Robert Hicks Pty Ltd v Millar

[1999] APO 17

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 27810/95 in the name of ROBERT HICKS PTY. LTD.

Title:          Motor Vehicle Sunshade

Action:          Request by ROBERT WILLIAM MILLAR for a declaration under subsection 36(1) of the Patents Act that he is an eligible person in respect of an invention disclosed in the specification of patent application 27810/95

Decision:          Issued            .

Abstract

This matter concerns a subsection 36(1) request for a declaration as to eligibility. The application in question has been the subject of a section 32 request by the person now making the request under subsection 36(1). That section 32 action had, likewise to the present action, been founded upon the eligibility of the requestor. In the decision in that matter it was found that, on the balance of probabilities, the section 32 requestor had been the inventor of the subject matter he alleged, and entitlement to that matter lay with him.

However, as it was considered the application may also contain subject matter to which the requestor was not entitled, it was not appropriate for the requestor to be substituted as inventor and applicant for the application.  There appeared to be two possibilities for the manner in which the application was to proceed: either the applicant and requestor could be made joint inventors and applicants, or the requestor could file a section 36 request.  Both parties were given 28 days to provide submissions on how the matter was to proceed.

After the filing of submissions, in a further decision in the section 32 matter the section 32 requestor was directed to file a request under subsection 36(1) within 28 days seeking a declaration as to eligibility under that subsection in accordance with the finding made in the section 32 matter as to eligibility. This was done, and a declaration acceding to the subsection 36(1) request was issued.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 27810/95 by ROBERT HICKS PTY. LTD. and an application by ROBERT WILLIAM MILLAR under subsection 36(1) of the Patents Act for a declaration regarding an eligible person in respect of an invention disclosed in the specification.

BACKGROUND

The patent application

ROBERT HICKS PTY. LTD. (“the applicant”) filed International Application PCT/AU95/00387 on 29 June 1995, claiming priority from Australian provisional applications PM 6527 and PN 0350 filed on 29 June 1994 and 30 December 1994, respectively.  PCT/AU95/00387 designates, inter alia, Australia, and it entered the national phase in Australia on 23 January 1997.  The inventor of record is Rayman James Pawsey, a principal of the applicant company.  The international application has been subjected to an international search and to international preliminary examination.  Upon a direction, a request for national examination was filed on 10 June 1998, but has not yet been acted upon.

The section 32 request

On 1 July 1996 ROBERT WILLIAM MILLAR filed a request under section 32 of the Patents Act for the resolution of a dispute between 2 or more interested parties in relation to the manner in which this application should proceed. The request sought a determination of the Commissioner as to:

“the person who may proceed with the application, and the manner of proceeding with that application,”

and relied upon following facts:

“1. I am the inventor of the invention described in the above mentioned application;

2. That Rayman James Pawsey is incorrectly declared as the inventor in respect of the above mentioned application;

3. The above mentioned application incorrectly nominates Robert Hicks Pty Ltd as the eligible person for a grant of patent in respect of the invention described in the specification;

4. The invention disclosed and described in the above mentioned application was first disclosed by myself in confidence to Mr Rayman James Pawsey at a date before the earliest priority date of the above application.”

Decision on the Section 32 Request

Two decisions have issued in relation to the section 32 matter. In the first of these, issued 11 August 1998, I found as follows:

"My finding in this matter is that that Robert William Millar is the first inventor of the matter contained in Exhibits 2 and 14 of the first of his statutory declarations and the matter in Annexure A of the first of the statutory declarations by each of William Lisle Nagel and Debra Dorothy Millar, and, insofar as that matter is included in application 27810/95, I find that that matter was obtained by Rayman James Pawsey from Robert William Millar."

I then directed that:

"subject to any appeal on my findings above, the parties have 28 days from the date of this decision in which to make submissions on what course of action I should take to conclude this matter."

After the filing of submissions, I issued a second decision on 16 September 1998 in which I gave the following direction:

"I hereby direct that Robert William Millar has 28 days from the date of this decision in which to file a request in accordance with section 36(1) of the Patents Act that he be declared an eligible person in respect of the matter contained in Exhibits 2 and 14 of the first of his statutory declarations and the matter in Annexure A of the first of the statutory declarations by each of William Lisle Nagel and Debra Dorothy Millar."

The Subsection 36(1) Application

The subsection 36(1) request was filed on 28 September 1998. The grounds on which the application was made were stated to be:

"Australian Patent Application No. 27810/95 discloses an invention in respect of which I am the eligible person for grant of a patent. The invention is as shown in Exhibits 2 and 14 of my evidence in conjunction with an application under Section 32 which was the subject of a decision of the delegate of the Commissioner of Patents dated 16 September 1998. Reliance upon the above mentioned decision is made in respect of this application under Section 36. I therefore request a declaration that I am the eligible person in respect of the matter contained in Exhibits 2 and 14 of my first declaration filed in support of the Section 32 application lodged in respect of patent application 27810/95."

SUBMISSIONS

A letter to both parties dated 23 December 1998 proposed a form of wording for the declaration which had regard to the decision reached by the delegate of the Commissioner in respect of the section 32 matter, and was substantially in the terms requested by Mr Millar. The proposed declaration read:

"Pursuant to subsection 36(1), I declare that Robert William Millar is the sole eligible person in relation to:

(1)All patentable matter disclosed in Exhibits 2 and 14 of his statutory declaration dated 20 November 1996 constituting part of his supporting evidence in respect of his application under section 32 of the Patents Act in relation to patent application 27810/95 upon which a decision issued on 11 August 1998; and

(2)The matter in Annexure A of the statutory declaration by William Lisle Nagel dated 25 March 1996 constituting part of the supporting evidence in respect of the application by Robert William Millar under section 32 of the Patents Act in relation to patent application 27810/95 upon which a decision issued on 11 August 1998; and

(3)The matter in Annexure A of the statutory declaration by Debra Dorothy Millar dated 11 April 1996 constituting part of the supporting evidence in respect of the application by Robert William Millar under section 32 of the Patents Act in relation to patent application 27810/95 upon which a decision issued on 11 August 1998."

As might be expected, Mr Millar's response to the letter of 23 December 1998 was to agree to the wording.  The applicant for the patent, however, did not agree.  Neither side wished to be heard on the matter.

The principal objection of the applicant to the proposed declaration is that whereas paragraph 36(1)(b) requires the identification of "an invention" which has been "disclosed in a specification filed in relation to the application," the proposed declaration does not identify any invention as disclosed in the application.

The applicant's only other objection to the proposed declaration was that paragraphs (2) and (3) went beyond what had been requested by Mr Millar in his section 36(1) request.

I will give a more detailed account of submissions made by the applicant for the patent, where pertinent, subsequently in my decision.

DECISION

In making its submissions in relation to its principal objection to the proposed declaration, the applicant referred back to written submissions it had filed on 16 November.  Those submissions read, in part:

"We submit that the section 36 request is unclear as to the invention disclosed in the specification of which Mr Millar alleges he is either an, or the sole, inventor. The invention is only identified in the section 36 request by reference to Exhibits 2 and 14 of Mr Millar's evidence in the section 32 request, when taken 'in conjunction with' the decision of Commissioner's delegate. However, Exhibit 14 is a prototype which in itself does not define which are new or defining features of the invention. Exhibit 2 contains a number of drawings with written comments, again not defining a particular invention. In order for Robert Hicks to be heard on the request being made by Mr Millar, Robert Hicks needs to know what invention (as disclosed in the specification accompanying the subject patent application) Mr Millar claims to have invented. We submit that the decision of the Commissioner's delegate is of no substantial assistance in defining the invention for the purposes of the section 36 request because the Commissioner's delegate determined (in our respectful view, correctly) that such a definition was not required as part of his decision under section 32. For example, he notes that in the first paragraph on page 16 that 'neither party considered it appropriate in these proceedings to get into a detailed consideration of the claims…' and he does not do so.

We submit that for the section 36 request to be the subject of a declaration by the Commissioner, the requestor must clearly and unambiguously define the invention for which he seeks to be declared either an eligible person, or the sole eligible person."

In my view both the section 36 application and the proposed declaration satisfy the requirements of section 36 in their manner of stipulating an invention disclosed in the subject patent application.  In order to comply with the terms of the declaration, the invention described (and therefore claimed) in the specification of Mr Millar's future application will need to be fairly based on the matter referred to in the declaration.  The invention described (and therefore claimed) in 27810/95 will need to be in substance disclosed in the specification as filed, but must not be such that it would be fairly based on the matter referred to in the declaration.  Working according to these parameters should not present any difficulties, particularly to practitioners in the field of drafting patent specifications.

If I understand the submissions for the applicant correctly, what it appears to be suggesting is that Mr Millar should have provided in his section 36 application an indication of the invention he was seeking entitlement to by means of some sort of statement of the invention analogous to a claim.  Although I do not consider that a section 36 application and the resultant declaration, if any, may not be framed in that manner, for this to be obligatory would, in my view, be unjustly restrictive on the party making the section 36 application.  It would be unreasonable to expect the section 36 applicant to anticipate what it is, amongst the matter disclosed in the patent specification, which will ultimately be determined by the Commissioner to be their entitlement and to be available to them to base such a statement of the invention upon.  The essential nature of their invention need only become extant when they file an application within 3 months of the issue of the declaration in accordance with regulation 3.8.

Another consideration in this is at some point there will need to be an assessment made of the fair basis of what the requestor claims (in the sense that word is used in section 40 of the Patents Act) to be their invention against the disclosure that is determined to be attributable to them as an outcome of the section 36 action. In my view, for practical purposes it is desirable (although not essential) for issues such as fair basis to be rolled into the normal section 45 examination process. The form of declaration as proposed above would deliver that, whereas the applicant's approach would not.

Finally, I note that the proposed form of declaration is along the lines of that made by me in K. Shugg Industries Pty. Ltd. v Aneeta Window Systems (Vic) Pty. Ltd., (1996) AIPC 91-934, 34 IPR 95, in analogous circumstances.

Regarding the applicant's other objection to the proposed declaration - that paragraphs (2) and (3) went beyond what had been requested by Mr Millar in his section 36(1) request - that objection is clearly well founded, and I agree that the paragraphs in question should not appear in the declaration.

Accordingly, I make the following declaration:

Pursuant to subsection 36(1), I declare that Robert William Millar is the sole eligible person in relation to all patentable matter disclosed in Exhibits 2 and 14 of his statutory declaration dated 20 November 1996 constituting part of his supporting evidence in respect of his application under section 32 of the Patents Act in relation to patent application 27810/95 upon which a decision issued on 11 August 1998.

E. J. Knock
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :    Freehills Patent Attorneys, Melbourne

Patent attorneys for the opponent   :  Griffith Hack, Melbourne