Malcolm Armitage v Rhino Plural Component Membrane Systems Pty Ltd

[1999] APO 35

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. PO4363, PO 4737 and PO 4933 in the name of Malcolm Armitage

Title:          Apparatus for delivering fluid under pressure, Valve assembly and Bitumen composition

Action:          Request under Section 36 by Rhino Systems Component Membrane Systems Pty Ltd – the Declaration under section 36(1)

Decision:          Issued            .

Abstract

I find that Rhino Systems International Pty Ltd has established their entitlement for the section 36 declaration to be made in their name.

Accordingly, I make the following declaration:

Pursuant to subsection 36(1), I declare that Rhino Systems International Pty Ltd is the sole eligible person in relation to all patentable matter disclosed provisional applications PO 4363, PO 4737 and PO 4933.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. by

BACKGROUND

In a decision issued on 4 May 1999 in relation to a section 36 request relating to withdrawn provisional applications PO 4363, PO 4737 and PO 4933 by Thomas Malcolm Armitage I said that

“I am satisfied that Thomas Malcolm Armitage is not an eligible person in relation to an invention disclosed in the specifications of provisional applications PO 4363, PO 4737 and PO 4933, but that Rhino Plural Component Membrane Systems Pty Ltd is such an eligible person.

The liquidator’s Report to Creditors states that assets of Rhino Plural Component Membrane Systems Pty Ltd (Rhino Plural), including the patent applications under consideration, have been sold to Rhino Systems International Pty Ltd (Rhino International) and Rhino Systems Australia Pty Ltd.  However, the report does not make it clear whether the patent applications have been sold to one or the other or to both companies. 

Consequently, I cannot make a declaration under section 36 until the eligibility, consequential to the sale of the assets of Rhino Plural Component Membrane Systems Pty Ltd, is clear. 

Therefore, I will allow 21 days from the date of this decision for the purchasers of the intellectual property rights of Rhino Plural Component Membrane Systems Pty Ltd to establish their consequential entitlement for the section 36 declaration to be made in their name.

Once this has occurred I will issue a declaration under section 36. The new applicant will have 3 months, under regulation 3.8, from the date of that declaration to file complete applications in accordance with sections 36(1) and 29 of the Patents Act 1990.”

On 25 May 1999 I received a copy of the Asset Sale Agreement between Rhino Plural Component Membrane Systems Pty Ltd (In Liquidation) (the vendor) and Rhino Systems International Pty Ltd (the first purchaser) and Rhino Systems (Australia) Pty Ltd. (the second purchaser)

Paragraph 4.2 of the agreement sets out the conditions for the sale of the intellectual property assets of the Vendor to the First Purchaser as follows

“4.2 Obligations of the Vendor at Completion

The obligation of the vendor at completion is to

(a)confer on the First Purchaser title to, and place the First Purchaser in effective possession and control of, the intellectual property;

(b)confer on the Second Purchaser title to, and place the second purchaser in effective possession of, the Remaining Assets…”

In the Agreement “Intellectual Property” means the rights of the vendor in and to:

“(a)     any copyrights, patents, designs, inventions, trade marks, service marks….

(c)any applications for, or rights to obtain or acquire, any intellectual property rights as defined in subclause (a) of this definition….

(f)any rights to use or exploit any idea or thing which is a direct or indirect result of human discovery, creation, invention or effort; and any other intellectual property

and includes:

(h)any interest of the Vendor in the Patent Applications; and

(i)the right to purchase the applications for declaration of an eligible person made by the Vendor on 21 March 1997 in relation to the Patent Applications” and

“Patent Applications” means Australian Patent Applications number PO4737, PO4933, PO4363.”

Consequently I find that Rhino Systems International Pty Ltd has established their entitlement for the section 36 declaration to be made in their name.

Accordingly, I make the following declaration:

Pursuant to subsection 36(1), I declare that Rhino Systems International Pty Ltd is the sole eligible person in relation to all patentable matter disclosed provisional applications PO 4363, PO 4737 and PO 4933.

Bob Sawyer
Delegate of the Commissioner of Patents