Paul Andrew Cronk v the Sunnyfield Association

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.716550 in the name of Paul Andrew CRONK

Title: Adjustable Reflector Device

Action: Opposition under S59 by The Sunnyfield Association

Decision: Issued .
Abstract

The present patent application 716550 relates to a lamp reflector with adjustable curvature. The applicant is also the owner of an earlier Australian patent application for a similar invention 64800/94, (subsequently 679737). This earlier lamp reflector was the subject of a licensing agreement for the manufacture and distribution thereof, with the opponent, The Sunnyfield Association.
The opponent alleged a "whole of contents" lack of novelty and lack of novelty through prior use for the present application in the light of the earlier patent and the sale of the product of that patent respectively. The applicant relied on section 24(1)(b), in essence stating publication or prior use of the present invention by the opponent was without the applicant's consent.
The present application was found to lack novelty (whole of contents) in the light of the applicant's earlier patent. Similarly the application was found to lack novelty (prior use) as a result of sales of the lamp reflector product of the earlier patent during a period of the licensing agreement where distribution was clearly approved by both parties.
Section 24(1)(b) was found not to be applicable as the action of the opponent in selling the above mentioned product during a period between a market development agreement and licensing agreement was with the applicants knowledge and therefore cannot be considered to be without the applicant's consent.
Patentable subject matter was identified in the present specification and as such the applicant allowed sixty days to amend the present specification.
Minor section 40 issues in the present application were recognised and the applicant placed on record his willingness to address these by the filing of a voluntary amendment under section 104.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 716550 by Paul Andrew CRONK and opposition thereto by The Sunnyfield Association under S59 of the Patents Act 1990.

BACKGROUND

Patent application 24416/95 was filed under the Patent Cooperation Treaty as International Patent Application PCT/AU95/00303 in the name of Paul Andrew Cronk (Cronk) on 24 May 1995. It was subsequently advertised as accepted application 716550 on 2 March 2000.
The Sunnyfield Association (Sunnyfield) filed a notice of opposition to patent application 716550 on 29 May 2000. The statement of grounds and particulars was served on 28 August 2000. After various extensions of time allowed to both parties, evidence-in-support was filed on 1 March 2001, evidence-in-answer was completed on 26 April 2002 and finally, evidence-in-reply was completed on 23 October 2002.
The substantive opposition was set down for a hearing in Canberra on 19 February 2003. Cronk was represented by Mr Fraser Old, patent attorney, of Hodgkinson Old McInnes and Sunnyfield was represented by Mr Geoff Davidson, patent attorney, of Halford & Co.
GROUNDS OF OPPOSITION
The grounds for opposition submitted by the opponent were that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b), specifically that the invention as claimed lacks novelty and an inventive step. It was also alleged that the specification filed in respect of the complete application does not comply with subsection 40(2) or 40(3), and in particular the claims are unclear and lack fair basis on the matter described in the description.
At the commencement of the hearing Mr Davidson requested an amendment of the statement of grounds and particulars to formally include particulars of the sales of Adjust-A-Shade reflectors made on 18, 22 and 24 May 1995, as set out in the evidence-in-reply served on the applicant on 23 October 2002. I shall address the allowability of this amendment to the statement of grounds and particulars in my decision below.
EVIDENCE
Evidence-in-support consisted of declarations made by:

· John William HOMAN, dated 21 February 2001. Mr Homan states he is the General Manager of Business Services for Sunnyfield, and has been since 1999. He further states a division of Sunnyfield known as Ablite was developed in 1985 and since that time he has been directly involved with, and fully acquainted with, its products. The declaration includes:

a)Exhibit JWH-1, a photograph of an ADJUST-A-SHADE reflector as manufactured and sold by Ablite in Australia.
b)Exhibit JWH-2, a series of true copies of invoices pertaining to the sale of ADJUST-A-SHADE reflectors by Ablite.

· Ian Alexander MILLAR, dated 27 February 2001. Mr Millar is a registered patent attorney working with Halford & Co, Sydney. Mr Millar's declaration includes:

(a)Exhibit IAM-1, a true copy of Australian patent application 64800/94 as filed with the Australian Patent Office;
(b)Exhibit IAM-2, a true copy of the specification of application number 64800/94 as published as AU 64800/94 by the Patent Office on 25 May 1995;
(c)Exhibit IAM-3, copies of four foreign patent specifications; and
(d)Exhibit IAM-4, a true copy of an agreement between Cronk and Sunnyfield, dated 16 May 1994.
Evidence-in-answer consists of declarations made by:
· Paul Andrew CRONK, dated 26 April 2002, the present inventor. Mr Cronk's declaration includes:

(a)Exhibit PAC1, an Affidavit of John Sheperd, dated 27 November 1998;
(b)Exhibit PAC2 an Affidavit of John William Homan, dated 27 November 1998;
(c)Exhibit PAC3 an Affidavit of John Knox Douglas Ferguson, dated 27 November 1998;
(d)Exhibit PAC4 an Affidavit of Paul Andrew Cronk, dated 3 August 1998;
(e)Exhibit PAC5 an Affidavit of Paul Andrew Cronk, dated 28 January 1999;
(f)Exhibit PAC6, Transcript of NSW Supreme Court Proceedings, 1-3 March 1999 and 21-21 April 1999, Paul Andrew Cronk and Ors. v The Sunnyfield Association t/as Ablite Industries [1999] NSWSC 1038;
(g)Exhibit PAC7, Decision of Supreme Court SIMOS J in Paul Andrew Cronk and Ors. v The Sunnyfield Association t/as Ablite Industries [1999] NSWSC 1038;
(h)Exhibit PAC8, a photocopy of a Declaration of Confidentiality dated 17 February 1994 signed by two representatives of Sunnyfield;
(i)Exhibit PAC9, a price list for Horticultural Lighting giving Ablite March 1995 prices;
(j)Exhibit PAC10, an undated memo to a Phil Cox from John Ferguson (sales manager, Sunnyfield, my emphasis) requesting payment of $409 be made to Mr Cronk;
(k)Exhibit PAC11, a copy of an undated memo to Mr Cronk from Sunnyfield showing calculations of commission in respect of June and July 1995; and
(l)Exhibit PAC12, a copy of a memo to Mr Cronk from Sunnyfield, showing calculation of commission, in respect of August 1995.
· Jeffrey David KING, dated 26 September 2001. Mr King states he is a Research and Development Engineer with Wadco Lighting having held that position for six years. He further states, for the previous 20 years he was a Technical Officer with Testing and Certification Australia, operating in photometry. He concedes he is not a university graduate, but claims to have considerable experience in the lighting field.
Evidence-in-reply consists of a declaration made by
· John William HOMAN, dated 6 September 2002, including Exhibit JWH2-1 comprising true copies of May 1995 stock history cards pertaining to the sale by Ablite of ADJUST-A-SHADE reflectors as indicated in his earlier declaration.
THE SPECIFICATION
The present invention relates to an adjustable reflector device for reflecting light emitted by artificial sources.
It is stated in the prior art of the invention that many types of reflector devices are currently known, but these all require that a fixed shape and/or fixed lamp mounting position within that shape be precisely specified to create optimal light distribution for a particular purpose. It is said the known devices have the disadvantage that their rigid, non-adjustable designs limit their efficient use to a relatively small range of applications.
The specification states the present invention seeks to overcome the disadvantages of the prior art by providing an adjustable light reflecting device. It then describes two broad forms of the present invention, which essentially duplicate the contents of claims 1 and 14 detailed below.
The specification, when describing the preferred embodiment, states the present invention provides an adjustable light reflector device, comprising a resilient reflective skin, flexed to form a double parabolic shape, which is held in place against its resiliency by adjustable retainers located at each end of the skin and independently an adjustable lamp mount which attaches to the skin when it is in the retained position. A slide-on V-shaped perforated heat shield is preferably attached to the lamp fitting.
The claims defining the present invention were as follows:
"1.     A lamp reflector with adjustable curvature including a pair of resilient sheet members each having a reflective surface;
connecting means for connecting said sheet members together along a common spine so that the sheet members have unflexed positions wherein said reflective surfaces are transverse to each other, each sheet member being adapted to be flexed from said unflexed position to a fully flexed position which forms the corresponding reflective surface into an inside curve with maximum curvature, and
adjustable retaining means connected to said sheet members for retaining said sheet members at a plurality of a selected flexed positions between said unflexed and fully flexed positions.
2.      The reflector defined in claim 1 wherein the retaining means retain the sheet members so that the reflective surfaces thereof are both parabolic whereby the reflector has a double parabolic shape.
3.      The reflector defined in claim 1 wherein each sheet member has an outside edge opposite said spine, and the retaining means includes at least one link linking said outside edges.
4.      The reflector defined in claim 3 wherein said link is adjustable in length.
5.      The reflector defined in claim 1 or 2 and further including lighting means, and attachment means adjustably attaching said lighting means to said sheet members adjacent to said spine.
6.      The reflector defined in claim 5 and further including a heat shield disposed about at least part of the lighting means.
7.      The reflector defined in claim 6 wherein the heat shield is a slide-on, V-shaped, perforated adjustable heat shield.
8.      The reflector defined in claim 6 wherein
the lighting means includes a lamp socket, and
the heat shield is attached to said attachment means or to the lamp socket.
9.      The reflector defined in claims 6 wherein the heat shield is positioned on the opposite side of the lighting means from said sheet members.
10.     The reflector defined in claim 1 or 2 wherein said connecting means includes a boundary between said sheet members along said spine, said sheet members and said boundary being fabricated integrally from a single sheet of material.
11.     The reflector defined in claim 1 or 2 wherein
each of said sheet members is fabricated separately, and
said connecting means includes fastener means fastening said sheet members together along said spine.
12.     The reflector defined in claim 11 wherein
each of the sheet members is substantially rectangular and has a transverse protruding skirt extending along said spine, and
said fastener means connect the skirt of one of the sheet members to the other of the sheet members, and vice versa.
13.     The reflector defined in claim 12 wherein the fastener means are threaded fasteners or welds.
14     A lamp reflector with adjustable curvature including a pair of resilient sheet members, said sheet members having reflective surfaces and being connected so that, when in an unstressed condition, said sheet members are disposed at an angle relative to each other, and when flexed away from said angle, the reflective surface of each sheet member assumes a parabolic shape, and
means connected to said sheet member for adjustably flexing said members away from said angle.
15.     A lamp reflector, substantially as herein described with reference to the accompanying drawings."
AMENDMENT OF THE STATEMENT OF GROUNDS
Before deciding on the substantive matters of the opposition, I will first address the issue of the opponent requesting amendment of the statement of grounds and particulars at the hearing. The opponent wished to formally particularise the sales of the Adjust-A-Shade reflector units under the ground of the invention not complying with section 18(1)(a) or (b). The opponent also stated the applicant was notified of such an amendment by facsimile on 18 February 2003, that is, one day prior to the hearing.
Mr Davidson argued the material to be introduced should be known to the applicant, as this information was submitted in the evidence-in-reply. It was further submitted the applicant has specifically known about the sales of the Adjust-A-Shade reflector, as it was entitled to, and provided with information regarding the sales, under the terms of its licence agreement with the opponent. I note also the applicant’s own evidence addressed the issue of sales of the Adjust-A-Shade product.
Such amendments fall under regulation 5.9. In particular I believe regulation (1)(c) is applicable. It reads:
"Subject to sub-regulation (2), the Commissioner, on the written request of an opponent and subject to such terms as the Commissioner may specify:
must amend particulars relating to a ground set out in a statement that is served and filed under regulation 5.4."
In line with sub-regulation 5.9(2), I reasonably believe the applicant has been notified of the proposed amendment. Nor should the material introduced by the amendment be any surprise to the applicant given the material formed part of the evidence-in-reply. In respect of sub-regulation 5.9(3), no representations concerning the proposed amendment were made by the applicant at the hearing.
Therefore I believe the proposed amendment is merely bringing known information into line with other information already known to the applicant. Consequently I allow the amendment to the statement of grounds and particulars as requested by the opponent.
DECISION
Essential Features
Before continuing any further, I will determine what I consider the essential features of the claimed invention to be. In establishing the essential features I am directed by the following passage in Catnic Components v Hill & Smith [1982] RPC 183 :
"A feature can be regarded as not essential if it does not have a material effect on the way in which the invention works. However, claims are to be given a purposive construction and initially it is to be assumed that all features of independent claims are essential."
Initially concentrating on claims 1, and 14, I believe these claims may be broken down into the following essential features on applying Catnic Components (supra):
Claim 1: A lamp reflector with adjustable curvature including:
(a)   a pair of resilient sheet members each having a reflective surface;
(b)   connecting means for connecting said sheet members together along a common spine so that the sheet members have unflexed positions;
(c)   wherein said reflective surfaces are transverse to each other;
(d)   each sheet member being adapted to be flexed from said unflexed position to a fully flexed position which forms the corresponding reflective surface into an inside curve with maximum curvature, and
(e)   adjustable retaining means connected to said sheet members for retaining said sheet members at a plurality of a selected flexed positions between said unflexed and fully flexed positions.
Claim 14: A lamp reflector with adjustable curvature including:
(a)   a pair of resilient sheet members,
(b)   said sheet members having reflective surfaces and being connected so that, when in an unstressed condition, said sheet members are disposed at an angle relative to each other,
(c)   when flexed away from said angle, the reflective surface of each sheet member assumes a parabolic shape, and
(d)   means connected to said sheet member for adjustably flexing said members away from said angle.
Novelty
At the hearing the opponent indicated they would only pursue one ground of opposition, that being the invention as defined in claims 1-5 and 11-15 is not novel in the light of:
(a) Australian Patent Application No 64800/94 filed 20 June 1994.
(b) The sale by Ablite Industries before the priority date of " Adjust-A-Shade" reflector units under licence from the applicant.
In addressing novelty, Section 7 of the Act states:
"(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1."
The well established test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Viccar Industries (1977) 137 CLR 228 at page 235 where Judge Aickin stated:
"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 invention would if the patent were valid, constitute an infringement."
Infringement is said to occur where "each and every one of the essential features of that claim have been taken" (Rodi and Wienenberger AG v. Henry Showell Ltd (1969) RPC 367).
With this in mind I will look in turn at patent specification 64800/94, and the alleged sale of Adjust-A-Shade reflector units (constituting prior use) respectively, both of which are said to anticipate the claimed invention.
Whole of contents and patent application 64800/94
In the present case, Australian patent application 64800/94 has a priority date of 18 November 1993, which is clearly earlier than that of the present specification, (24 May 1995). In addition, 64800/94 was published as AU-A- 64800/94 on 25 May 1995, that is, one day after the priority date of said specification. Furthermore there were no amendments to Australian patent application 64800/94 between the filing of the complete specification and its publication.
Clearly the provisions of section 7(1)(c) may apply. This is colloquially known as "whole of contents" novelty. The basis of the "whole of contents" objection exists in the definition of the "prior art base". In particular, the conditions of subparagraph (b)(ii) of the definition of prior art base in Schedule 1 of the Patents Act require that:
" information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date and when it was published".

So long as a document satisfies these criteria, it may be considered for the purpose of lack of novelty. The considerations for such a novelty objection are otherwise exactly the same as for documents published before the priority date of the claim under consideration. That is the Meyers Taylor test (supra) is applicable.
Given the facts surrounding 64800/94, I believe the criteria set out in the definition of the prior art base have been met, and it remains for me to apply the Meyers Taylor test (supra) to this document.
Sunnyfield submitted application 64800/94 anticipates claims 1-5 and 11-15 of the present claims. In particular the opponent submitted the disclosure in 64800/94 is essentially identical to the opposed application right down to the drawings. However, Sunnyfield do admit that 64800/94 has a limitation as to the angle between the sheet members of reflector in its unflexed state and it does not disclose the heat shield arrangement as claimed.
Cronk submitted the whole of contents "objection" in relation to patent application 64800/94
"…is unable to be sustained for the same reasons that the examiner (who no doubt considered the issue) concluded on the question (sic)."
In reviewing the material on file, I note the examiner, at no stage during the prosecution raised an objection to a want of novelty against the present claims in the light of application 64800/94. However I consider this submission irrelevant to my determination with respect to the novelty or otherwise of the claimed invention, as the examination history is considered irrelevant to these proceedings (see Borden v Elkem (1992) AIPC 90-893).
I shall first consider independent claims 1 and 14 of the present invention against the prior art document in question.
Australian patent specification 64800/94 in general discloses at page 3 that it relates to:
“an adjustable light reflector device comprising a resilient reflective skin flexed to form a double parabolic shape which is held in place against its resiliency by adjustable retainers located at each end of the skin and an independently adjustable lamp mount that attaches to the skin when it is in the retained position”.
Comparing claim 1 of the present invention against the disclosures made in specification 64800/94, I find the following disclosures relevant:

·     a two piece resilient reflective skin, identified as items 1 and 2 in the figures. The two piece resilient skin is “detachably joined about a spine 3”. The skin is described as being attached thus “a pair of threaded bolts 6 and 7 pass down through holes 8 and 9 in the top of the assembled skin and are secured by nuts 10 and 11.” (page 5, line 10-16, and figures 1-3).
These features are in my opinion clearly equivalent to essential features (a) and (b) of claim 1 listed above.
·     Fig 3 shows an assembled view “of the skin prior to flexing, depicting substantially orthogonal alignment of sheet members”, (page 5 lines 7-8).
Applying a plain meaning to the term "orthogonal", that is, "pertaining to or involving right angles" as set out in the Oxford English Dictionary, I believe orthogonal falls within the plain meaning of "transverse", which is defined as "situated or lying crosswise or athwart, at right angles..." from the same reference. Consequently I find this disclosure equates to essential feature (c) of claim 1.
·     From page 5, lines 10-12 the disclosure reads “…then flexed back against their normal resilience to produce a double parabolic shape...” when referring to the two piece resilient skins of the adjustable reflector device.
I consider this meets the requirements of essential feature (d) of claim 1.
·     From the same paragraph of page 5, the parabolic shape “...is adjustably secured by a pair of chain 4 and hook 5 retainers…”is disclosed. Figure 1 also clearly depicts a retainer, on each skin with a chain joining the two retainers, both located distally to a lamp mount.

Page 6, paragraph 3 also discloses “the reflector device …is not restricted to the specific shape and construction of the untensioned resilient skin, but may use a skin fashioned from one, two or more pieces of suitable material…so long as the essential feature of being flexed back against a spine or axial crease to create an adjustable double parabolic shape is achieved.”
I find the use of retainers and chains to fix resilient skins, which may be flexed as disclosed above to be equivalent to essential feature (e) of claim1.
As each and every one of the essential features of claim 1 have been readily disclosed in the citation, I find the reverse infringement test has been satisfied, and therefore claim1 cannot be considered novel.
Turning to claim 14, I find the disclosures listed above similarly anticipate essential features (a) to (d) of the claim. In particular, the sheets of the disclosure being "detachably joined about a spine" inherently provides for sheet members being "disposed at an angle relative to each other" as required in feature (b). Essential feature (c) is satisfied by the disclosure of a double parabolic shape above, and feature (d) of this claim may be read onto the chain and hook retainer described earlier.
Therefore in a similar manner I find claim 14 lacks novelty when compared with Australian patent application 64800/94.
Looking now at dependent claims 2-5, claims 11-13, and claim 15 respectively. The previously highlighted disclosures clearly meet the requirements of the retaining means retaining the sheet members so that the reflective surfaces thereof are "both parabolic whereby the reflector has a double parabolic shape” as defined in claim 2. Therefore the claim lacks novelty.
Similarly, claim 3 requires “the retaining means including at least one link linking said outside edges” (of the sheet members), which has been previously disclosed above in the form of the chain and hook retainers. These are depicted in Figure 1 linking the outside edges of the respective panels, rendering the claim not novel.
Claim 4 is appended to claim 3, “wherein said link is adjustable in length”. Again the above references to page 5, lines 10-14, along with Figure 1 indicate the length of the chain may be altered, as this is the means whereby the overall shape of the reflector is altered. Therefore I find the claim is not novel.
Claim 5 defines the reflector of claims 1 or 2 and further includes “lighting means, and attachment means adjustably attaching said lighting means to said sheet members adjacent the spine”. Page 5 of the cited document describes “A pair of threaded bolts 6 and 7 pass down through holes 8 and 9 in the top of the assembled skin…The lamp mount 12 attaches to the bolts 6 and 7 through holes 13 and 14 and is adjustably secured by attaching nuts 15 and 16.” (lines 14-17). I note Figure 1 depicts holes 8 and 9 as being either side of the spine, thereby bringing the lighting means adjacent the spine. The features of the claim are readily disclosed rendering it not novel.
Claim 11 is appended to claims 1 or 2, and requires that “each of said sheet members is fabricated separately, and said connecting means includes fastener means fastening said sheet members together along said spine”. These features have previously been addressed above when reviewing independent claims 1and 14 and are not considered novel.
I shall not repeat Claim 12 here, as it has previously been listed in its entirety above. However I find the following disclosures from the citation relevant: “Referring to FIG.2 it can be seen that sheet members 1 and 2…each have two folds 17, 19 and 18, 20 which create associated skirts…Referring to FIG.3 it can be seen how sheet members 1 and 2 are joined at a substantially orthogonal angle. Skirts 24 and 22 attach to the bodies of sheet members 1 and 2 to create a reinforced joint about the newly created spine.” (page 5 lines 20-22, and page 6 lines 1-4). In addition, I note claims 6 and 7 of the citation disclose “each of said sheet members are substantially rectangular and provided with a substantially orthogonally protruding skirt, the skirt of a first sheet is connected to the edge of the second sheet and the skirt of the second sheet is connected to the edge of the first sheet” and “said skirts and edges are connected by bolts or welds or the like” respectively. Hence claim 12 is not considered novel.
Similarly, claim 13 requires “...the fastener means are threaded or welds” which is readily disclosed in claim 7 of the citation as recited above. Therefore, I do not find this claim to be novel.
Claim 15 is of the normal omnibus type and it is generally accepted that such claims are limited to the essential features of the invention as shown in the drawings (Witty v Turbon Engineering Co. Pty. Ltd. (1961) AOJP 2760). I see no significant difference or particular advantages between the essential features as illustrated and their definition in the claims as already discussed. Consequently, I believe that claim 15 is not novel in light of AU 64800/94.
Prior Use - Sale of the Adjust-A-Shade product
The opponent alleges the invention as claimed in claims 1-5 and 11-15 of the opposed application was made available to the public by the sale of the Ablite Adjust-A-Shade reflector, models 1044 and 1277, before the priority date of 24 May 1995.
Sunnyfield further allege the construction of the Adjust-A-Shade was the same as that described and illustrated in Patent 679737 (AU 64800/94), except that the angle between the sheets in their unflexed state was not orthogonal as required by the claims of that patent application. Mr Davidson in his submissions conceded the sheets were attached by means of rivets, and the curvature of the reflector was adjustable to one of a plurality of positions by means of the chain. I was then directed to Exhibit JWH-1.
In essence, the opponent is alleging prior use. In such a case, paragraph (a)(ii) in the definition of the prior art base in Schedule 1 of the Patents Act requires that the relevant information has been made publicly available through doing an act in the patent area.
Adequate proof is essential where prior use is relied on. In order to be invalidating under the Patents Act, prior use must be "informative" in the sense that the necessary information (disclosing all of the essential features) is made available to the public. See Hope v Heggies Bulkhaul Ltd (1996) 34 IPR 584.
The UK Appeal Tribunal discussed the standard of proof required to establish prior use in Seiller's Application [1970] RPC 103. At page 106 Graham J. stated:
"In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case."
The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135. Towards the end of section 8.38 Waddell J. states:
"It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation."
The opponent's core submissions with respect to alleged prior use are:
"..the prior use satisfies the test for "information made publicly available through doing an act"- that is, information communicated to a member of the public without inhibiting fetter - in the following respects:
(a) The grant of the licence from Cronk to the Opponent before the priority date removed any argument that the Opponent was free to disclose and sell the already fully developed product.
(b) The sale of products according to the invention by the Opponent to customers before the priority date with the Applicant's knowledge and consent. The evidence-in-support includes details and invoices to support 12 separate sales of the Ablite Adjust-A-Shade reflectors according to the claimed invention, for a total of 62 reflectors sold, between 22 March and 15 May 2003. The evidence in reply provides details of the delivery to customers of 91 of the reflectors during May 1995, including deliveries on 18 and 22 May.
The sales of the Adjust-A-Shade were licensed by Mr Cronk, and Mr Cronk received royalties for those sales."
I note in reviewing all the evidence before me that the passage “…between 22 March and 15 May 2003” above, appears to contain a typographical error and should be read as “…between 22 March and 15 May 1995” in line with the remaining evidence presented, particularly Exhibit JWH-2.
Clearly the applicant's position is contrary to this. In particular Mr Old, for the applicant submits the opponent's activities are in breach of the Confidentiality Agreement (as set out in Exhibit PAC8) and an agreement dated 16 May 1994. Furthermore the applicant submits it is entitled to rely upon Section 24(1)(b) whereby the information made publicly available by the opponent's unauthorised actions before the priority date is to be disregarded for the purposes of novelty.
I shall comment on these submissions and others in more detail as they become relevant to the remaining issues at hand.
In addressing Mr Old’s submission, Section 24 (1)(b) states:
"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:
…any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee."
Section 24(1)(b) of the Patents Act provides that any information made publicly available without the consent of the nominated person is to be disregarded for the purposes of novelty and inventive step so long as an application for the invention is made within the prescribed period. Regulation 2.3(2) outlines the prescribed period in this case, being 12 months from the date the information became publicly available. Thus, section 24(1)(b) constitutes an exception to novelty under certain limited circumstances.
Chronology of events
At this stage I believe it is appropriate to review the chronology of events as many of the key issues in respect of the alleged prior use hinge upon the dates upon which events are said to have occurred, and many of these are in dispute.
·     18 November 1993, Cronk filed Patent application No PM 2504, later to become Australian patent application 64800/94.
·     17 February 1994, a Declaration of Confidentiality with respect to Adjustable Reflector PM 2504 was signed (Exhibit PAC8). This document was signed by Mr Cronk and Messieurs Real and Ferguson of Sunnyfield respectively.
·     16 May 1994, a Market Research agreement was signed between the parties (as set out in paragraphs 45-47 of Simos J ‘s decision in Cronk v Sunnyfield (supra), Exhibit PAC7). As noted by Simos J, there is no dispute by either party as to when this agreement was executed. However the terms and conditions of this agreement leading to a subsequent extension of the agreement are in dispute.
·     20 June 1994, a complete specification for Australian patent application 64800/94 was filed.
·     25 October 1994, a further 6 month extension to the above Market Research agreement is agreed to by both parties.
·     22 March 1995, the first invoice date for the sale of the Adjust-A-Shade is recorded, submitted as Exhibit JWH-2.
·     10 May 1995. An extension to the earlier agreement (outlined above) is signed. This includes a formal agreement, which allows an extension of exclusive manufacture and distribution of the Adjust-A-Shade for a further period of 3 years from 16 May 1995 to 16 May 1998 (as determined by Simos J in Cronk v Sunnyfield (supra), Exhibit PAC7).
·     16 May 1995. In line with the extension to the above agreement, Cronk alleges this is the first date manufacture of the Adjust-A-Shade should be permitted.
·     24 May 1995, PCT/AU95/00303 was filed, establishing the priority date for subsequent Australian patent application 716550.
·     25 May 1995, Cronk receives initial royalty payment for sales made by Sunnyfield in the preceding months, as he is entitled to under paragraph (d) under the agreement of 10 May 1995. Neither party disputes this fact.
·     25 May 1995, Australian patent application No 64800/94 is published by the Australian Patent Office.
The question to be resolved is one of whether or not a publication was made with the consent of the applicant. Having referred to the various agreements above, I shall set out the relevant passages from each to determine whether or not any inhibiting fetter was incumbent on any information the opponent may have made public.
The Agreements
The Declaration of Confidentiality referred to as Exhibit PAC8 reads as follows:
“Topic under discussion: Reflector (Adjustable) PM 2504
Ablite (Sunnyfield)
John Ferguson,
I Mr, Bruce Real (sic) declare that any information related to me by Mr Paul Cronk on the above mentioned topic shall be held by me in the strictest confidence and shall not be used by me to my advantage or profit.
Dated this 17^th day of February 1994.”
The initial product development agreement dated 16 May 1994 was in the following terms (Exhibit IAM-4):
"16 May 1994
ADJUST-A-SHADE
This Agreement covers the initial development of the product known as 'Adjust-A-Shade', which is covered by patent Pending No. PM 2504.
It is agreed between the undersigned parties that:
1.      An initial exclusive period of up to SIX months be given to ABLITE to research the market potential for the above product, after which time an agreement will be negotiated in accordance with paragraph 2 below.
2.      ABLITE to have first right of refusal to manufacturing and distributorship rights after the initial period, and subject to an agreement to proceed will require a formal agreement which sets out:
(a)     Exclusive manufacturing and distributorship within Australia and New Zealand for a fixed period of three years with an option of three years exercisable not less than three months prior to the end of the third year.
(b)     Agreed value of royalties payable on sale of units. We agreed to $2.50/units for small units and $3.00/units for large units, (payable 30 days after the end of the calendar month in which the sale occurs).
(c)     Agreement is subject to the securing of the Patent Rights by Mr. Paul Cronk.
(d)     Mr. Paul Cronk, (Inventor), to indemnify Sunnyfield against all actions or claims relating to any infringement of Patent rights which might be brought against The Association arising directly or indirectly from the manufacture, sale, distribution, or use of the wing type reflector, (Patent Pending PM2504)."
This initial agreement is made and signed on the sixteenth day of May 1994, between Mr. Paul Cronk … and ABLITE a division of The Sunnyfield Association.”
The subsequent agreement, which as stated above, is referred to as the agreement of 10 May 1995, was in the following terms:
"2 May 1995
ADJUST-A-SHADE
This Agreement covers the initial development of the product known as 'Adjust-A-Shade', which is covered by Patent Pending No. 64800/94.
It is agreed between the undersigned parties that following the initial exclusive period, the original agreement of 6^th April 1994 be amended and extended for a further period of three years from 16^th May 1995 to 16^th May 1998.
(a)     Exclusive manufacturing and distributorship within Australia and New Zealand for a fixed period of three years with an option of three years exercisable not less than three months prior to the end of the third year.
(b)     Agreed value of royalties payable on sale of units. We agreed to $2.50/units for small units and $3.00/units for large units, (payable 30 days after the end of the calendar month in which the sale occurs).
(c)     Agreement is subject to the securing of the Patent Rights by Mr. Paul Cronk.
(d)     It was also agreed that for the purpose of verification of quantities sold per month, Mr. Paul Cronk would have access, under supervision, to our computer records in relation to his specific product.
(e)     Mr Paul Cronk, (Inventor), to indemnify Sunnyfield against all actions or claims relating to any infringement of Patent rights which might be brought against The Association arising directly or indirectly from the manufacture, sale, distribution, or use of the wing type reflector, (Patent pending No. 64800/94).
This initial agreement is made and signed on the tenth day of May 1994, (sic) between Me Paul Cronk of 1/65 Evens Street, Harbord, and ABLITE a division of The Sunnyfield Association of 185 Allambie Road, Allambie Heights 2100

In deciding Cronk v Sunnyfield (supra), Simos J construed the two product development Agreements (see particularly paragraphs 101 -105). His conclusions relevant to the present matter may be summarised as follows:
(a) when construed in the context of all the relevant surrounding circumstances, Simos J determined that it is plain that the description in the first two lines of the agreement of 10 May 1995 that it "covers the initial development of the product" is simply an incorrect description of that agreement, which appeared in that agreement by mistake; and it was intended to refer to the initial manufacture and distribution of the product rather than initial development.

(b) the agreement of 10 May 1995 is to be construed so as to make it clear that the initial manufacturing and distribution period of three years was to commence on 16 May 1995.
In reading the above agreements I note that neither includes a confidentiality clause, and that whilst the later agreement is referred to as the 10 May 1995 Agreement, it is apparent from the date recorded, the terms of this agreement were contemplated by both parties on at least 2 May 1995. Furthermore the 10 May 1995 Agreement relates to patent application 64800/94 rather than the provisional PM 2504.
Clearly to my mind, if a publication or prior use existed between the period 16 May 1995 and 24 May 1995, that is, the period where the opponent had a right to manufacture and distribute prior to the priority date of the present application, then the applicant’s reliance on section 24(1)(b) would be unjustified. In addition, it is for me to determine whether or not admitted sales and distribution of the reflector prior to 16 May 1995 were without consent and therefore if section 24(1)(b) were applicable or otherwise.
The facts of Cronk v Sunnyfield (supra) related to a licensing agreement between the parties, and in particular whether or not there was an option to extend the agreement for a further three years after an initial three year manufacture and distribution period. From that point of view, it was essential that the commencement date of the agreement be established. However, in this instance for alleged prior use, the question that first needs to be answered is whether or not a "publication" in the prior art sense occurred.
Mr Old directed my attention to the stock cards of exhibit PAC10, the invoices and stock history cards of exhibit JWH2-1. These records provide an audit of the manufacture and sale of two models of the Adjust-A-Shade product, (specifically models ABL1044 and ABL 1277). Mr Old meticulously compared the quantities on hand shown on the stock cards for the period 1 March 1995 to 31 May 1995 against the quantities shown as sales on the stock history cards. From Mr Old’s interpretation of these cards he highlighted discrepancies between the stock cards and the stock history cards and subsequently made the submission that the stock history cards of Exhibit JWH2-1 were unreliable compared with an invoice as proof of sale. He further submitted that had there been a sale, or sales, (in the period 16 May 1995 to 24 May 1995), then the opponent would have submitted the appropriate invoice rather than a stock history card as evidence, and urged me to draw the inference that no such sales had occurred.
Whilst under normal circumstances I would consider Mr Old’s interpretation of the opponent’s records as having little weight, I am prepared to allow Mr Old a little latitude, as the reading of these records does appear self evident. However, I do not believe there is enough evidence based on Mr Old’s analysis to discredit the veracity of the data presented on the stock history cards alone, over the stock cards for example. To my mind there are numerous plausible reasons as to why one set of records do not reconcile with a second in this environment. I note in analysing the records, I am able to find numerous cases where the stock cards, stock history cards and the invoices do in fact tally. As a result, on this evidence alone, I am not prepared to draw any inference that a sale did not occur and that the declaration of John William Homan in evidence in reply is in fact spurious.
Mr Old then argued that even if I were to find there were sales in the relevant few days in May, what the stock cards do show is that any product that was sold in that time was manufactured before 16 May 1995. That is, without the applicant’s consent and contrary to section 24(1)(b).
Mr Davidson countered by stating that section 24(1)(b) requires the information be made publicly available without consent, not when an object was made, and in this case the information was not made publicly available without consent as there was an agreement between the parties to manufacture and sell.
I agree with Mr Davidson in that I do not believe the manufacture of the goods without subsequent sale and distribution automatically constitutes a publication per se. Under the terms of the May 1994 agreement it is entirely reasonable to expect Sunnyfield to manufacture the product as part of its research into the market potential of the product. Furthermore I agree with Mr Davidson's submission that section 24(1)(b) does not apply for any information made publicly available in the period 16 - 24 May 1995, since under the 10 May 1995 Agreement, as pointed out by Simos J, distribution was free to occur.
In addition, I am prepared to afford equal weight to evidence presented on the stock cards as to the stock history cards. Therefore on the balance of probabilities on the evidence presented, I also accept sales of the reflector occurred on 18, 22, and 24 May 1995 as set out in the stock history cards and the Homan declaration, submitted as evidence in reply. That is, I believe a publication of the information in the form of prior use occurred on those days, with the consent of both parties.
In reviewing the evidence submitted, the information presented in the invoices, stock cards and stock history cards is consistent with the fact that sales did occur prior to 16 May 1995. This is further confirmed through exhibit PAC10, which relates to calculations of royalties to Cronk for sales made in March and April 1995. As a result, I have no doubt that sales in fact did occur prior to 16 May 1995. It remains to be determined if the sales were made with the applicant's consent or otherwise.
Mr Davidson for Sunnyfield submitted that it is clear on the evidence presented to Simos J, that Cronk was informed at least on 2 May 1995 that there were sales, they were increasing, and that there was a market for the product. He also noted this was the same day on which the terms of the 10 May 1995 agreement were discussed by both parties. In particular, Mr Davidson referred me to Mr Cronk’s affidavit (Exhibit PAC4) for consideration in Cronk v Sunnyfield (supra) and the following passage of paragraph 12 of that (Mr Cronk’s) affidavit:
“At the end of the twelve month period I was again contacted by Messrs Homan and Ferguson. At their request I attended a meeting at the offices of Sunnyfield on 2 May 1995. At this meeting we discussed the product and its potential. Mr Ferguson said words to the effect:
“Sales seem to be increasing steadily. There is a market and the customer feedback has been very positive”.”
Mr Davidson then directed me to paragraph 17 of Mr Cronk’s present declaration, which states:
"At paragraph 92 of his honour’s decision (Exhibit PAC7) there is reference to a meeting of 2 May 1995 at which Mr Ferguson told me “sales seem to be increasing steadily” or words to that effect (see paragraph 12 of my affidavit of EXHIBIT PAC4). Since this statement was made prior to the signing of the 10 May 1995 agreement, and prior to the authorization commencing 16 May 1995 for the Opponent to commence manufacture and distribution of products made in accordance with my invention, I assumed that the reference to “sales” was a reference to the general level of sales of all the Opponent’s products, and not a reference to sales of the product made in accordance with my invention. That is, I interpreted the statement “Sales seem to be increasing steadily” as meaning “The economy generally, and our overall sales in particular, are increasing steadily or words to that effect.”"
In reading the two declarations I am of the opinion Mr Cronk’s affidavit of Exhibit PAC4, rather than his present declaration to be a more credible reflection of the events. To my mind it is highly unlikely Mr Cronk was to attend a meeting where the focus of discussion would be on the economy in general and sales in general, given he had a specific product and that negotiation for a formal agreement in respect of that product commenced on that day. Consequently I believe Cronk knew of the sales of the Adjust-A-Shade product on at least 2 May 1995. However I still need to address the issue of consent.
Mr Davidson refuted any suggestion by the applicant that sales were in some way hidden from Cronk by submitting that Cronk was aware of the sales as he had access to the books as set out in paragraph (d) of the 10 May 95 agreement.
Turning to the evidence relating to the royalty payments made to Mr Cronk. That is Exhibits PAC10 - PAC12. It is undisputed that Mr Cronk on being telephoned by Sunnyfield, would go to their premises and collect (usually a cheque) payment. I note the above exhibits relate to calculations for the amounts due for March, April, June and July 1995 sales. I find it odd no royalty calculations for May 1995 were submitted in the evidence by either party even though both had access to the records (under paragraph (b) of the 10 May 95 agreement) and both allege sales occurred in this month.
Cronk in his declaration states that he recalls receiving a phone call (at some undetermined date) and subsequently receiving and banking a cheque for royalties on 25 May 1995. He further recalls being amazed that manufacture should have commenced since he states he had not even seen a prototype at that time. Mr Cronk makes no mention of being amazed that he should be invited to collect royalties in May 95 in the first instance. I find this odd given that under the agreement, distribution was to commence on 16 May 1995, which would result in the first royalty payment being due on 30 June at the earliest, under paragraph (d) of the agreement. That is, unless Mr Cronk was aware of the sales occurring, and was expecting payment in May for March sales, there would be no reason for him to be contacted to collect royalties. This appears consistent with Cronk being aware on 2 May 1995 that sales were occurring. There appears a certain verisimilitude about Mr Davidson's submission with respect to the meeting of 2 May 1995 in that as sales were occurring the parties had decided it was time to commence negotiations on a formal agreement.
On the balance of probabilities based on the evidence before me, I believe the applicant was aware of the sales occurring prior to 16 May 1995. There is no evidence to suggest Cronk undertook any action to cause the opponent to cease trading in any way. In particular, on or subsequent to the 2 May 1995 meeting, when Cronk was made aware of sales occurring, there is no evidence to suggest he initiated any action to force Sunnyfield to cease and desist sales. Faced with the carrot of royalties, I believe Cronk allowed Sunnyfield to continue sales, uninhibited in any way whilst the formal agreement was being drafted.
While there may appear to be insufficient evidence of outright consent prior to 16 May 1995 by the applicant, the behaviour of the applicant in this case points very strongly to one of complicit acquiescence. I conclude such acquiescence amounts to consent sufficient to exclude the application of section 24(1)(b) to these circumstances.
I note that having determined that section 24(1)(b) does not apply for any information made publicly available by the use of the invention either before or after 16 May 1995, it may be possible for the information to be disregarded under section 24(1)(a). However on closer examination of the facts surrounding the publication of the information, it is clear that publication did not meet the "prescribed circumstances" of section 24(1)(a), as defined in Regulation 2.2(2).
It remains for me to establish whether or not the prior use disclosure was "informative" in the sense that the necessary information (disclosing all of the essential features) was made available to the public. In searching for "uncorroborated" evidence I refer to the applicant’s own declaration addressing Exhibit PAC9, which states:
“Exhibit PAC9 is a price list for HORTICULTURAL LIGHTING giving ABLITE March 1995 prices effective April 1995(!) (sic) I note that the ABLITE Codes 45427 and 45428 refer to products I invented.(emphasis added) I was made aware of this document by a retailer or other customer of the Opponent well after March 1995”
Turning to the copies of invoices addressed to numerous purchasers throughout Australia, (forming Exhibit JWH-2), they also identify Codes 45427 and 45428, which are then identified as ADJUST-A-SHADE ABL1044 and ADJUST-A-SHADE ABL 1277 respectively. From the stock cards, and stock history cards, these numbers clearly refer to the two models of the reflector product manufactured according to patent application 64800/94.
Evidence of the prior use disclosure being informative is also supported by the applicant's own argument in alleging that section 24(1)(b) is applicable to present application 716550. In particular by submitting "any publication or use of the invention" (my emphasis) by the opponent is without consent, under section 24, the applicant is effectively admitting that the Adjust-A-Shade product is the same invention as that of patent application 716550, otherwise there would be no reason for the applicant to suggest section 24 is applicable.
As a result, I believe the sale of these products is clearly informative and a disclosure of all of the essential features of the invention. No evidence to the contrary was presented. Therefore I find prior use of the product did in fact occur, and the invention defined in claims 1-5 and 11-15 lack novelty.
SECTION 40
Whilst Section 40 issues were not pressed at the hearing itself, the statement of grounds and particulars alleged numerous deficiencies with respect to section 40(2) and 40(3). In reviewing the particulars I find them to be of a minor nature. As the opponent made no submissions on this matter at the hearing I will not address each of the individual particulars raised. However, I will place on record, that, in his written submissions the applicant recognised there are minor section 40 deficiencies and had offered to submit a voluntary amendment under Section 104 to correct various defects.
CONCLUSION
Given the facts surrounding Australian patent application 64800/94, I believe it clearly falls within the prior art base to be considered for the present application. Furthermore on applying the Meyers Taylor (supra) test for novelty I find that claims 1-5 and 11-15 of the present application lack whole of contents novelty in the light of Australian patent application 64800/94.
In respect of the allegation of prior use, I conclude the following:
(a)   the licensing agreement entered into by both parties clearly stated manufacture and distribution of the Adjust-A-Shade product (being the invention of 64800/94) was to commence on 16 May 1995;
(b)   sales of the product occurred prior to, and subsequent to this date;
(c)   the applicant was aware these sales were occurring prior to 16 May 1995;
(d) section 24(1)(b) is not applicable in this instance as the publication (prior use) of the information was made with the applicant's consent, and therefore the information cannot be disregarded for the purposes of deciding whether or not the invention is novel;
(e) any sales made subsequent to 16 May 1995 are clearly with the consent of the applicant through the licensing agreement and therefore cannot be disregarded according to section 24(1)(b); and,
(f)    the sale of the invention is considered informative in the sense that all of the essential features of the claimed invention were disclosed to the public as confirmed by the applicant's own submission, thereby satisfying the requirements for prior use.
As a result of which I find the sale of the Adjust-A-Shade product (being the invention of 64800/94) constitutes "prior use" and anticipates the invention as claimed in claims 1-5 and 11-15 of the opposed application.
However, I believe there is patentable subject matter present in the opposed specification and as such I allow the applicant sixty days to amend the present specification.
I also find there are minor section 40 issues in the present application, which the applicant has recognised and placed on record willingness to address by the filing of a voluntary amendment under section 104.
COSTS
It is customary for costs to follow the event. As there appear to be no extenuating circumstances in this instance, I see no reason to deviate from this practice. Therefore I award costs against Paul Andrew Cronk.
Lars Koch
Delegate of the Commissioner of Patents
Patent attorneys for the applicant: Hodgkinson Old McInnes, Sydney
Patent attorneys for the opponent: Halford & Co, Sydney

[2003] APO 27

1 August 2003