Novapharm Research (Australia) v Sheiman Ultrasonic Research Foundation Pty Limited
[2005] APO 40
•26 September 2005
ABSTRACTS OF DECISIONS
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Application : No. 753817 in the name of Sheiman Ultrasonic Research Foundation Pty Limited
Title: A sterilisation apparatus
Action: Opposition under s.59 by Novapharm Research (Australia) Pty Ltd.
Decision: Issued 26 September 2005
Abstract
Opposition before the Commissioner was limited to the grounds of fair basis and lack of novelty, including a whole-of-contents objection based on the opponent’s application. In particular, the ground relating to inventorship/entitlement was, by consent, not argued before the Commissioner – the opponent expressing an intention of pursuing this ground in court.
Claims were found to be not novel, and not fairly based, having regard to the correct interpretation to be made of a certain phrase used in the claims. The independent method claim was also found to lack novelty (whole of contents) over the opponent’s application.
Having regard to the opponent’s express intention to pursue the issue of inventorship/entitlement in court, some observations on the evidence were made.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:Patent Application No. 753817 by Sheiman Ultrasonic Research Foundation Pty Limited, and opposition thereto by Novapharm Research (Australia) Pty Ltd.
BACKGROUND
The application was filed by Sheiman Ultrasonic Research Foundation Pty Limited [Sheiman] under the Patent Cooperation Treaty on 17 February 1999 claiming priority from Australian Provisional application PP1897. Following advertisement of acceptance on 31 October 2002, Novapharm Research (Australia) Pty Ltd [Novapharm] opposed the application, and after the usual evidentiary processes, the matter came to hearing in Sydney on 29 August 2005. The applicant was represented by Mr D Clark, Patent Attorney of Blake Dawson Waldron. The opponent was represented by Ms K Howard of counsel, instructed by Mssrs Tansey and Ernst, Patent Attorneys of ShelstonIP.
In the days leading up to the hearing, the opponent indicated that it only wished to pursue the issues of fair basis, novelty, and manner of manufacture. In particular, they did not want to pursue the ground relating to inventorship/entitlement – even though it was the primary subject of the evidence. Following lengthy discussion at the hearing, it was agreed by consent that the ground relating to inventorship/entitlement would be deleted from the Statement of Grounds and Particulars, and would not be argued before me – and that therefore I would make no decision on that matter. There was some concern about the position of the Commissioner vis-à-vis s.60(3), where the Commissioner can have regard to a ground of objection even if it was not relied on by a party. In this regard, I note that the public interest considerations associated with disputed entitlement are fundamentally different to those involved with alleged anticipation. Entitlement is about the essentially private issue of who owns an otherwise valid patent, and in my view it would be rare for there to be a public interest in inventorship/entitlement issues sufficient to invoke s.60(3).
With the opposition being limited to novelty and fair basis, it is fair to note that the declaratory evidence filed in the opposition is essentially irrelevant. The only reference made to it by any of the parties was a relatively minor assertion that there was some evidence of common general knowledge in the evidence. As I indicated at the hearing, I think the determination of the issues argued before me does not require me to have regard to any of the declaratory material provided in evidence.
THE SPECIFICATION
The invention relates to a system for sterilising goods using a nebulised sterilising agent. The invention entails the use of a chamber in which the items to be sterilised are placed, a nebuliser to create nebulised sterilising agent – with the advance being that the nebulised agent is circulated through the system as a result of how the nebulisation occurs, rather than by the use of fans or the like to generate fluid flow through the system. The specification does not indicate the size or type of the objects to be sterilised – so that while sterilisation of medical instruments would be an apparent use, the device could be built to sterilise much larger things.
The bulk of the description describes the use of an ultrasonic aerosol generator apparatus. The particular apparatus is designed such that the fountain created by the ultrasonic transducer in such an apparatus passes through a tube, creating a pressure differential over the length of the tube. By having the tube pass between two chambers within the nebuliser, this pressure differential is used to circulate the nebulised material from one chamber through the sterilising chamber and then back to the other chamber in the nebuliser.
However, while the description is focussed primarily on this construct, at page 11 line 25 it clearly indicates that ‘other means of nebulisation such as heating are within the ambit of the present invention’.
The specification ends with 18 claims, two of which are independent. The independent claims, claims 1 and 12, are:
A sterilisation apparatus comprising:
· An aerosol generator being adapted to generate an aerosol of a sterilising agent; and
· A sterilisation chamber operatively coupled to the aerosol generator so as to receive a recirculatory flow of the aerosol, the aerosol generator being adapted to produce said recirculatory flow and the sterilisation chamber being designed to receive an article requiring sterilisation whereby in operation the recirculatory flow of the aerosol through the sterilisation chamber is effective in sterilising the article.
A method of sterilisation comprising the steps of:
· Providing a sterilisation apparatus including an aerosol generator and a sterilisation chamber operatively coupled to each other;
· Locating an article requiring sterilisation in the sterilisation chamber; and
· Providing a recirculatory flow of an aerosol of a sterilising agent through the sterilisation chamber said recirculatory flow being produced by the aerosol generator whereby in operation the recirculatory flow of the aerosol through the sterilisation chamber is effective in sterilising the article.
{my emphasis added – see below}
I interpose to note here that claims 17 and 18 have a pseudo-dependency on antecedent claims – the named subject matter of the claims being different to the named subject matter of the indicated parent claim. At the hearing the applicant acknowledged the existence of this drafting error; it was agreed that the hearing would proceed on the basis that these claims would be re-framed to be properly dependant upon the relevant parent claims. Additionally, the applicant conceded that claim 15 lacked a fair basis, and expressed an intention to delete that claim.
THE MAIN ISSUE
The opponent reduced their arguments in opposition to:
- Lack of fair basis
- Lack of novelty, based on US3481689, US 4366125, and EP475505 (all published well before the priority date); and
- Whole of contents lack of novelty, based on the opponent’s specification 2002302109 and related provisional application PP4273.
10. The opponent also argued that the invention claimed was not a manner of manufacture. In discussion it became clear that this was not in respect of the patentability of the kind of subject matter described in the specification; rather it was whether the threshold requirement for invention had been met. In this regard the opponent conceded that this ground was entirely contingent on the findings under novelty, and did not require separate consideration.
11. During the course of the hearing, it became apparent that, apart from the whole of contents issue, the entire opposition stood or fell on the basis of the interpretation to be placed on the phrases I have highlighted in the claims above. On the interpretation pressed by the opponent, the claims are not fairly based and lacked novelty. On the interpretation pressed by the applicant, the claims are fairly based and novel.
12. The opponent’s argument was that the phrase highlighted in the claims above did not give any indication as to how the aerosol generator produced the recirculatory flow. Thus it could be the particular arrangement detailed in the specification (that is, a fountain passing through a tube). Or it could be a fan incorporated in the aerosol generator. Or it could be an external fan operatively connected to the nebuliser (thereby ‘adapting’ the nebuliser to have the relevant function). The opponent asserted that the essential feature of the invention was that the aerosol generator circulated the aerosol without a fan, and that the claim should positively exclude the presence of a fan. According to the opponent, without this limitation the claims read directly onto the citations.
13. The applicant argued that the highlighted phrase adequately defined an aerosol generator that generated a flow of aerosol. Further, they argued that they did not want to positively exclude a fan – as a fan might reasonably be added to the arrangement in order to assist the basic airflow. The applicant noted that an express exclusion of a fan would provide an easy way of avoiding infringement, and therefore was not keen to make this limitation.
14. On the interpretation of this critical phrase, I essentially agree with the views of the opponent. The phrase does not set out any constructional details of the aerosol generator. In the absence of constructional details, the aerosol generator of the claim can be taken as being a ‘black box’ having the functional ability of producing an aerosol. The highlighted phrase requires the ‘black box’ be ‘adapted to produce said recirculatory flow’. But the manner of adaption is entirely unstated. It could, for example, be by the passive internal construction of how the aerosol generator is manufactured – such as by ensuring an ultrasonic fountain passes through a tube in the ‘black box’. Or it could be an active internal construction – such as an internal fan (or any other device for generating flow) within the ‘black box’. Or it could be an active or passive addition external to the ‘black box’ to adapt it in a way so as to produce the effect – such as by adding a fan and connecting pipe to the outlet of the aerosol generator.
15. The consequences of this interpretational issue are quite clear. Firstly, as described the invention entails the use of an aerosol generator that does not require a fan or other such active device to generate flow of the aerosol. Rather the flow is generated by certain properties of the nebuliser used. The failure to adequately limit the claimed invention [either by excluding fans, or to relevant aerosol generator constructions] necessarily renders the relevant claims not fairly based.
16. Secondly, in so far as the claims include devices such as fans to generate the aerosol flow, claim 1 reads directly on to the disclosures of :
- US3481689. Fig 2 shows a recirculatory path through the sterilisation chamber (23). The ‘aerosol generator being adapted to produce said recirculatory flow’ is the ultrasonic atomiser (1) ‘adapted’ via the fan (19) connecting pipe and valve (20) to generate the recirculatory flow.
- US4366125. Fig 1 (left-hand fig below) shows an apparatus for sterilising a film. The film passes through a sterilisation chamber at B, where it is exposed to nebulised H2O2. The H2O2 is generated in a nebuliser (right-hand figure below), which is connected to the sterilisation chamber. The ‘aerosol generator being adapted to produce said recirculatory flow’ is the atomiser of Fig 2, with mist supply pipes (13) and mist-exhaust pipes (14), the ‘mist’ being carried by ‘a current of aseptic air’ which enters the nebuliser through ‘an inlet pipe (27)’.
[I note that the facts that this citation involves the subsequent application of UV radiation for sterilisation in addition to the use of H2O2, and that it is for sterilising a web passing through a chamber, do not detract from the fact that the present claims read directly onto the construction of this citation.]
17. The opponent also argues that the claims read on to EP475505, but I disagree. This citation includes most of the features of the claim. It includes a recirculatory path (15) for the air flow through a filter (27) and the sterilisation chamber (12). But importantly the aerosol is produced by the nozzle (26) in the recirculatory path, supplied by a fluid source (24) outside of the path. The flow in the recirculatory path is generated by the fan (20). In the construction of this device, I do not think it is reasonable to interpret the atomiser (26) (being the aerosol generator of the claims) as having been adapted to produce the recirculatory flow. Rather, it has been placed within the recirculatory flow, with there being no recirculation back to the fluid source for the atomiser.
18. Accordingly I find claims 1 and 15 to be lacking novelty over US specifications 3481689 and 4366125 – but not over EP 475505.
19. The opponent asserts that US3481689 additionally renders claims 2, 4, 9, 12 and 13 not novel. And US4366125 additionally renders claims 2 to 13 not novel. Given the causal relationship between the interpretation of the highlighted phrase and the novelty issue, I consider I don’t need to undertake a detailed consideration of these dependant claims – since any rectification of the difficulties with the highlighted phrase should flow through to these dependant claims.
WHOLE OF CONTENTS NOVELTY
20. The opponent also argued that the claims lacked novelty (whole-of-contents) based on the opponent’s complete application 2002302109, with priority claimed from the opponent’s provisional application PP4273 (which was filed after the applicant’s provisional application PP1897, but before the applicant’s complete application was filed).
21. While the opponent’s submissions did not address the issue of whether the requirements of subparagraphs (A) and (C) of the definition of the prior art base had been met (that is, the relevant disclosure is in the provisional, and in the complete specification both at filing and publication), I am satisfied that those requirements are in fact met.
22. The opponent’s argument is founded on two issues. Firstly, the applicant’s provisional specification describes the device as being used with a ‘detergent’ – whereas the complete specification refers to the use of a ‘sterilising agent’. Because detergents are not necessarily (or even generally) sterilising agents, the current application is deprived of any right to claim priority from the provisional application. Secondly, they assert that the apparatus in the citation discloses recirculatory flow [and the necessary type of nebuliser] – thereby anticipating the present claims.
23. On the issue of ‘detergent’ versus ‘sterilising agent’, it is clear that the applicant’s provisional specification is framed around the use of a detergent for sterilisation. Thus the first paragraph states:
Using aerosol detergent for disinfection and sterilisation enables the combination of the benefits of both liquid and gas sterilisation’
And the specification consistently refers to detergents, and not sterilising agents. The difficulty for the applicant arises because while detergents can be sterilising agents, not all detergents are sterilising agents. And not all sterilising agents are detergents. Furthermore I doubt that the terms ‘detergents’ and ‘sterilising agents’ are such that one can be used as a synonym of, or even an allusion to, the other.
24. The specification does make one reference to a ‘sterilising agent’ – in the 2nd last line of the first page. But this is clearly in the context of a precedent paragraph which states:
The use of aerosol detergents combines the benefits of a liquid form of detergent and the ability of gases to permeate….
leaving no doubt that the ‘sterilising agent’ being referred to is the product of atomising a detergent; it is not a reference to using a sterilising agent generally. Overall, a fair reading of the provisional specification leads to a conclusion that the invention achieves sterilisation through the use of aerosol detergent, with the desirable properties arising as a result of the nebulisation. Accordingly I am satisfied that the disclosure of PP1897 is limited (by its express terms) to the use of detergents, and that there is no real and reasonably clear disclosure of the use of sterilising agents as such.
25. The applicant has suggested that the use of detergent rather than sterilising agent arose from a poor knowledge of English when he drafted the specification. While this might be an explanation, it does not alter the meaning of the document – which must be construed by the notional person skilled in the art, not the author.
26. The opponent argues that this issue deprives all claims of the right of priority based on the provisional application. But as I indicated at the hearing, I am at a loss to understand how this issue has any impact on the claims to the apparatus. It could be that the properties of a liquid to be used in an apparatus will impose a limitation by result on the apparatus. For example, if the device was required to be able to use hydrofluoric acid, there would be certain functional constraints (such as the avoidance of the use of glass) that would not exist if the apparatus only had to use water. The opponent did not point out any relevant differences in functional requirements arising as between detergents and sterilising agents, and none is apparent to me either. Accordingly I do not believe this issue deprives the apparatus claims of the priority date of the filing of PP1897. That is, no objection of lack of novelty (whole of contents) arises with respect to claims 1 to 12, 16 and 17 on the basis of the opponent’s specification.
27. Nevertheless, method claims 12 to 15 expressly include the step of providing a flow of a sterilising agent. While it might be argued that the method claims are intended to be no more than the use of the apparatus, the method claims do specifically require the use of a sterilising agent rather than a detergent as an essential element. This being the case, and in the absence of a ‘real and reasonably clear disclosure’ of the use of a sterilising agent, I am satisfied that the priority date for the method claims is the date of filing the complete application – not the provisional application. Accordingly the opponent’s application is part of the prior art base for consideration of whole of contents novelty as against the method claims.
28. In comparing the citation against the present claims, the correspondence of the features is generally self-evident. The essential issue for consideration is the existence of a recirculatory flow of the aerosol as between the aerosol generator and the sterilisation chamber. In method claim 12, this comes from the last paragraph of the claim, where there is a recirculatory flow through the sterilisation chamber, and that flow is produced by the aerosol generator. And as depicted in the drawings, the generator is external to the sterilisation chamber, with the aerosol going from the nebuliser to one end of the chamber, through the chamber, and then back to the nebuliser.
29. The citation is concerned with a sterilisation method and apparatus. The apparatus is illustrated in 3 forms. Each form has a closed sterilisation chamber. In the first form, the nebuliser is located outside of the chamber. The nebuliser has an outlet connected to the chamber for the aerosol. It also has a port on its side for the admission of air. The port is described as ‘The air intake 5 provides the necessary air from outside the chamber’ – which is clearly a reference to the need to admit air to the nebuliser to replace that expelled through the outlet (as otherwise the pressure differential required to generate the outlet flow could not arise). The second and third forms have the nebuliser located within the sterilising chamber. Again, the nebuliser has a port on its side – described as ‘The air intake 5 provides the necessary air from inside the chamber’ [Fig 2] and ‘air intake 5 still provides the necessary air from within the enclosed chamber 2’ [Fig 3 – reproduced below]. That is, the purpose of the port in the 2nd and 3rd forms is exactly the same as in the first form. And the specification goes on to state:
The advantage of configurations shown in Figures 2 and 3, and similar configurations is that they provide a completely sealed system. The disinfectant both prior to, and after, nebulisation is contained within the sealed system, providing significant advantages over unsealed systems where the disinfectant has implications with respect to human health and safety.
30. The opponent argues that the apparatus of Figures 2 and 3 necessarily discloses a recirculatory system – in that the air intake 5 will necessarily return some of the aerosol that has been previously nebulised back into the nebuliser.
31. An important feature of the present invention is that of the recirculatory flow of the sterilising aerosol. The citation does not provide any suggestion of a desire to recirculate the nebulised material – but this is not relevant if the arrangement is such that recirculation necessarily occurs. Superficially, the arrangement depicted in the citation and that described in the present application differ in a material way. In the present application the nebuliser is external to the chamber – with a recirculatory path being clearly defined as passing through the chamber. In the citation, the nebuliser is internal to the chamber – and one might question the existence of a recirculatory path through the chamber. But topologically the two arrangements are in fact identical, and the language of the claim is insufficient to distinguish them. In both arrangements, the nebuliser outlet, aerosol chamber, and aerosol input provide a closed circuit. The difference of whether the nebuliser is internal or external to the chamber does not alter the fact of a closed circulatory path through the chamber. Accordingly I am satisfied that the citation discloses the use of a ‘recirculatory flow of an aerosol of a sterilising agent through the sterilisation chamber’, as required by claim 12. I am also satisfied that the remaining features of claim 12 are clearly disclosed in the citation in the manner required for the whole of contents objection. Accordingly claim 12 is not novel.
32. Claims 13 to 15 add minor features to claim 12. The opponent does not suggest that these features are disclosed in their application – in which case no whole-of-contents novelty objection arises. However they do suggest that the feature of claim 13 – of condensing the aerosol within or on an article – is inherent. The present specification clearly describes non-inherent means to achieve condensation – such as a further ultrasonic transducer, a heater, or pressurization of the chamber. To the extent that the claim specifies the ‘further’ step of condensing the aerosol, I consider the claim is addressed to something additional to inherent behaviour. Accordingly I am satisfied that claim 13 is not anticipated by the opponent’s application.
OBVIOUSNESS
33. Under s.60(3) of the Act, the Commissioner is entitled to consider a ground of opposition even if it is not relied upon by the opponent. This provision reflects the public interest role of the Commissioner – in ensuring clearly invalid patents are not granted. As noted above, in the present case the parties agreed not to argue the issue of inventorship/entitlement before me. And because there are no apparent public interest issues associated with this ground of objection, I have not invoked s.60(3). The opponent also chose not to argue the ground of obviousness. There is a clear public interest in dealing with this ground – as it would be quite improper to grant a patent that is clearly lacking an inventive step. For completeness, and given the manner in which this opposition has been conducted, I merely note that I have considered whether there is anything in the evidence that would suggest that the patent (if granted) would be clearly invalid for want of an inventive step – and nothing has come to my attention to suggest I should consider this ground of objection.
DECISION
34. From the above, I conclude as follows:
- Independent claims 1 and 12 are not fairly based on the specification, and lack novelty on the basis of US specifications 3481689 and 4366125;
- That the difficulty arises from the interpretation to be placed on the phrases
- the aerosol generator being adapted to produce said recirculatory flow [Claim 1]
- said recirculatory flow being produced by the aerosol generator [Claim 12]
- That the issue of lack of fair basis and lack of novelty may also apply to certain dependant claims, but that this would likely be rectified as a consequence of better elaboration the requirements intended by the above phrases.
- Claim 12 is not novel (whole of contents) based on the opponent’s application 2002302109 and related provisional application PP4273.
- Claim 15 is (by concession) lacking in fair basis, and claims 17 and 18 are unclear through the nature of their dependency.
35. In my view these deficiencies can be readily overcome by way of amendment. Accordingly I allow 60 days from the date of this decision for the applicant to file amendments intended to overcome these deficiencies.
36. With regard to the nature of these amendments, I note that the opponent has strongly asserted that the applicant should positively exclude the presence of a fan. However, there is a clear difference of impact between being able to avoid the use of a fan and expressly excluding a fan. As I read the specification, the invention relies upon a form of nebuliser which avoids the need for a fan to circulate the aerosol. And while one way to define this avoidance is to expressly exclude a fan, it is in my view quite likely that the applicant may be able to define this aspect of the invention without such express exclusion – by specifying relevant constructional details of the nebuliser, such as in the corresponding US and EP patents.
COSTS
37. In opposition proceedings before the Commissioner, costs would usually follow the event. But the present case is significantly unusual in several respects.
38. The vast bulk of the evidentiary material relates to the ground of inventorship/entitlement. Less than a week prior to the hearing, the opponent indicated that it would not be arguing this ground. They also expressly refused to resile from their assertions of lack of inventorship/entitlement, preferring to reserve the right to pursue this matter before the courts. In my view, the circumstances provide a good basis to award actual costs (at least in respect of this issue) against the opponent. In addition, the citations relied upon by the opponent, while being referred to in the Statement of Grounds and Particulars, were not referred to or relied upon in their evidence until the evidence-in-reply stage – such that essentially nothing in their evidence in support was relevant to the ultimate proceedings.
39. The applicant apparently prepared most of the evidence in answer without the services of a legal adviser. Costs are not awardable in respect of personal effort, and so there would appear to be little basis for the applicant to claim costs in respect of preparing the evidence in response to the inventorship/entitlement issue. Furthermore, the applicant’s evidence was not well presented, and further evidence was filed at various stages after evidence in answer was complete. In this regard, the conduct of the applicant has almost certainly incurred extra expense for the opponent.
40. At the hearing, both parties submitted that costs should be either in the event, or no award of costs. In all the circumstances, I think it is appropriate to make no award of costs.
EVIDENTIARY MATTERS
41. In proceedings before the Commissioner, it is not uncommon for there to be disagreements over evidence, with various assertions about credibility being made. In most situations there are plausible explanations, and all issues in the opposition are fully resolved as a result of the Commissioner’s decision in the opposition – such that there is little residual concern with the allegations that require comment in their own right.
42. The conduct of this opposition has been somewhat unusual. Less than a week before the hearing the opponent notified the Commissioner that they would not be arguing inventorship/entitlement before the Commissioner. They stated (in their written submissions):
Notwithstanding the opponent’s far greater evidentiary strength, the opponent believes that given all the circumstances, the best forum for determining inventorship is the Federal Court and intends to pursue the issue in that forum subsequent to those proceedings, when the final scope of the claims is resolved.
43. At the hearing I raised concerns about two specific matters in the opponent’s evidence. In particular, Mr Sheiman has consistently argued that two significant documents in evidence against him are fraudulent. The documents in question formed part of the evidence with respect to the issue of inventorship/entitlement. The allegations of fraud have been made for some time, and the opponent has had full opportunity to respond to them in their evidence. I am concerned that Mr Sheiman’s allegations cannot be readily dismissed. Because the opponent has expressly threatened pursuing the inventorship/entitlement issue in court proceedings, and the issue was properly before me, I consider it appropriate to briefly detail my reasons for concern.
44. The relevant documents are contained in the evidence of the two principal declarants for the opponent. Both declarants apparently hold senior positions in the company. I also note that the relevant declarations were executed under the Statutory Declarations Act 1959 – which would normally provide good reason to accept the veracity of the declarations at face value.
45. One of the documents alleged by Mr Sheiman to be fraudulent was a confidentiality agreement said to have been executed in 1993 or early 1994. On 1 August 1994 Mr Sheiman signed a formal contract of employment with the opponent, together with a related confidentiality agreement. The allegedly fraudulent document relates to the relationship between Mr Sheiman and the opponent in early 1994, at the time when certain activities were recorded in a laboratory notebook of the opponent. The document is used to support an argument that the present invention belongs to the opponent.
46. In response to a Notice to Produce the original of this confidentiality agreement, the opponent advised that it was destroyed in a hail storm that caused serious damage to the opponent’s premises in April 1999. In evidence in reply the declarant declares:
I have no doubt whatsoever that the signatures on {the confidentiality agreement} are his and mine and that therefore {the confidentiality agreement} was signed by Sheiman in my presence. His signature need only be compared with other documents (eg {the confidentiality agreement signed on 1 August 1994}) to prove that.
47. The difficulty that I have is that the signatures are not only the same – they are exactly the same. Particularly noteworthy is that each signature is written above a line of dots, and the strokes of the signature cross the dotted line in EXACTLY the same location – including the extent to which the strokes partially overlap the dots. Mr Sheiman has strongly asserted that he never signed the document in question. Whilst I do not have before me any evidence from handwriting experts, I think the two signature blocks are so identical that there is a real question of the signature block on the relevant document being a facsimile of the signature block on the 1 August 1994 agreement.
48. The other document alleged by Mr Sheiman to be fraudulent was a receipt for the purchase of two nebulisers. This receipt is used in the opponent’s evidence to support its contention that there was ongoing work within the opponent company, independent of Mr Sheiman. The receipt bore the date of ‘25.09.95’. Less than two weeks before the hearing I issued a Notice to Produce the original of the receipt. On the last working day before the hearing, the declarant retracted the asserted date of the receipt.
49. The declarant filed a Statutory Declaration explaining the manner in which the exhibited document was created. The explanation was associated with difficulties in displaying Cyrillic characters in an emailed receipt, conversion into Roman characters using Microsoft Word, and the use of a Date Field. He concludes with the concession ‘I agree that it is possible that the date displayed on the {exhibited receipt} was incorrect and the correct date is probably mid 1998…’
50. The declaration, executed on 25 August 2005, exhibits a floppy disk containing a Word™ file. The declarant certifies “that the accompanying disk, labelled AS11 Document, is a true and correct copy of the file which was stored on a hard drive.” I have opened that file in a manner that allows the history of past editing to be viewed. On my reading, the information in the file was originally entered on 1 October 1999 (under a user name of Alexandre Katalov) specifying a receipt date of ‘25.09.99’. The file was edited on several subsequent occasions, including (apparently) on 25 August 2005 (the date of the Statutory Declaration setting out the explanation for the receipt). On my understanding of the editing information contained in the file, that information would appear to contradict the declarant’s explanation of the date on the receipt in evidence.
51. Clearly the issues surrounding the signatures, and of the date on the receipt put in evidence, are serious. They have the potential to impugn the totality of the evidence of the two principal declarants for the opponent. There may be perfectly logical and credible explanations for these documents that I have not appreciated, particularly since I have not had the benefit of evidence from handwriting experts, or computer experts. And the declarants have not had an opportunity to be cross-examined on these issues. Accordingly I expressly state that I make no findings in relation to these issues, and I draw no inferences from them.
D Herald
Deputy Commissioner of Patents
26 September 2005
Patent attorneys for the applicant : ShelstonIP, Sydney
Patent attorneys for the opponent : Blake Dawson Waldron, Sydney
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