Malcolm Armitage v Rhino Plural Component Systems Pty Ltd

[1999] APO 29

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 Plural Component Membrane Systems Pty Ltd

Decision:          Issued            .

Abstract

I am satisfied that the applicant 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 the employer company is such an eligible person.

The liquidator’s Report to Creditors states that assets of the employer company, including the patent applications under consideration, have been sold to two other companies.  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 the employer company, is clear.

Therefore, I will allow 21 days from the date of this decision for the purchasers of the intellectual property rights of the employer company 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.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. PO 4363, PO 4737 and PO 4933 by Thomas Malcolm Armitage and a request under section 36 of the Patents Act 1990 by Rhino Plural Component Membrane Systems Pty Ltd

BACKGROUND

Provisional patent applications PO 4363, PO4737 and PO 4933 were filed on 23 December 1996, 23 January 1997 and 4 February 1997 respectively by Thomas Malcolm Armitage (Armitage).  Each application was advertised as withdrawn not open to public inspection in the Official Journal dated 13 March 1997.

On 21 March 1997, a section 36 request, relating to each of the applications, was filed by Rhino Plural Component Membrane Systems Pty Ltd (Rhino Plural).

The grounds upon which the section 36 request was made are as follows:

“SCHEDULE

1.Pursuant to Heads of Agreement signed in or about June 1995 Rhino Plural Component Membrane Systems Pty Ltd (In Provisional Liquidation) ACN 068 570 730 (hereinafter referred to as "the company") was incorporated, inter alia, to develop and exploit throughout Australia the invention the subject of Patent Application No. PO 4363.

2.At all material times Thomas Malcolm Armitage (also known as Malcolm Thomas Armitage and hereinafter referred to as "Armitage") was:

·Managing Director of the company; and

·employed by the company as Product Development Manager.

3.By virtue of his employment by the company and his position as Managing Director of the company Armitage owed to the company fiduciary duties.

4.In the ordinary course of business the company developed through its various officers, employees and external consultants, the invention the subject of Patent Application No. PO 4363.

5.Armitage has filed Patent Application No. PO 4363 seeking the issuance of a patent in his own name with respect to the invention the subject of the said application.

6.By virtue of the employment of Armitage by the company and having regard to his duties within the company, Rhino Plural Component Membrane Systems Pty Ltd would, on the grant of a patent for the invention described in Patent Application No. PO 4363 be entitled to have the patent assigned to it.”

The same Schedule (with the application number changed) also listed the section 36 grounds in relation to PO 4737 and PO 4933.

Evidence in support of the request, in the form of a Statutory Declaration by Michael John Kimmins (solicitor) together with a number of exhibits, was filed on 23 June 1997.

Evidence in answer, in the form of four Statutory Declarations by Thomas Malcolm Armitage, one Statutory Declaration by Barbara Mary Armitage, an unsigned Statutory Declaration by Lesley Arthur Keen, and a Statutory Declaration by Neville Ronald Hack together with a number of attachments, was filed on 17 September 1997.

On 21 December 1998, after reading the evidence and written submissions on file, I wrote to both parties seeking to clarify matters as follows:

“Re: Patent Application No. PO 4363, PO 4737 and PO 4933 by Thomas Malcolm Armitage and a request under section 36 of the Patents Act 1990 by Rhino Plural Component Membrane Systems Pty Ltd

I refer to the above matter, which is scheduled for hearing on 28 January 1999.  As the Hearing officer in this matter, I have read all the evidence and submissions that have been filed with the Commissioner to date.  I have some concerns in relation to the evidence as a significant proportion of it relates to allegations of the behaviour of the parties that is not directly relevant to determining who owns the rights to any granted patent.

Having regard to the circumstances of this case, I note that the Commissioner only has power to determine matters in relation to the administration of the Patents Act; he has no power or authority to determine issues that fall under civil, criminal, or other jurisdictions.

Without wishing to limit the manner and scope of any submissions you wish to make I consider it necessary that you address the following points at the hearing:

·who is the actual inventor(s)?

·in whom do the rights to the grant of any patents reside? and

·why do the rights reside with that person(s)?”

Armitage was represented by Mr David Rainey (Rainey) of Pizzeys, patent attorneys, Canberra and Rhino Plural by Mr Richard B Hughes (Hughes), who represents himself as Managing Director of Rhino Plural, New Lambton NSW.

On 6 January Hughes responded to my letter, on Rhino Systems International Pty Limited letterhead, as follows:

“Dear Sir: Re: Your letter 21/12/98, copy attached.

You have posed three questions:

i.         Who is the actual inventor(s)?

ii.         In whom do the rights to the grant of any patents reside? and

iii.       Why do the rights reside with that person(s)?

My answers to those questions are as follows:

I.         The Trowel Grade material was 'invented' by David Twining, the former
director and founder of Rhino Systems International Pty.  Limited whilst he was operating a subsidiary company Rhino Systems International Inc. in Houston Texas, USA.  The product continues to be used and manufactured by that company.  The "apparatus for delivering fluid under pressure" was invented by Michael Burke of Queensland Hydraulics (TEL: [phone]) of Fortitude Valley, Queensland, as was the "valve assembly".

II.        I believe the rights to the grant of all patents reside with Rhino Plural Component Membrane Systems Pty Limited (RPCMS).  In the Statutory Declaration sworn by Mr. Armitage (paragraph xiii) he states they would be assigned to RPCMS pending agreement from me.  I did and do so agree.  I must point out that the Armitages signed two confidentiality agreements with Rhino Systems International Pty.  Limited both of which had clauses similar to clause 18 in the Joint Venture Agreement which was submitted by Mr. Armitage as part of his Declaration, which states "Canon covenants that it shall not during the term of this Agreement or thereafter, use, exploit or disclose to any person any information supplied by Rhino or otherwise acquired by Canon relating to the Rhino Products or its system of application or any modifications or improvements to the Rhino Products or its system of application...". The patent applications are in contravention of this agreement.

III.      The rights reside with RPCMS.  Even Armitage himself has sworn in his writ to the Supreme Court of Queensland (paragraph 31) that during late 1995 and 1996 the three 'inventions' were developed with the assistance of a Federal grant. You will find that elsewhere in his submission Armitage has included a copy of the AusIndustry Grant Application made in the name of RPCMS… 

This company acquired the Intellectual Property including the rights to these Patent Applications from the liquidators in August, 1997 as confirmed by Mr. Armitage in his Statutory Declaration, paragraph xxi.

Although the Armitage interests had several writs issued, only one "Rhino" matter has gone to court.  The court found in favour of my interests.  To the best of my knowledge there are no other matters listed for court action.

I have tried to be brief... it really is difficult!”

Rainey responded on 27 January as follows:

“Regarding Mr Sawyer's letter dated 21 December 1998, we submit that our client’s evidence indicates that Thomas Malcolm Armitage is the actual inventor, that rights to the grant of any patents reside in him, and do so because of his inventorship.”

The hearing, set down in Canberra for 28 January 1999, did not proceed as Hughes advised that he would be out of the country and Rainey advised that he had had received no instructions to attend. 

On the morning of the hearing, Barbara Armitage, wife of the patent applicant Armitage, rang the Office to say that Armitage wished to submit further evidence in the matter.  I agreed to allow a week from the hearing date for a request for further evidence (apparently already available) to be filed but would proceed to issue my decision if a request was not received within that time. 

DECISION

Legislation

36. (1) Where:
(a)       a patent application has been made and, in the case of a complete application, the patent request and complete specification have not been accepted; and
(b)       the Commissioner is satisfied, on application made by a person in accordance with the regulations, that the nominated person is not an eligible person in relation to an invention disclosed in a specification filed in relation to the application but that some other person is an eligible person in relation to the invention as so disclosed;
the Commissioner may (whether or not the patent application lapses or is withdrawn) declare in writing that the other person is such an eligible person.
(2) The Commissioner must not make a declaration without first giving the nominated person a reasonable opportunity to be heard.

(3) If a complete application is made under section 29 by a person so declared, the priority date of the claims of a patent granted to the person for the invention must be determined under the regulations.
(4) An appeal lies to the Federal Court against a decision by the Commissioner under this section.

In this matter I have to determine who is entitled to the rights to the grant of any patent resulting from the provisional applications PO 4363, PO 4737 and PO 4933 (the applications).  The questions I asked the parties on 21 December 1998 were designed to help me decide the matter.

I will deal with each question in turn.

Question 1 - who is the actual inventor(s)?

I have conflicting statements from Hughes and Rainey.

Hughes submits that David Twining, the former director and founder of Rhino Systems International Pty Limited whilst he was operating a subsidiary company Rhino Systems International Inc. in Houston Texas, USA invented the trowel grade material, presumably the bitumen composition of PO 4933.  He also submits that ‘the “apparatus for delivering fluid under pressure” was invented by Michael Burke of Queensland Hydraulics … of Fortitude Valley, Queensland, as was the “valve assembly”.’  Presumably, these are the subjects of PO 4363 and PO 4737.

Rainey submits that the evidence shows that Armitage is the actual inventor of all three applications.  Armitage is named on the Patent Request form accompanying each application as the actual inventor.

The evidence is also similarly conflicting.

On one hand I have assertions about inventorship in the statutory declaration by Michael John Kimmins. These assertions include statements made by Hughes in an Affidavit made to the Supreme Court of Queensland which suggest that Armitage and others had input to the development of the inventions under consideration.   The assertions are that Rhino Plural “through Armitage and/or other employees and/or independent contractors, developed the relevant inventions.” (paragraph 21 of the Kimmins declaration)

These assertions are illustrated by a number of points one of which is a reference to a copy of a competitive grant application to AusIndustry, and another is a reference to a copy of a competitive loan application, both completed by Armitage on behalf of Rhino Plural.  The competitive loan application includes the paragraph

“Innovation: Product David Twining.  US based at present.  Original pioneer of the system and Malcolm Armitage, with then assistance of Dupont Technical Laboratories and Emoleum.”

On the other hand in statutory declarations dated 16 September 1997 Armitage declares

“I was employed as Managing Director of Rhino Plural Component Membrane Systems Pty Ltd (RPCMS) not in any way as product development manager (Annex 1, Heads of Agreement Item 9).  The System was represented to me by the two directors of Rhino Systems International Pty Ltd as being … (sic)  At no time was I informed that the System required serious research and development, had I been so informed, I would not have entered the joint-venture under the original Heads of Agreement, if at all.

The Rhino System had been presented to me as fully complete and included, a unique plural component bituminous membrane, installation equipment and trowel-grade material.  The installation equipment proved to be ad-hoc and the trowel-grade never materialised.  The director of RSI, David Twining, who also claimed to be the inventor of the plural membrane, who at the time of the joint-venture was operating from Rhino Systems International Inc, Texas USA sent information which was of no assistance whatsoever…”, and

“I was the sole inventor of all of the intellectual property contained in the patent applications using my experience and knowledge of hydraulic pumps and products as an engineer in the water and waste industry.  This specific knowledge had not been deemed to have been necessary when I accepted the role of Managing Director …

The 3 patent applications were totally derived after the conclusion of the Auslndustry Research and Development Grant.  The Grant ran from 8 June, 1995 until 31 March, 1996.  The electrically driven pumps were first identified in May, 1996

In July, 1996 I developed a trowel-grade material.  The main ingredient to bind the bitumen and clay had been known to me from my previous experience as a sewage treatment engineer and from searches done by Cullen & Co, patent attorneys, it was the first time this product had been used in the bitumen industry.

Keen Waterproofing bought a full set of hydraulic equipment subject to patent applications in November, 1996, and Trio Waterproofing Pty Ltd bought a set in December, 1996.  Keen Waterproofing bought trowel-grade material subject to the patent application ongoing from August, 1996 (Annex 6 Statutory Declaration by L Keen).

During the period 1/4/95 - 5/12/96 RPCMS was applying the product on commercial sites, both to test various types of equipment and for working capital.

I accepted the advice of Alison McMillan, Cullen & Co, Patent Attorneys who advised me, without influence, to file the patents in my name.  That in the initial meeting to discuss patents with Alison, I had argued against filing in my name, but that they should be filed in the name of RPCMS.”, and

“AT a meeting with Pat Finnemore, Horwath Brisbane, Richard Hughes attempted to have all intellectual property assigned to RSI without consideration or input, in breach of his fiduciary duties to RPCMS (Annex 7 Shareholders Agreement Item 9.4. Annex 8, License Agreement)

I acceded to the advice of Ms McMillan and had the patents assigned in my name in order to protect the patents and my inventor status.  This was pending an agreement by Hughes that the patents should be retained by RPCMS . Upon such agreement, they would have been assigned to RPCMS.”, and

“I received no consideration whatsoever for my work in inventing the intellectual property, that employees paid by RPCMS were not involved in the invention of the product or equipment, but acted in accordance with their duty statements in that they were employed to apply the product for the profits of RPCMS.”

I accept Armitage’s evidence that he was the inventor as it provides a more detailed and logical description of what led to the development of the inventions.  On the balance of probabilities I accept that Armitage was either the sole inventor of each of the inventions or had the major role in their development.  I cannot resolve this matter further.  In my view, the critical issue is not inventorship but the question of where the rights to any resulting patents reside.

Question 2/3 – in whom do the rights to the grant of any patents reside?  Why do the rights reside with that person(s)?”

I will deal with these two questions together.

Armitage declares

“I acceded to the advice of Ms McMillan and had the patents assigned in my name in order to protect the patents and my inventor status.  This was pending an agreement by Hughes that the patents should be retained by RPCMS . Upon such agreement, they would have been assigned to RPCMS.”

Paragraph 21 subparagraph (i) of the Kimmins declaration refers to correspondence between patent attorneys Cullen & Co of Brisbane and Rhino Plural.  The correspondence originating from Rhino Plural bears the company name and is signed by Barbara Armitage as an officer of Rhino Plural.  The correspondence relates to the filing of the applications under consideration. 

These applications were clearly drafted and filed by Cullen & Co on behalf of Rhino Plural.  The correspondence shows that Armitage was at that time employed by Rhino Plural.

It is therefore clear, in my view, that Armitage developed these inventions whilst in the employ of Rhino Plural. 

But, I need to consider whether Armitage developed these inventions as part of his duties as managing director. 

For a consideration of the employee/employer relationship see Aneeta Window Systems (Vic) Pty Ltd v. K. Shugg Industries Pty Ltd 34 IPR 95. The hearing officer quotes from paragraph 9-302 of Patents for Inventions (4th edition) by T.A. Blanco White:

"Where an employee in the course of his employment makes an invention which it was part of his duty to make, the law imports into the contract of employment a term that the invention is the property of the employer. This term can be altered only by an express agreement that the ordinary relationship of employer and employee shall be excluded, and some other legal relationship created. Where this relationship is not excluded, only the employer has a right to dispose of the invention; if the invention is patentable, it is for him alone to say whether it shall be patented and he can require the employee to do what is necessary to that end. If it is patented in the name of the employee he holds it, and if in joint names he holds his interest, in trust for the employer. Before the invention is patented also, the position of the employee in regard to it is analogous to that of a trustee. Once such a relationship of trustee is established, by the making or patenting of an invention belonging to the employer, it is not terminated by termination of the employment."

Armitage declares that

“I was employed as Managing Director of Rhino Plural Component Membrane Systems Pty Ltd (RPCMS) not in any way as product development manager (Annex 1, Heads of Agreement Item 9).  The System was represented to me by the two directors of Rhino Systems International Pty Ltd as being complete and is the subject of a Writ issued by my family company, Canon Standish (Australia) Pty Ltd (Canon) for Fraudulent Misrepresentation by RSI, Richard Hughes and RPCMS (Annex 2 Letter from P Townley, Halletts, Annex 3 Queensland Supreme Court Writ).  At no time was I informed that the System required serious research and development, had I been so informed, I would not have entered the joint-venture under the original Heads of Agreement, if at all.

The Rhino System had been presented to me as fully complete and included, a unique plural component bituminous membrane, installation equipment and trowel-grade material.  The installation equipment proved to be ad-hoc and the trowel-grade never materialised.  The director of RSI, David Twining, who also claimed to be the inventor of the plural membrane, who at the time of the joint-venture was operating from Rhino Systems International Inc, Texas USA sent information which was of no assistance whatsoever.  Indeed, Hughes has admitted that he was "conned" by Twining (Annex 4, fax from Hughes to John Twining), and Hughes specifically requested I did not advise David Twining of the Grant or of any of the technical information as he would be "jealous" of the inroads we were making, Hughes persuaded Twining in or around September, 1996 to part with his 47% shareholding in RSI for $13,000 which he agreed to without any knowledge of the technical advances made.” and

“I was the sole inventor of all of the intellectual property contained in the patent applications using my experience and knowledge of hydraulic pumps and products as an engineer in the water and waste industry.  This specific knowledge had not been deemed to have been necessary when I accepted the role of Managing Director …”

Armitage declares that he was not employed by Rhino Plural as a product developer and that the intellectual property relating to the equipment and materials to be used with the Rhino Plural process, provided as part of the joint agreement, was “worthless”.  He also declares that he had to use his “experience and knowledge of hydraulic pumps and products as an engineer in the waste and water industry” to develop a system which worked and that “This specific knowledge was not deemed to have been necessary when I accepted the role of managing director”. 

It seems to me that, although the development work was not a specific duty of the Managing Director, Armitage took on the role of developer of the inventions to ensure that the joint venture was successful. 

Therefore, after considering all the evidence before me I believe that Armitage undertook this development work as part of his employment with Rhino plural.  I note that although Armitage received “no consideration whatsoever for” his “work in inventing the intellectual property” the Heads of Agreement made provision for payment of a salary to him once the joint venture showed a profit.

Therefore the applications should have been filed with the name of Rhino Plural as the nominated person.  I can find nothing in evidence to convince me that the rights belong to Armitage or that the “ordinary relationship” between employer and employee did not exist at the time the inventions were made.

I find that entitlement to any rights resulting from provisional patent applications PO 4363, PO 4737 and PO 4933 resides with Rhino Plural.

THE SECTION 36 REQUEST

Section 36 (1) of the Patent Act 1990 applies whether or not a patent application lapses or is withdrawn. Also, applications resulting from a declaration under section 36 are complete applications not provisional applications.

Patent Regulation 3.8 provides:

“An application under section 29 of the Act ("application for patent") of the kind described in:
(d) section 36 ("other applications by eligible persons"); of the Act must be made within 3 months from the date of:
(g)       if paragraph (c) or (d) applies‑the declaration of the Commissioner under subsection 35 (1)  or 36 (1) of the Act, respectively.”

Therefore any new applications in accordance with sections 36(1) and 29 of the Patents Act by Rhino Plural, or another person, in relation to the inventions disclosed in the specifications of PO 4363, PO 4737 and PO 4933 must be complete applications made within 3 months of a declaration under section 36.

The evidence I have before me (dated September 1997) indicates that the company is in the hands of Court appointed provisional liquidators, Messrs JL Grey and RJ Duff of Deloitte Touche Tohmatsu. 

Armitage states in his further evidence (page 5) that “in a telephone conversation, Deloitte’s have not given permission and have no knowledge that Hughes is passing himself off as” Rhino Plural.

Armitage’s evidence also includes a “Report to Creditors” of Rhino Plural, by the provisional liquidators, dated 10 September 1997.  This report includes the following paragraphs

“Intellectual Property

Prior to our appointment., the company's director, Mr Malcolm Armitage filed three Patent applications under the Patents Act to have certain technologies, developed during his employment with Rhino, registered in his name. After receiving legal advice, we were of the view that the patents were property of the company, and not the property of Mr Armitage and accordingly, instructed our solicitors to register the patents in the name of Rhino. The patent applications were subsequently included in the contract for the sale of the company's assets. Title to the patent applications has not been established and is to be determined by the Commissioner of Patents.

Asset Realisations

Upon our appointment the business had ceased trading.  We attempted to recommence the company's business to maximise its value, for the benefit of creditors.  As no orders for product were received, we were unable to sell the company's business as a going concern.

A contract for the sale of the company's assets was signed on 24 July 1997, after advertising in the Courier Mail and The Australian newspapers.  The assets were sold to Rhino Systems International Pty Ltd and Rhino Systems (Australia) Pty Ltd for $60,000 and $20,000 respectively, both of which are associated with Mr Richard Hughes.”

This report shows that the liquidators had sold the assets of Rhino Plural, including the 3 patent applications, to the above named companies and that they were aware that the “title to the patent applications has not been established and is to be determined by the Commissioner of Patents”. Consequently, it seems to me that on 24 July 1997 Hughes was in a position to file a section 36 request on behalf of Rhino Plural to clarify the entitlement to any patents resulting from the application.

The report provides a line of devolution of the patent rights from Rhino Plural to the purchaser(s) of its intellectual property rights.

FURTHER EVIDENCE

The request for further evidence was received on 10 February.  A letter was sent to Rhino Plural informing them of the request and allowing 21 days for a response.  Hughes filed a response on 3 March 1999 and did not object to the request for further evidence and was given 1 month to serve evidence in response to the further evidence. 

I then allowed the request to file further evidence and received a response from Hughes on 5 April 1999.

The evidence consists of a another Statutory Declaration by Armitage, dated 9 February 1999, together with a series of annexes.  This declaration contains material already part of the primary evidence and much about the actions of Hughes and others, of the type referred to in my letter to the parties dated 21 December 1998, that is beyond the scope of the Commissioner’s powers to determine.

There are two issues that I wish to comment on.

1. On pages 4 and 5, Armitage refers to

   “Annex I         Heads of Agreement confirms that I acted as Managing Director of RPCMS which contains that the system was unique and awaiting commercialisation.  I was unpaid throughout, and there is a legal dispute as to whether I was an employee of the company.” and

   “Annex VI       Letter from IP Australia to RPCMS at Hughes’ own personal post office box.  RPCMS is in liquidation.  In a telephone conversation, Deloitte’s have not given permission and have no knowledge that Hughes is passing himself off as RPCMS.”

I have previously concluded that Rhino Plural’s relationship with Armitage is, in my view, one of employer employee.  The further evidence does not change that view.  Even though Armitage was not paid, the Heads of Agreement made provision for payment once the company showed a profit.

The liquidator’s “Report to Creditors” dated 10 September 1997 shows, in the paragraphs previously mentioned, that they are aware of the section 36 request filed on 21 March 1997. The request was filed on 21 March 1997, before the sale of Rhino Plural’s assets on 24 July 1997. As the liquidators were fully aware of the section 36 request, I do not think there is anything to be gained by somebody filing a new section 36 request. Hughes clearly has an interest in seeking a determination under section 36 as the evidence shows he was a Director of Rhino Plural before the company was put into the hands of the provisional liquidators. The fact that the request was made in the name of Rhino Plural rather than someone else does not change my consideration of the substantive issues in the matter or my decision.

In his response Hughes asked the Commissioner to comment on two questions he raised in a letter received on 4 March 1999.

The text of this letter follows.

“If the application to "Serve further evidence filed on 10 February 1999 from the agent for the applicant ... " is to be taken seriously, then the answer is 'yes', I do wish to make representations to be heard within 21 days from the date of your letter…

1         Why then were the applications later re-submitted by her son, in another name, under application numbers PO 5849, P05690, and P05691?

2.        Why, in view of her statement that the applications are worthless, has her husband Thomas Malcolm Armitage also re-submitted the applications?

Around the time that the original applications were withdrawn in February 1997, 1 advised my lawyers that I believed the applications were invalid because [1] they had been commercialized, and [2] the mechanical devices had in fact been 'invented' by Mike Burke of Queensland Hydraulics P/L whilst the bitumen based product was basically the same as the trowel-grade product developed in the USA by my partner David Twining, and was in fact not a 'stand alone' waterproof product as falsely claimed by Mr. Armitage.  Their advice to me was that it was most important that our company ensure that Mr. Armitage did not get patents over these products as he could then make things very difficult for Rhino Systems International both here and overseas… 

I look forward to your comments, and hope that we can all soon put this sorry mess behind us.”

Matters relating to PO 5849, PO5690 and PO5691 are not relevant to my consideration of PO4363, PO4737 and PO4933 under section 36.

If Mr Hughes believes that the withdrawn applications were re-submitted as he alleges then it may be appropriate for the new owner(s) of the Rhino Plural intellectual property assets to pursue the entitlement to any patents resulting from the new applications under section 36.

CONCLUSION

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, including the patent applications under consideration, have been sold to Rhino Systems International Pty Ltd 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.

COSTS

A hearing was not held in this matter.  I have made my decision on the basis of the written material before me.

Ordinarily in proceedings such as these, costs follow the event.  There are no special circumstances applying in the present matter which warrant varying that approach.

Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations against Thomas Malcolm Armitage

Delegate of the Commissioner of Patents
Bob Sawyer

Patent attorneys for Thomas Malcolm Armitage:  Pizzeys