D Minas)
·Declaration of George Katsakis dated 30 March 2015 (Katsakis)
·Declaration of Kerry Chrysiliou dated 30 March 2015 with exhibits KC-1 to KC-7 (Chrysiliou #1)
·Declaration of Nicholas Scorsis dated 4 March 2016 (Scorsis #1)
·Declaration of Kerry Chrysiliou dated 4 March 2016 (Chrysiliou #2)
·Declaration of Kerry Chrysiliou dated 17 May 2016 with exhibits KC-8 to KC-9 (Chrysiliou #3)
·Declaration of Lazaros Minas dated 17 May 2016 (L Minas #2)
·Declaration of Nicholas Scorsis dated 17 May 2016 (Scorsis #2)
George Minas
He has been involved in the business called Minas Quality Oils (MQO) from 1998. MQO’s business includes delivery of fresh cooking oil to customers such as food outlets and restaurants, and collection of waste oil. For the collection of waste oil, MQO supplied its customers with a waste oil unit that “had a vacuum pump for drawing waste oil from the customer’s fryers into the unit”[1]. In the initial units the vacuum pump was located at the top of the unit (Version 1 unit).
[1] G Minas at [5]
As “some customers wanted to be able to fit the waste oil unit beneath a countertop”[2], MQO redesigned the Version 1 unit to relocate the vacuum pump beneath the unit (Version 2 unit). The Version 2 unit was rectangular and had “a vacuum pipe travelling from the vacuum pump at the bottom of the unit up through the tank and had a shroud to prevent oil in the tank splashing into the vacuum pipe and adversely affecting the pump motor”[3].
[2] G Minas at [6]
[3] G Minas at [6]
MQO provided at least 100 Version 2 units to its customers between about 2001 and 2005.
In 2005, MQO was put up for sale. The applicant Brooklite was interested in buying the MQO business and Peter Fitzgerald one of the directors of Brooklite came to MQO and met with George Minas. As Peter Fitzgerald expressed a desire to see the vacuum waste oil unit, George Minas showed him one of the rectangular Version 2 units and explained in detail how the unit worked. Peter Fitzgerald told him that the price was too high and did not contact MQO again after that meeting.
Various photos showing the outside and inside of an old Version 2 unit “that was in existence in 2005, if not earlier”[4] are included with George Minas’s declaration as exhibits GM-1 and GM-3 to GM-7. The features that correspond with each of the features of the claimed invention are also marked up on these photos.
[4] G Minas at [15]
Lazaros Minas
He has worked in MQO from 2003. In 2007, he took over MQO and renamed it Trojan Oils.
From 1998 MQO supplied its customers with a waste oil unit in the form of a drum. Various improvements were made to the unit by Dimitrios Minas and prior to 2005, MQO had evolved its waste oil unit to a square shaped unit. One version of this unit had “a vacuum pump located under the unit with a vacuum pipe running up through the oil tank (Version 2)[5].”
[5] L Minas #1 at [8]
The Version 2 unit was supplied to customers in 2005 and he recalls collecting waste oil from Version 2 units from customer premises in 2005.
He has also attached a screenshot from MQO’s computer records showing a list of certain documents and the dates on which they were saved (Annexure LM-1) and printouts of some of these documents including a colour brochure showing the Version 1 waste oil unit (Annexure LM-5) which was provided to customers from 2002. A copy of this brochure is reproduced below and the Version 1 unit can be seen labelled as “Waste Container” in the bottom right.
He states that leaflets and advertising material were not updated to show the Version 2 unit as a decision was made to put the business up for sale in 2005.
He disagrees with Steve Razlong, an employee of the applicant who has provided evidence, that a long testing period of 6 to 8 months is necessary for testing the prototype of a waste oil unit and that a trial period of a few weeks is adequate.
He is of the view that it is easy to simulate a commercial kitchen in the factory and test the waste oil unit in such a kitchen using waste oil collected from customers and even if testing needed to be done with warm oil, the oil could be heated in a fryer in the factory. This is exactly how MQO tested its waste oil units from 2003.
Dimitrios Minas
He has worked in MQO from 1998 to 2007 and designed the waste oil units for MQO. He first designed the Version 1 unit with the vacuum pump at the top. Prior to 2005, he designed the square Version 2 unit which had the vacuum pump positioned at the bottom with a vacuum pipe running from the pump to near the top of the tank. As he found that oil in the tank could splash into the open end of the vacuum tube, he subsequently improved the unit by adding an elbow-shaped piece of metal to extend over the open end of the vacuum tube. He states that Version 2 units with this improvement were being supplied to customers in Victoria prior to 2005.
He also identifies that the photographs GM-1 and GM-3 to GM-7 are the square Version 2 unit with the part labelled 1.6 or 3.2 being the elbow-shaped piece of metal over the open end of the vacuum pipe.
George Katsakis
He is a director of Melissa Cakes Wholesaling Pty Limited. His company uses deep fryers in its business and was a customer of MQO from about 2001 or 2002. MQO provided his company with a liquid waste disposal unit (LWDU) for collecting waste oil and the LWDU that is in use currently works the same as that provided first back in 2002. In relation to the LWDU he states:
“The LWDU provided in 2002 or earlier was square in shape. It had a tank for the waste oil and a lid for the tank. A pump motor was located under the LWDU. To transfer waste oil from one of the fryers to the LWDU, a hose from the LWDU was stuck in the oil in the fryer, a button on the LWDU was pressed and the oil in the fryer was sucked into the LWDU”. [6]
[6] Katsakis at [7]
He also states that he has no interest in the outcome of the present opposition and that he has not been influenced by Lazaros Minas in any way.
Nicholas Scorsis
In December 2006 about a week before Christmas, he and his business partner Anthony Scarlata opened a business called Souvlaki Hut in Newport, Melbourne under a franchise agreement with Souvlakihut Pty Ltd (Souvlakihut). This business ran for around 4 years after which they started running a fish shop at the same premises.
His contact with Souvlakihut was Bill Fotiadis. When the business opened, Cookers Bulk Oil Systems (Cookers) “installed in the kitchen of the Business a waste oil unit (Trial Unit) for a trial period, which lasted for around 6 to 7 weeks”[7].
[7] Scorsis #1 at [5]
He states that “Adjustments were made to the pumping function of the Trial Unit throughout the trial period. At one time, the Trial Unit jammed and wouldn’t finish the oil suction successfully”.[8]
[8] Scorsis #1 at [6]
He thinks “the Trial Unit may have been swapped over for a modified unit from time to time”.[9]
[9] Scorsis #1 at [7]
Steve Razlog, the sales representative of Cookers visited the store every Thursday during the trial period to remove the waste oil. He would unlock the lid of the Trial Unit and observe Anthony Scarlata or him while they used the trial unit to suck the waste oil from the fryers into the trial unit. Anthony Scarlata or he would also then unblock any obstructions caused by debris and clean inside the unit. Bill Fotiadis and Wayne Dale would also be occasionally present at that time. The lid was also sometime unlocked to clear blockages and to fine tune the functioning and performance of the Trial Unit. During these times both Anthony Scarlata and he could easily see inside the unit when the lid was opened.
After the trial period finished by the end of February 2007, “the same Trial Unit was left at the site for use in the Business”[10]. Each week Anthony, he or one of the other business staff would wheel the Trial Unit to the fryers and transfer the waste oil from the fryers to the Trial Unit.
[10] Scorsis #2 at [19]
He further states “I am not aware of any further modifications made to the Trial Unit after the 6 to 7 week trial period finished. Certainly, the Trial Unit was not removed from the site after the end of that trial period”[11].
[11] Scorsis #2 at [20]
The Trial Unit was supplied as part of the agreement to purchase fresh oil from Cookers and there was no separate cost for the unit.
He disagrees with the evidence of Steve Razlog that the Trial Unit had a Perspex lid and insists it had a solid lid which was not transparent.
He further disagrees with the evidence of Steve Razlog that the Trial Unit was tested at Newport store for 6 to 8 months. He states “The period of the trial was about 6 or 7 weeks from its commencement in December 2006.The trial was completed well before end of February 2007. Steve Razlog, Wayne Dale and other representatives of Cookers Oil Distributors had stopped attending the Business to trial or train the people working in the Business by that time. Cookers continued to visit the Business on a weekly basis to remove waste oil from the Trial Unit to the Cookers tanker”.[12]
[12] Scorsis #2 at [10]

He also disagrees with Steve Razlog’s statement that Cookers would empty waste oil into the Trial Unit once a week and take the trial unit away. According to him except for the rare occasion that a waste unit may have been swapped over, the Trial Units remained in the store. On some occasions “Cookers' personnel made improvements or modifications to the Trial Unit on site at the Business”.[13]
[13] Scorsis #2 at [16]
Kerry Chrysiliou
She is a registered patent attorney representing the opponent in the present opposition.
She has provided copies of the patent application as filed (A version) and as accepted (B version) and compared the A and B versions to identify differences in describing certain features of the invention.
She has also provided evidence to establish that Brooklite owns the trade mark “Cookers”.
She has also provided evidence showing that as per ASIC records (exhibit KC-8), the owner of Souvlaki Hut Reservoir store in July 2007 was a business named N & E Enterprises Pty Ltd and that an extract for this business (exhibit KC-9) does not show any officer of this company by the name of Angela.
The Applicant’s evidence
Evidence from the applicant comprises the following:
·Declaration of Peter Fitzgerald dated 30 June 2015 with exhibits PJF-1 to PJF-5 (Fitzgerald #1)
·Declaration of Paul Morrice dated 30 June 2015 with exhibits PWM-1 to PWM-5 (Morrice)
·Declaration of Bill Fotiadis dated 30 June 2015 with exhibits BF-1 to BF-5 (Fotiadis)
·Declaration of Nadia Odorico dated 30 June 2015 with exhibits NMO-1 to NMO-4 (Odorico)
·Declaration of Peter Fitzgerald dated 18 April 2016 with exhibits PJF-1 (Fitzgerald #2)
·Declaration of Steve Razlog dated 18 April 2016 (Razlog)
Peter Fitzgerald
He is a Director of Brooklite and also one of the named inventors of the opposed patent application.
Australian Cooking Oil Service Pty Ltd (ACOS) was a company involved in providing bulk oil deliveries to around 50 customers. The ACOS bulk oil delivery system included a double walled stainless steel tank with a pump which was housed under the base of the tank. The ACOS system was on wheels to allow easy movement of a large volume of oil and also had a delivery hose that was located inside a fixed pocket which allowed the oil to be directed into the fryer without risk of wastage.
In 2000 Brooklite Pty Ltd purchased the business of Australian Cooking Oil Service Pty Ltd (ACOS) and changed the name of this business to Cookers Bulk Oil Systems (Cookers).
Peter Fitzgerald and Wayne Dale another employee of Brooklite then redesigned the ACOS bulk delivery system to address certain leakage issues, with the assistance of Mor-Fab Engineering Pty Ltd (Mor-Fab). The re-design process led to the development of their single walled fresh oil storage tanks which had a pump hard plumbed to the base of the tank and a modified lid. The height of the unit was also reduced to ensure it would fit comfortably under a standard benchtop. This redesigned system has been on the market since at least 2001.
For disposing used cooking oil, Cookers was initially providing customers with 180 litre waste oil storage tanks on wheels which matched the dimensions of their 180 litre fresh oil storage tank but were not capable of vacuuming up used cooking oil.
To assist customers with transferring used cooking oil from their fryer to their used cooking oil storage unit Cookers developed a 'Transfer Caddy' on wheels. Waste oil would be drained into the Transfer Caddy which would then be wheeled to the waste tank where the waste oil would be pumped from the Transfer Caddy to the waste tank using a manual pump.
In 2005 Peter Fitzgerald attended a meeting at the premises of MQO and met with George Minas and another person in relation to the potential purchase by Cookers of that business. At that meeting Peter Fitzgerald was shown MQO’s fresh oil storage units and their vacuum waste oil units. The only vacuum waste oil units which he was shown and he observed during that meeting were the Version 1 unit as shown in Annexure LM-4 to the declaration of Lazaros Minas. He did not observe any stainless steel or square shaped vacuum waste oil unit similar to the one shown in the photographs provided as evidence by George Minas.
Sometime in 2006, Bill Fotiadis, a Director of Souvlakihut approached Cookers to take over the supply of their cooking oil. At that initial meeting Bill Fotiadis requested Cookers to develop a used cooking oil storage unit that could suck the oil directly from the fryers and would look identical to the Cookers fresh oil unit and could also fit under benchtops.
Cookers contacted Mor-Fab and started work on a prototype waste oil storage unit in late September or early October 2006. The prototype was developed at the premises of Mor-Fab through discussions with Paul Morrice the Director of Mor-Fab. This waste oil storage unit was commonly referred to as a “Vac Tank” and was the basis for the present patent application.
Some of the salient features of the prototype were as follows:
·A vacuum motor that was hard plumbed to the underside of the tank.
·An internal suction tube that extended from the bottom of the tank to the top.
·A float operated shut off valve to prevent overflow
·A perspex lid to observe how oil was flowing
·A locking mechanism for the lid
·A shroud provided over the suction tube to avoid splashing oil from entering the suction tube
The prototype was ready for field testing in or about November 2006 and the field testing took place at the Souvlaki Hut store in Newport. Based on the testing further minor modifications were made to the unit. Once they “were happy with the unit”[14] Mor-Fab prepared design drawings in early 2007.
[14] Fitzgerald #1 at [31]
The invention claimed in the present application came about as a result of these developments and field testing and that he and Wayne Dale are the true inventors of the Liquid Waste Disposal Unit of the present application.
He confirms that after the trial at the Souvlaki Hut Newport store, Cookers supplied their Vac Tank to other customers and the first of these was to the Souvlaki Hut Reservoir store. A copy of the licence agreement dated 3 July 2007 between Brooklite and Souvlaki Hut Reservoir is also attached (exhibit PJF-1).
Paul Morrice
He is a Director of Mor-Fab Engineering Pty Ltd and has around 30 years of experience in the steel fabrication industry. His company has assisted Cookers with the manufacture of all its steel tanks and oil storage units.
He confirms that around September or October 2006, he was approached by Peter Fitzgerald to build a waste oil unit (Vac Tank) that could be used to vacuum waste oil directly from a fryer and that it had to look similar to their fresh oil storage tank and have a flat lid.
Prior to this he was aware of other waste oil units that operated by use of a vacuum pump but these were ones with the pump on the top.
He and Paul Chatterton, one of his sheet metal workers, “worked closely with Wayne Dale and Peter Fitzgerald over the next month or so to produce a prototype that worked in the way that Cookers wanted”[15].
[15] Morrice at [7]
The prototype was built and tested extensively on the Mor-Fab factory floor using oil available on site. The prototype had a Perspex lid so that they could see how the system was working. Amongst the matters he was required to address included providing a float shut off valve, moving the vacuum tube to one side to lower the risk of oil splashing into the vacuum tube and providing a shroud around the top of the vacuum tube to further limit the chances of oil getting into this tube.
In early 2007 he produced design drawings of the Vac Tank at the request of Peter Fitzgerald. He also states that “as it is commonly necessary to alter prototypes substantially to make them work well Mor-Fab will not have design drawings done until after the design is finalised”[16]. Copies of these drawings are annexed (PWM-4). Subsequently at the request of Cookers some further drawings were prepared and sent to Brooklite’s patent attorney Griffith Hack on 16 May 2007.
[16] Morrice at [6]
Bill Fotiadis
He is a former Director and a cofounder of Souvlakihut Pty Ltd (Souvlakihut) which was the head Franchisor of the Souvlaki Hut restaurant chain. Souvlakihut began business in 2004 and by November 2006, there were 4 Souvlaki Hut stores in and around Melbourne. MQO was the supplier of oil from 2004 until mid-2006.
During this time MQO used a “fryer sucker” comprising “a large round drum with a pump located on the top of the drum and with a hose and nozzle for sucking the oil from a deep fryer”[17]. He identifies the “fryer sucker” as looking identical to the photo of the Version 1 unit that was provided to him by Griffith Hack (exhibit BF-1).
[17] Fotiadis at [6]
Around August or September 2006, he contacted Cookers to see whether they could take over as Souvlaki Hut’s oil supplier as there had been an incident in the store caused by an electrical fault in a MQO fresh oil pumping unit. He met with Peter Fitzgerald and Wayne Dale to discuss Souvlakihut’s needs. As he was very impressed with the design of the Cookers fresh oil storage unit, he asked if Cookers could “provide us with a “fryer sucker” that would look as good as the Cookers fresh oil unit and that would also fit underneath a standard bench top”[18]. Cookers agreed to provide a prototype as soon as possible.
[18] Fotiadis at[10]
About November 2006, a new Souvlaki Hut store opened in Newport. This store was owned and operated by Anthony Scarlata and Nicholas Scorsis. Bill Fotiadis attended the store regularly to assist Mr Scarlata and Mr Scorsis with setting up their new store.
As the Vac Tank prototype was completed around this time, he decided to test it at the Newport store. The “testing occurred in or about November 2006” and “there was only minimal issues with the Cookers “fryer sucker” prototype (such as the hose being too small)”[19].
[19] Fotiadis at [12]
The testing of the prototype at the Newport store was a success and the “fryer sucker” (referred to as Vac Tank by Cookers) was eventually rolled out to all Souvlaki Hut stores.
He also identifies copies of photographs of a “fryer sucker” provided to him as looking identical to the “fryer sucker” that was used for the testing at the Newport store.
Steve Razlog
He was an employee of Brooklite from 26 June 2006 to 31 October 2013. By November 2006 he was working in the role of Service Manager.
He was directly involved in the trial of the “Vac Tank” waste oil tank unit at the Souvlaki Hut Newport store that commenced in late 2006. A first version of the trial unit was a stainless steel unit with a clear Perspex lid that was secured with a padlock that only Cookers staff could open. This first trial unit was used and tested at the site for a period of 6 to 8 months.
The trial unit did not remain on site. It was transported from Cookers to the site on a truck once a week and either he or other Cookers employees would empty waste oil from the site into the trial unit. The trial unit was then transported back to Cookers.
The use of the Perspex lid allowed him and other Cookers staff to “visually inspect the first vac tank during operation and note problems that needed addressing”[20].
[20] Razlog at [8]
Over the 6-8 months of trial Cookers modified it after almost every visit as a number of problems were encountered. He has also identified a number of modifications that were made and one of these is the placing of a shroud around the top of the vacuum tube. This modification “was made approximately 3-4 months into the trial period”[21].
[21] Razlog at [10.J]
After the 6-8 months of trialling the first trial unit, Cookers replaced it with a second unit with a stainless steel lid. This second unit was however left on the Souvlaki Hut site but still secured by the padlock that only Cookers staff could open.
He still visited the site on a weekly basis to inspect the unit and empty it of waste oil and “Cookers continued to inspect and make modifications to the second vac tank for approximately 2 months until we were happy with the vac tank to not inspect it anymore”[22].
[22] Razlog at [12]
After this Cookers commenced making and supplying their Vac Tanks to other customers.
He further states “It was necessary to trial both the first and second vac tanks in a practical operational real life setting. It is practically difficult if not impossible to simulate the conditions that exist in a real life setting, eg.in a fish and chip store. Furthermore, as it is the store owner that uses the apparatus to remove the waste oil it is necessary to trial the apparatus in a setting which involves the customer using the apparatus”[23].
[23] Razlog at [13]
PRIORITY DATE AND FAIR BASIS
The opponent submitted that the opposed application is not entitled to the claimed priority date of the corresponding basic application filed on 8 June 2007 or of the date of filing of the complete application on 6 June 2008, but instead takes the priority date of 6 June 2014, the date on which amendments were filed.
The basis for this submission is that the amendments filed on 6 June 2014 “described an invention different from the disclosure in the specification as filed and was not fairly based”.
The test for fair basis is “whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification” Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd [1988] FCA 162 at [54] and quoted with approval by the High Court in Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260. In applying this test it is not appropriate to engage in an “over meticulous verbal analysis” or to seek to isolate in the description and claims of the priority document “essential integers” or “essential features” of an alleged invention and ask whether they correspond with the essential integers of the claims in question.
The opponent firstly submitted that “In claim 1, the feature 'access' is not fairly based on the specification as filed because the relevant original disclosure was limited to an opening and no other type of access was disclosed. The feature, access, is broader than and travels beyond 'opening'”.
I disagree. When the specification is read as a whole it is clear that access refers to the tank opening 14 through which the tank interior can be accessed. In my view this constitutes a real and reasonably clear disclosure of the term “access” in claim 1.
The opponent also submitted that the integer “means for protecting against liquid entering the vacuum tube, is not fairly based because, aside from the consistory statement on page 2 of the specification, the disclosure is limited to a shroud 26. The feature, means for protecting against liquid entering the vacuum tube, is broader than and travels beyond 'shroud'.
Again I disagree. The shroud is not the only means for protecting against liquid entering the vacuum tube. The specification clearly describes that the positioning of the hose delivery outlet at an opposite end of the tank to the vacuum tube also affords protection from liquid entering the vacuum tube. The claim does not travel beyond the disclosure and is fairly based.
It was also submitted by the opponent that the integer of a lid to sealably close the opening is an essential integer of the invention and as the claims omit this essential integer, they travel beyond the original disclosure.
Claim 1 defines that the tank has an access that when closed creates a substantially sealed environment in the interior of the tank. The body of the specification describes a lid as the means of closing the opening to the tank. In my view this disclosure of the lid provides a real and reasonably clear disclosure of an access with a closure. I can see no requirement for the applicant to restrict themselves to the preferred embodiment and specifically mention a lid in the claims.
All of the claims are fairly based on the specification as filed. The opponent did not specifically make further submissions as to why the claimed invention is not fairly based on the basic application. In fact the copy of the basic application has not even been filed as evidence by the opponent. In the circumstances I cannot be satisfied that the claimed invention is not fairly based on the basic application or that it is not entitled to the priority date of the filing date of the basic application. The priority date of the claims is therefore 8 June 2007.
NOVELTY
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209 at [248]). It is well established that the general test for anticipation or want of novelty is the reverse infringement test. The classic formulation of this test is that given in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; 137 CLR 228 at [19]:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
The same level of disclosure is required of an alleged prior use of the invention as claimed. In Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676, Von Doussa J stated at [152]:
“In order to deprive a patented invention of novelty, the use relied upon must be a use in public which discloses to a person skilled in the relevant art all the essential features or integers of the invention the subject of the challenged patent. The information must enable the notional skilled addressee at once to perceive and understand, and be able to practically apply the discovery, without the necessity of making further experiments: Stanway Oyster Cylinders Pty Ltd v Marks (1996) 35 IPR 71 at 75. The use must be such that the public were free to do whatever they wished with the information derived from that use. A disclosure to a person under an obligation of confidence, who is not free in law or equity to make use of the information acquired for their own purposes, is not use in public: Fomento Industrial SA, Biro Swan Ltd & Anor v Mentmore Manufacturing Co Ltd [1956] RPC 87 at 99 per Lord Evershed.”
Von Doussa J also noted in Old Digger (supra) at [156] that where the evidence of alleged prior acts is the oral evidence of witnesses based on their recollection of events occurring some years ago, such evidence needs to be treated with caution.
“The onus of proof is on the respondents to establish a clear case of invalidity: see Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 at 595-596 per Gibbs J. The evidence adduced by the respondents as to the prior use of the invention is the oral evidence of witnesses to the alleged use based on their recollections of events years beforehand. The alleged use is said to have taken place in the course of trialling reverse circulation percussive hammers incorporating prototype face sampling drill bit assemblies. The particular assemblies have not been produced in evidence. Oral evidence led in these circumstances must be viewed with particular caution, partly for the reason that the memory of the witnesses is likely to have been influenced by other products seen in the meantime, and to reflect reconstruction on the basis of these later observations: see Commonwealth Industrial Gases Limited v MWA Holdings Pty Ltd [1970] HCA 38; (1970) 180 CLR 160 at 165-166, and Nicaro Holdings Pty Ltd & Others v Martin Engineering Co & Another [1990] FCA 40; (1990) 91 ALR 513 at 525 per Gummow J.”

Furthermore, a relatively high standard of proof is required to establish prior use. The level of proof required was discussed in Aspirating IP Limited v Vision Systems Limited [2010] FCA 1061 at [199]- [200] as follows:
“The applicant submits that in the case of an alleged prior use, there should be corroboration from an independent witness and, preferably, the presentation of records which corroborate the alleged prior use. It is not clear to me whether the applicant goes so far as to submit that corroboration was required as a matter of law. If it does go that far then I reject the submission.
The correct principle is that a prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.”
The opponent primarily relies on lack of novelty by way of two different prior uses, one by the opponent and the other by the applicant themselves. I will discuss each of them.
Public prior use of the MQO Version 2 waste oil unit
The opponent submitted that based on the evidence of George Minas, Dimitros Minas and George Katsakis, it is clear that the Version 2 unit was used publicly by way of leasing to MQO’s customers since 2002 and that this Version 2 unit had all the features of claim 1 and most of the other claims.
In support of their contention that all the features of claim 1 are disclosed by the Version 2 unit the opponent relies on the following photographs (exhibits GM-1 and GM-3 to GM-7 of G Minas) that are reproduced below:

100. The handwritten reference numerals on these photographs denote the various features of the claimed invention. Annexure GM-2 of the George Minas declaration is a table showing the breakdown of the integers of all of the accepted claims of the present application and each of these integers is then identified in these photographs through these handwritten reference numerals.
101. The applicant has not disputed that the device shown in these photographs shows all the integers of claim 1.
102. It would certainly appear from these photographs that the waste oil unit seen in these photographs has a tank 1.2, an access that can be closed by a lid 1.2.1, a vacuum pump 1.3 at the bottom of the unit, a vacuum tube 1.4 extending upwardly through the tank interior with an open end 1.4.2 facing upwardly, a shroud 1.6 surrounding the open end of the tube and a delivery hose 1.5. I am also therefore satisfied that the waste oil disposal device shown in these photographs has all of the features of at least claim 1 and prima facie would anticipate claim 1.
103. The applicant submitted that there are several difficulties with the opponent’s evidence as follows:
·First, George Minas fails to disclose his position and role with the Opponent. All that he states is that he “was heavily involved from about 1998 to about 2005”. The nature of this involvement remains unexplained. Accordingly, the basis for his assertion regarding sales of the Version 2 unit is entirely unclear.
·Secondly, the provenance of both the unit and the photographs is entirely unclear. There is no explanation as to the basis for the assertion that the photographed unit was in existence by at least 2005. Nor is there any explanation as to why such a unit would have been kept for such a long period, where it was kept and by whom. Furthermore, there is no evidence as to when the photographs were taken.
·Thirdly, and tellingly, notwithstanding the assertion of multiple sales, not one piece of documentary evidence – such as invoices, correspondence to and from customers, design drawings and/or manufacturing drawings – has been produced by the Opponent to support the assertion of sales of Version 2 either before or after the priority date.

104. In relation to the device shown in the photographs, George Minas states “This unit in these photos (2005 Unit) is an old unit that was in existence in 2005, if not earlier”[24] and that this Version 2 unit had the vacuum pump at the bottom, a vacuum pipe travelling from the vacuum pump at the bottom of the unit up through the tank and a shroud to prevent oil in the tank splashing into the vacuum pipe.
[24] G Minas at [15]
105. Although George Minas works for the opponent and should readily have been able to find out when the photos were taken and by whom and where this old Version 2 unit shown in these photographs was located, his evidence is totally silent on this information. In the absence of such information the most logical inference that I can draw is that these photographs were taken after the filing of the present opposition and are that of an old Version 2 unit that was kept in the MQO premises. There is nothing to suggest that this old Version 2 unit had ever been seen by a member of the public who could readily discern all of its features and who was free in law or equity to make use of the information acquired for their own purposes. I cannot therefore be clearly satisfied that the Version 2 unit seen in the photographs anticipates the claimed invention.
106. The opponent also relied on the supply of the Version 2 unit to its customers as constituting prior public use. They submitted that the “The Version 2 units were designed to be left in and used in commercial kitchens. Their features were readily apparent by inspection, especially when used to transfer waste oil. The lessee was free to closely inspect the units and look at the components in the interior of the units by lifting up the lid. The internal workings of the unit could be ascertained on inspection without disassembling the product”.
107. While I accept this premise, I need to be satisfied that the Version 2 units were supplied to its customers before the priority date and that these Version 2 units had all of the integers of claim 1 similar to the unit seen in the photographs.
108. Mr George Minas has stated that MQO supplied at least 100 Version 2 units to its customers in Australia between about 2001 and 2005.
109. Mr Dimitros Minas, who devised the Version 2 unit does not recall the precise date of when he devised this Version 2 unit with all its improvements including the use of a shroud over the open end of the suction tube, but states that “prior to 2005 MQO was supplying what I call “square” waste oil containers having this improvement to its customers in Victoria, Australia”[25].
[25] D Minas at [8]
110. Mr Lazaros Minas states that his father Dimitrios Minas had devised the Version 2 unit prior to 2005 and that these were “supplied to MQO customers in Australia and used by them in 2005 and later”[26].
[26] L Minas #1 at [16]
111. So the evidence I have before me are declarations from three people who worked for or are still working for MQO, who state that the Version 2 unit was developed and supplied to customers before 2005 but cannot recall when the Version 2 unit was actually developed. George Minas who appears to have been in charge of MQO from 1998 to 2005 states that at least 100 Version 2 units were supplied in the period 2001 to 2005, however all of the computer records provided in evidence only show a Version 1 unit which has the vacuum pump at the top.
112. Although Mr Lazaros Minas states that leaflets and advertising material were not updated to show the Version 2 waste oil unit as a decision was made to put up the MQO business for sale, I find that hard to believe. Given that the Version 2 unit is claimed to be a superior device to the Version 1 unit and more than 100 units were supplied to customers in the period 2001 to 2005, I would expect that there would be some records of the sales and supply of the Version 2 unit or at least some design drawings or photographs of the Version 2 unit even if the advertising material had not been updated.
113. As noted by the authorities any prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where it is of events which occurred many years ago. Clearly in this case, the relevant events occurred more than 10 years before the declarations were made. While the evidence of Mr Geroge Minas is that more than 100 Version 2 units were supplied between 2001 and 2005, the evidence of Mr Lazaros Minas suggests that the Version 2 units were supplied in 2005 and later. This inconsistency in the evidence from the Minas family members and the fact that not one record of the sale or supply of the Version 2 unit has been provided strongly suggests that I should treat their evidence with caution.
114. The only corroboration that Version 2 units were supplied to customers before 2005 is from Mr George Katsakis who states “The LWDU provided in 2002 or earlier was square in shape. It had a tank for the waste oil and a lid for the tank. A pump motor was located under the LWDU”[27]. However there is no indication in his declaration about the location and orientation of the vacuum tube and whether there were any means for protecting against liquid entering the vacuum tube. Moreover as noted earlier, it would appear from the declaration of Dimitros Minas that the early Version 2 units may not have had the shroud over the open end of the vacuum tube. In my view George Katsakis’ evidence falls well short of establishing that he was able to readily discern all of the features of the claimed invention from the unit supplied to him in such a manner that he would have been able to practically perform the claimed invention without the need to carry out further experiments.
[27] Katsakis at [7]
115. For the reasons that I have discussed above, I am not satisfied that the opponent has strictly proved that a Version 2 unit was built and supplied to its customers before the priority date of the claimed invention and even if it did that the Version 2 unit that was supplied had all of the features of claim 1 that constituted an enabling disclosure of the invention.
Applicant’s self-public prior use
116. The opponent submitted that the testing of the applicant’s Vac Tank prototype unit at the premises of the Souvalaki Hut Newport store from November 2006 constitutes public prior use that anticipates the claimed invention. In support of this contention, they rely on the declarations of Mr Fitzgerald, Mr Fotiadis and Mr Scorsis.
117. The applicant on the other hand submitted that there is no evidence to establish that the prototype was made publicly available and that the fact that it was provided to a commercial customer for testing indicates that a fetter of confidentiality would have applied. They further submitted that even, if the testing of the prototype did make the invention publicly available, they rely on on s 24(1) of the Act and reg 2.2(2)(d) which provides that the validity of a patent is not affected by the working in public of the invention within the period of 12 months before the priority date for the purposes of reasonable trial if, because of the nature of the invention, it is reasonably necessary for the working to be in public.
118. In order to find whether the testing of the Vac Tank prototype at the Souvlaki Hut Newport store constituted a public prior use of the invention I need to establish the following:
·Did the prototype tested in Souvlaki Hut have all the features of the claimed invention?
·Did the testing disclose the claimed invention to Mr Scorsis?
·Did this disclosure constitute a public disclosure?

Did the prototype tested in Souvlaki Hut have all the features of the claimed invention?
119. As noted earlier, according to Peter Fitzgerald the Vac Tank prototype was developed at the request of Mr Fotiadis, former Director and Co-Founder of Souvlakihut Pty Ltd. The prototype was built on the factory floor at Mor-Fab with the assistance of Paul Morrice and his team. Field testing of the prototype commenced in November 2006 at the Souvlaki Hut Newport store. As a result of the field testing some small modifications were made. By early 2007, Brooklite was happy with the unit and had Mor-Fab prepare design drawings. Brooklite sent a number of photographs of the prototype unit to their attorneys on 17 April 2007 and followed this up with the design drawings on 16 May 2007. Copies of these drawings and photographs are in evidence.
120. From paragraphs 29 and 30 of Fitzgerald #1, it would appear that the prototype that was ready for field testing in November 2006 had all of the features of the claimed invention including a vacuum tube extending upwardly through the tank interior with an open end facing upwardly, with the tube located at the far side of the tank from where the oil entered the tank and a shroud placed over the suction tube to avoid splashing oil from getting down into the vacuum tube.
121. However at paragraph 31 of Fitzgerald #1, he states that “As a result of that testing some further small modifications were made to the unit”, but does not identify what those small modifications were.
122. Mr Morrice states that “the prototype was tested extensively at the Mor-Fab factory using oil available on site” and that some of the matters that were addressed during the testing were moving the vacuum tube to the side away from the where the oil entered the tank and “including a shroud around the top of the vacuum tube” (Morrice at 8) His declaration is totally silent in relation to the field testing at Souvlaki Hut or any involvement he had in such field testing. But that does not necessarily lead to the conclusion that the prototype had all the features of the claimed invention before the start of the field testing. It is entirely possible that Mr Morrice was not involved in the field testing but was still involved in making the improvements arising out of the field testing.
123. This possibility is clearly supported by the declaration of Steve Razlog who states that “As a result of the problems encountered during the trial of the first vac tank Cookers made a range of modifications to the first vac tank over the course of the trial period. The modifications were often made with the assistance of Mor-Fab Engineering Pty Ltd”[28] and that one such modification was placing a shroud around the top of the vacuum tube.
[28] Razlog at [10]
124. Hence I cannot be absolutely certain that the prototype at the commencement of the field testing had all of the features of the claimed invention. So at what stage of the field testing did the prototype clearly include all of the features of the claimed invention?
125. The opponent submitted that the photographs and design drawings provided by the applicant to their patent attorney in April 2007 clearly had all of the features of the claimed invention. As noted earlier, these photographs and drawings are in evidence. Reproduced below are two photographs from Fitzgerald #1:

126. The first photograph is clearly an external view of the unit showing an orange flexible hose which is the hose for sucking the oil from the deep fryer. The tank is closed by a lid which is clearly non-transparent. The second photograph appears to be a top view of the inside of the unit showing a tank which has a curved inlet pipe at one side of the tank that is connected to the flexible hose, a perforated basket or strainer under the open end of the curved pipe, and what is presumably a suction or vacuum tube extending upwardly from the bottom of the tank on the opposite side of the tank with what appears to be a kind of shield obscuring the upper end of the vacuum tube.
127. The arrangement of the waste oil inlet pipe and vacuum tube is also shown in the design drawing sent to the patent attorney and which is reproduced below:

128. While not explicitly identified, there is certainly some kind of a shield or shroud over the upper end of the vacuum tube. The basic application filed in the US on 8 June 2007, has figures which are almost identical to these design drawings and in this application, the item surrounding the upper end of the vacuum tube is clearly identified as a shroud. I am therefore satisfied that the design drawing and the photographs show a shroud.
129. So while I cannot be certain that the prototype at the commencement of the field testing had all of the features of the claimed invention, based on the photographs and design drawings, I am satisfied that the prototype that was used in the field testing at Souvlaki Hut had all of the features of the claimed invention at least by 17 April 2007 when copies of the photographs of the prototype were sent to the applicant’s patent attorney.
Did the testing disclose the claimed invention to Mr Scorsis?
130. The question posed by the Full Court in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90 (at [144]) can be adapted to this case: “What information was given by the testing of the Vac Tank prototype in the Newport store kitchen as to the nature of the invention?”.
131. Mr Scorsis who operated the store along with his business partner Mr Scarlata from the time it opened in December 2006 states that during the trial period, Mr Scarlata, he and some of the other employees of the business had access to the kitchen where the unit was located and were able to see the trial unit from the outside. He acknowledges that the lid was normally locked but each Thursday when Cookers personnel came to remove the waste oil from the unit the lid was opened and he could see inside the unit. He further states that the lid was sometimes opened to fine tune its function and on several occasions he or his business partner Mr Scarlata has personally used wires to unjam and clear out obstruction of food being caught without a filter and during these times they could see inside the unit.
132. However Mr Scorsis does not explicitly state what components or features of the prototype he could discern by looking at the prototype both externally and internally. The applicant submitted as Mr Scorsis “is unable to identify any of the essential features of the various prototypes”, his evidence “cannot provide a proper basis to find the claims have been anticipated”.
133. In Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31 the majority stated:
In order to destroy novelty, the information must enable the notional person skilled in the art at once to perceive, to understand and to be able practically to apply the discovery without the need to carry out further experiments (Insta Image at [124] citing Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 581-582 ). Mere observation in the absence of direct evidence of what could be gleaned from such observation does not discharge the onus to establish an enabling disclosure (Insta Image at [125]).

134. In the present instance, Mr Scorsis did not merely observe the prototype. He was involved in using the prototype to suck oil from the deep fryers in his kitchen and also in removing debris that would cause blockages during use. Therefore over the duration of the trail he had actually observed both the outside and the inside of the prototype despite the lid being non-transparent and being normally locked.
135. The waste oil unit is not a complicated piece of equipment. It is a fairly simple suction unit with a few parts most of which can be identified by mere observation of the outside and the inside of the unit. Even from the photographs in evidence, one can clearly discern that the unit has a tank, a lid for closing the tank, a flexible delivery hose one end of which is connected to a nozzle and the other end of which is connected to a curved pipe provided in a sidewall of the tank, a strainer or basket inside the tank below the open end of the curved pipe, a tube extending upwardly through the tank interior with an open end facing upwardly in the tank interior and a shroud provided around the open end of the tube.
136. Although the pump cannot be discerned in any of the photographs as it is under the unit, it would have been readily inferred that the waste oil unit for sucking oil from a deep fryer would necessarily have a pump. While it is not possible to identify the location of the pump, this is irrelevant for the invention of claim 1, which only requires that the vacuum tube extend upwardly through the tank interior which can be clearly discerned from the photographs.

137. So while each of the features of the claimed invention could be individually discerned in the Vac Tank prototype at least by the end of April 2006, the question to be asked is would this information enable the notional person skilled in the art at once to perceive, to understand and to be able practically to apply the invention without the need to carry out further experiments.

138. In my view, this is where the evidence of Mr Scorsis falls short. Clearly he is not a person skilled in the art of waste oil suction units. He is the owner of a fast food franchise who has been provided a waste oil suction unit by the company that supplies cooking oils for the kitchen. There is nothing in his evidence to suggest that he had any interest in this device other than to know how to use it to suck the waste oil and to remove debris from the pipes or the strainer basket if there was a blockage. Moreover he does not state what features of the unit he could identify when he saw and used the unit or whether he was able to understand how the whole device works. Although he does not say so, it is possible that the reason for this is that these events took place around 10 years prior to when he provided the evidence and he cannot recollect what he observed. Whatever be the reason, while it is highly likely that he would have observed or at least inferred each of the features of the claimed invention, I cannot in the circumstances be clearly satisfied that he necessarily understood the nature of the invention and would have also been able to practically apply it.
139. In my view the invention including all of its claimed features was not disclosed to Mr Scorsis.
Did this disclosure constitute a public disclosure?
140. The opponent submitted that there is no evidence that would suggest that Mr Scorsis or Mr Scarlata were under any obligation of confidence in relation to what they observed of the prototype unit and that therefore the invention had been “made available to at least one member of the public who was free in law and equity to use it” (PLG Research Ltd v Ardon International Ltd [1993] FSR 197 at 226 per Aldous J and cited with approval in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90).
141. While I accept that even Mr Fitzgerald does not state that the prototype of the Vac Tank was supplied to the Newport store on a confidential basis, that does not necessarily mean that there was no fetter of confidentiality in relation to the prototype that was used for field testing in the Souvlaki Hut Newport store. It is well established law that a fetter of confidentiality can be implied.

142. It was stated by Drummond J. in Stanway Oyster Cylinders v Marks (1996) AIPC 91-255 that:
"The concept of information being " publicly available" involves, in addition to its being accessible to the public, that a person to whom the information is disclosed in that person's capacity as a member of the public is free, in law and equity, to make use of the information."

143. In Coco v A N Clark (Engineers) Ltd (1969) RPC 41 Megarry J applied a "reasonable man" test on the confidentiality issue. He said:
"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence."

144. Also I note that the delegate of the Commissioner in Bevan James Riekie and Arthur Simpfendorfer v M J McGrath Pty Ltd and Calsil Limited [1985] APO 31 stated:

"It seems clear on the authorities that a duty of confidence does not have to be specified in order to be existent. Furthermore, the existence of an implied duty of confidence does not have to be comprehended by the individual who incurs that duty, although if this be the case it may strongly suggest that such a duty did not exist."
145. The kitchen of a commercial establishment would normally be a restricted area with access generally being limited to staff working in that establishment and there is nothing to suggest that this would not be the case with the Newport store kitchen as well. Therefore it is not the case that the applicant displayed their prototype in a place where any member of the public could observe the Vac Tank and its use. It is also clear from Mr Scorsis’ evidence that he was well aware that the unit was being provided for the purposes of trial. Furthermore Mr Scorsis states that the “Trial Unit had a lid that was normally locked” and that it was unlocked only by Cookers staff when the waste oil had to be removed from the unit or to remove blockages or to fine tune its performance. In my view all of these strongly suggest that there was an implied fetter of confidentiality on the part of Mr Scorsis or any of his other kitchen staff.
146. Therefore in my view even if I am wrong in concluding that the invention including all of its claimed features was not disclosed to Mr Scorsis, this disclosure does not constitute a public disclosure.
147. I am satisfied that the trial of the Vac Tank prototype at the Souvlaki Hut Newport store does not constitute an anticipation of the claimed invention by prior use.
Can the testing of the prototype be considered for the purposes of reasonable trial under s24(1)?
148. Although I do not need to decide on this issue, as I have already found that the claimed invention has not been publicly disclosed to Mr Scorsis by the trial of the prototype at the Newport store, since both parties provided evidence and submissions on this issue I will briefly discuss whether the testing of the Vac Tank prototype at the Souvlaki Hut Newport store could be considered as being for the purposes of reasonable trial.
149. Section 24 of the Patents Act and regulation 2.2(2)(d) provide as follows:
s24(1) For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:

(a) any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; ….

reg 2.2 (2) For paragraph 24 (1) (a) of the Act the following are also prescribed circumstances:

(d) the working in public of the invention within the period of 12 months before the priority date of a claim for the invention:

(i) for the purposes of reasonable trial; and

(ii) if, because of the nature of the invention, it is reasonably necessary for the working to be in public.

150. What is a reasonable trial and experiment was considered in Grove Hill Pty Ltd v Great Western Corp Pty Ltd [2002] FCAFC 183 by Dowsett J (French and Gyles JJ agreeing):
"A statement that an inventor 'knows' that something will work may reflect his or her belief but does not lead to the conclusion that trials are unnecessary."

"If the true purpose of the use is for trial, and the trial is reasonable, any collateral commercial advantage to the inventor is irrelevant."
"As to the question of reasonableness, Mr Mansur's explanation of his objectives must be a relevant consideration. It was said that there was no evidence that his trials addressed the problems identified in the patent and that there were no experimental notebooks or other records. While all of this may be true, it does not necessarily follow that the trials were unreasonable."
"The structured and specific research processes often adopted in experimentation will not necessarily be relevant in trials. The latter process may simply involve 'seeing how it goes', when the invention is employed in the field. In such a situation adjustment and fine tuning may not be recorded as would be the results of laboratory experiments.”

"In assessing what might be reasonable for present purposes, it is necessary to keep in mind the nature of the equipment in question, the tasks for which it was designed, and the conditions under which it is to be used. Clearly, a row cultivator or a tool for a row cultivator will have to be very robust to enable it to resist the rough nature of its likely employment. It will be expected to perform in a wide variety of conditions, both of weather and terrain. It is easy to accept that such a piece of equipment could not be subjected to reasonable trials in anything less than a year, particularly given the seasonal nature of its employment."

151. Recently, in Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 4), [2015] FCA 1372 McKerracher J repeated some of these points:
“what is 'reasonable' in this context will extend beyond merely confirming that the product is functional. It includes trials to learn whether a product needs improvement or to learn how it may be improved”

“It will include also trials aiming to perfect the product, or to test its suitability for commercial use"

“the opportunity for reasonable trial does not cease once a working prototype is available”

152. In summary, it is necessary to determine the true purpose of any trial, having regard to the objectives of the trial, the nature of the equipment and the conditions under which it is to be used, were there adjustments or fine tuning as a result of the trial, did the trial ensure that the invention worked and what was the nature of any commercial benefit to the applicant.
153. The prototype unit was developed by the applicant at the request of Mr Fotiadis and as the prototype was completed around the time the Souvlaki Hut Newport store was about to open it was decided to field test the prototype at this store under the conditions existing in a commercial kitchen and that this testing commenced in December 2006. While it may be possible to simulate a commercial kitchen in a factory, I doubt whether the same conditions of a working commercial kitchen can be recreated in such a simulated kitchen.

154. The trials were conducted in a commercial kitchen which would generally not be accessible to the public at large. It is also clear from the evidence that modifications were made to the prototype as a result of the field testing.

155. In relation to the duration of the trial it is clear that design drawings for the Vac Tank were only produced and sent to the patent attorneys on 16 May 2007 and the priority patent application was filed on 8 June 2007. While training of the Souvlaki Hut staff may have been completed by end of February 2007, that does not necessarily mean that the trial was completed. Mr Fitzgerald has stated that they continued to develop the Vac Tank even after the patent application was filed.

156. Furthermore the prototype was supplied at no cost for the trial and the first commercial lease agreement for supply of the Vac Tank to other stores was signed only in July 2007.
157. In my view all of these strongly suggest that the prior use of the prototype at the Newport store was for the purposes of reasonable trial and that it was reasonably necessary for the trial to have been in public if the commercial kitchen of a fast food establishment can be considered as such.
INVENTIVE STEP
158. The opponent submitted that the claimed invention lacks an inventive in light of the common general knowledge. The basis for this submission is as follows:
·Designers of liquid waste disposal units worked closely with sheet metal workers during the design process
·Designers and sheet metal workers would seek feedback from customers as the problems with existing designs
·Designers and sheet metal workers had a general knowledge of product materials, manufacturing processes and components allocation
·Armed with this common general knowledge the team comprising designers and sheet metal workers would routinely consider what components to include and how to allocate them in order to facilitate the manufacture and functioning of the unit.

159. In the alternative they submitted that the claimed invention lacks an inventive step in light of the common general knowledge together with the public prior use of MQO’s Version 1 waste oil disposal unit.
160. What is missing in the opponent’s case is the total lack of evidence in relation to the common general knowledge in the art and why it would have been a matter of routine to the skilled addressee to arrive at the claimed invention. While Dimitrios Minas states that he modified the Version 1 unit to shift the pump to the bottom of the unit and added a shroud to come up with the Version 2 unit, there is nothing to suggest that such a modification would have been a matter of routine to him or to other persons skilled in the art. In the absence of such evidence I cannot be satisfied that the claimed invention is obvious.
161. This ground of the opposition has not been made out.
ENTITLEMENT
162. The opponent also submitted that the applicant Brooklite is not entitled to the grant of the patent as Peter Fitzgerald who is listed as one of the co-inventors was shown full details of the MQO Version 2 unit. As a consequence Peter Fitzgerald is not an inventor and Brooklite not entitled to the invention.
163. While George Minas has stated that Peter Fitzgerald was shown the Version 2 unit during his visit to MQO, Peter Fitzgerald has refuted this and states that he was only shown the Version 1 unit and that the modifications to place the pump in the bottom of the unit and provide a shroud over the vacuum tube were made by him in collaboration with the team at Mor-Fab.

164. George Minas’s assertion is clearly uncorroborated. I have earlier found that I am not satisfied that the Version 2 unit having all of the features of the claimed invention was developed before the priority date of the claimed invention. It follows that I cannot also be clearly satisfied that the Version 2 unit was shown to Peter Fitzgerald before the priority date.
165. This ground of the opposition has not been made out.
CONCLUSION
166. The opposition is unsuccessful. The claimed invention is not anticipated by prior use and does not lack an inventive step. It is also fairly based. The applicant is also entitled to the invention.
167. Subject to any appeal, I direct that the applicant proceed to grant.
COSTS
168. Costs normally follow the event and there is no reason to depart from this practice. I award costs according to Schedule 8 against the opponent Lazaros Minas.
R Subbarayan
Delegate of the Commissioner of Patents