Robert Hicks Pty Ltd v Robert William Millar

[1998] APO 45

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 under section 32 of the Patents Act for a determination of the Commissioner as to the name or names in which the application is to proceed

Decision:          Issued            .

Abstract

The named inventor of this application is a principal of the company making the application.  The section 32 requestor is himself an inventor who has had some earlier dealings with the applicant, which licensed, manufactured and marketed his inventions.  It was alleged by the section 32 requestor that in 1991 he had attempted to interest the named inventor of this application, as representative of the applicant company, in an invention he had made, but without success.  Shortly afterwards their relationship ceased.  Four years later the section 32 requestor happened upon an advertisement in a Christmas catalogue for a device which, upon further investigation turned out to bear close similarities to the invention he had tried to interest the applicant in in 1991.  Further investigation turned up the present application.  The named inventor denied any recollection of having been told of the invention by the section 32 requestor.

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 the application may 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.

A request by the applicant to adduce further evidence because of defects in the copy of the requestor’s evidence which had been provided to the applicant was made and granted at the hearing.  The hearing was adjourned and resumed after further evidence and evidence in response had been served.

A request by the applicant immediately prior to the hearing to cross-examine the requestor, who happened to be at the hearing, was refused because of the objection of the requestor.  Without the consent of the other side, in order to be able to cross examine witnesses it is necessary to request under section 210 that the Commissioner issue a summons for that purpose.

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 section 32 of the Patents Act for a determination of the Commissioner as to the name or names in which the application is to proceed.

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.  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 seeks a determination of the Commissioner as to:

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

and relies 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.”

Basis of the Dispute

Mr Millar was a part-owner and director of a company called Creation Concepts Pty Ltd.  Among Creation Concepts Pty Ltd’s interests were the manufacture under licence of two patented automotive products invented by Mr Millar.  These products were marketed by the applicant from around 1989.  In 1991 Mr Millar and his wife Debra Dorothy Millar decided they would set up their own company, giving the applicant first option on any automotive products they developed.

In May 1991, at the instigation of two directors of the applicant company - William Lisle Nagel and the aforesaid Mr Pawsey - Mr Millar set about designing an automotive sunshade.  Mr Millar spent the next few months making concept sketches, sizing up motor vehicle windows, and in August 1991 he created three prototypes.  One of these - the so-called “second prototype” - he despatched to the applicant, along with a drawing of it and some notes.  He received no response, and upon telephoning the applicant and speaking to either Mr Nagel or Mr Pawsey (Mr Millar is unsure which one) he considered they “sounded less than enthusiastic”.  The next time - October 1991 - Mr Millar, who lives in Adelaide, was in Melbourne he paid an impromptu visit to the applicant’s premises and met with Mr Nagel and Mr Pawsey.  What ensued at that meeting is in dispute, particularly in regard to certain drawings said by Mr Millar to have been shown by him to Mr Pawsey.  Whatever occurred, Mr  Millar “got the distinct impression my side window concept was no longer of interest” to the applicant, and there the matter rested until four years later, Mr Millar not having any further dealings with the applicant.  In November 1995 Mr Millar happened upon an automotive product called “Wingshade” in a Christmas catalogue which, upon further investigation, bore similarities to the sort of thing Mr Millar had been working on in 1991.  This led to the discovery of patent application 27810/95 and thence to the present action.

The filing of supporting evidence and evidence in response

The request was advertised on 18 July 1996.  In accordance with Patent Office practice (there being no statutory provisions regarding the furnishing of evidence or manner of setting down of a hearing in section 32 matters), Mr Millar and the applicant were given two months until 18 September 1996 in which to request to be heard on the section 32 request.  Each party filed its request to be heard on 16 September 1996, and each party was informed of the other’s request in a letter from the Patent Office dated 20 September 1996.  That letter also advised that each party had two months from the date of the letter to file its supporting evidence together with a copy.

Mr Millar filed his evidence on the due date, but, as I understand it, he did not file the requisite copy.  On 17 December 1996, it appears from correspondence of that date on the case-file of the application, he attempted to rectify this by filing such copies of the evidence as he had, but insofar as one piece of evidence was concerned - a statutory declaration by himself - this was not possible as he had not kept a copy of the document itself.  His letter of 17 December 1996 states:

“ Unfortunately I only had one stamped/signed copy of my statutory declaration and one certified copy of my exhibits (which you already have) so I had certified copies of my originals made yesterday and enclose them with this letter.”

The letter concluded with:

“I can’t supply you with the following:

My own statutory declaration -                  I didn’t keep a signed and stamped copy
Exhibit 1 Wards courier bags -                  the bags are in your possession
Exhibit 14 3rd Prototype -  the prototype is in your possession
Exhibit 16 Wingshade -  the Wingshade is in your possession”

The letter of 17 December 1996 also drew attention to some minor errors in the labelling of exhibits to his statutory declaration in evidence.

The patent applicant filed its evidence on 20 December 1996, after having sought and been granted an extension of time of a month in which to do so.

Copies of each party’s evidence was forwarded to the other on 31 January 1997.  In the case of the copy of the statutory declaration by Mr Millar forwarded to the applicant, it was presumably the “certified copy of my originals” referred to in Mr Millar’s letter of 17 December 1996 which was in fact forwarded.  However, it is also a possibility that the documents forwarded were photocopies made by the Patent Office of the actual filed evidence, and indeed the impression I gained upon a quick perusal of the documents at the hearing was that that was the case.  Nevertheless, as there is no indication from the case-file of this being so, and as there is no trace in the case-file of Mr Millar’s “certified copy of my originals”, it must be presumed that it was those documents which were given to the applicant.  Whichever of the possibilities which actually occurred is not germane to this matter.  But at the hearing it eventuated that as “copies” the documents given to the applicant had significant imperfections which were to impact upon the progress of the hearing, as I shall detail presently.

Both parties filed their evidence in response by 30 April 1997 after having been granted an extension of time of one month to that date in which to do so.  The matter was then set for hearing.

THE HEARING

The hearing was held in Melbourne on 10 February 1998.  Robert Millar was represented by Stephen Wilson, patent attorney of Griffith Hack, Melbourne, who had only been retained by Mr Millar a few days prior to the hearing.  Mr Millar until then appears mainly to have acted for himself, and he also was present at the hearing.  Robert Hicks Pty. Ltd. was represented by David Shavin QC, assisted by James Cherry of Freehills Patent Attorneys, Melbourne.

Several procedural issues arose in the course of the hearing.  Firstly, just prior to the commencement of the hearing, Mr Shavin indicated that he would be seeking to cross-examine Mr Millar.  Mr Wilson immediately stated that his client would strongly object to this.  I told Mr Shavin that Mr Millar could not be made to submit to being cross-examined if he was not willing to do so, except by way of summons in accordance with section 210 of the Patents Act.  Even if there were a formal request for a summons, I personally did not have the power to issue the summons, as that power is not delegatable by the Commissioner.  And even if a summons were to be taken out, the person summonsed has to be allowed a reasonable time to respond to it in order to make arrangements to attend the hearing, such as by obtaining legal representation.  Mr Shavin persevered, observing that in matters such as these where conflicting evidence was involved it is difficult or impossible to get to the truth without the aid of cross-examination (which may have been his real point).  I told Mr Shavin that I fully understood this, but the fact remained that I did not have the power to make Mr Millar submit to cross-examination.

As a footnote to this, even though the hearing was subsequently adjourned that day pending the filing of further evidence (see infra) and resumed some three months later, no attempt was made by the applicant in the intervening period to invoke section 210 in order to have Mr Millar summonsed.

The second procedural issue arose from the evidentiary imperfections to which I have previously alluded.  In the course of putting the case for Mr Millar, Mr Wilson had regard to some drawings in the Millar evidence.  [The particular drawings were the ones mentioned previously as being claimed by Mr Millar to have been shown to Mr Pawsey at the October 1991 meeting, although this is not really of relevance for present purposes.]  Mr Wilson was not long into this before Mr Shavin drew my attention to the fact that his copy of the evidence seemed to differ in certain respects from Mr Wilson’s.

Mr Millar, it must be remembered, had prepared his evidence himself.  The most likely explanation of what has occurred can best be explained by reference to Mr Millar’s supporting evidence which was filed at the Patent Office.  Although, as I have said, it is doubtful that the copy of the evidence provided to the applicant was a copy of this filed evidence, it is probable in preparing his “certified copy of my originals” Mr Millar’s originals were in the same form as the filed evidence.  That filed evidence came in a ring binder of common type. The evidence consisted of four statutory declarations: one by each of Mr Millar himself, his wife Debra Dorothy Millar, William Lisle Nagel and David Lindsay Polkinghorne.  Each declaration is contained in a plastic sleeve, also of common type, has perforations down one of the longer sides by which the sleeve and its contents may be retained in the ring binder, and is open at the upper side.  The outside of each sleeve has a handwritten identifying label affixed to it, such as:

“STATUTORY  DECLARATION
R. MILLAR”

Now, Mr Millar’s declaration has a number of exhibits.  These are not physically annexed to the main part of the declaration in the usual manner, but rather are contained in separate plastic sleeves by which they are retained in the ring binder after the aforestated four statutory declarations.  In most cases there is one exhibit per sleeve, but there are exceptions to this.  In some cases there are two exhibits per sleeve, and in the particular case of Exhibit 2, which is the drawings claimed by Mr Millar to have been shown to Mr Pawsey at the October 1991 meeting, the drawings are spread over two sleeves.  The only indication of which particular exhibit or exhibits is or are contained in any given sleeve is a handwritten identifying label affixed to the exterior surface of each sleeve, as with the declarations themselves.  Each label, except for the first two, has a number on it which appears to be the exhibit number, and the name “R. Millar”.  (The first two labels/exhibits are designated “A” and “B”, and are on/in a single sleeve, that is, the same sleeve.)

The copy of the Millar supporting evidence given to the applicant is minus the identifying labels on the various plastic sleeves constituting the evidence. The most likely explanation of what has occurred is that whoever has made the copy has taken the contents out of the sleeves in order to photocopy them.  In fact this was a necessity because in many cases the contents are more than one sheet.  The upshot of that is that although presumably the copy of the evidence given to the applicant had all the sheets in order there would have been some difficulty in telling where one exhibit finished and the next began.  This is particularly the case with Exhibit 2, which, as I have already stated, extends over two sleeves, each sleeve containing a document which is separate and distinct from that of the other, and each document having its own certification as a true copy of the original.

Mr Shavin asserted that because of the discrepancies in the copy of Mr Millar’s supporting evidence provided to the applicant, the applicant had not had an adequate opportunity to provide a response to that evidence, and requested leave be granted to file further evidence under the provisions of reg 5.10(4).  Mr Shavin’s particular concern lay with the evidence of Exhibit 2, which he regarded as crucial to this matter, as indeed it is.

It seems to me that the applicant’s claim that it was not aware of the problems with the evidence until the hearing are wholly plausible.  Perhaps a more thorough inquisition into the circumstances of this matter might apportion to the applicant part of the responsibility for its failure to apprehend the existence of, and take steps to rectify, those problems, but, even so, clearly not all responsibility could be considered to lay with the applicant.  Thus, to deny the applicant the opportunity to file further evidence would, in my view, have cast a shadow over whether the applicant had been denied natural justice and procedural fairness -  a shadow which could be removed readily and without undue prejudice to Mr Millar by allowing the applicant to file further evidence and by having a short adjournment of the hearing for this purpose.

Accordingly, I granted the applicant’s request to file further evidence in respect of Exhibit 2 of the statutory declaration in Mr Millar’s supporting evidence and directed that that further evidence be filed within 28 days and a copy served on Mr Millar.  I also directed that Mr Millar be allowed 28 days from the date on which the applicant’s further evidence was filed in order to file evidence in response to that further evidence, with a copy to be served on the applicant.  The hearing was to be adjourned and resumed as soon as practicable after all the evidence had been filed.

Both parties were in agreement that the hearing should continue that day as much as possible.  After this, the hearing was adjourned.  The further evidence and evidence in response was duly filed, and the hearing resumed in Canberra on 13 May, 1998.

The final procedural issue also centred on Exhibit 2 of the statutory declaration in Mr Millar’s supporting evidence.  Exhibit 2 is only a photocopy.  At the hearing Mr Shavin realised that the version Mr Wilson had was the original, and asked to see it.  Mr Wilson obliged.  Mr Shavin then claimed that while the drawing itself is in pencil (as it is), Robert Millar’s signature, a date and a “copyright” symbol of a “C” in a circle are in ink.  As it turned out, this was not, apparently, the case, but Mr Shavin still maintained that the signature, date and copyright symbol had been drawn with a different writing instrument than the rest of the drawing, and the document could, therefore, have been forged.

At the adjournment of the hearing, Mr Shavin asked me if I could hold onto the original of Exhibit 2 in case the applicant wished to have it forensically tested.  I refused to do so, on the basis that as it was not part of the filed evidence I did not have the power to do as he requested.  The Commissioner does have the power under section 210 of the Patents Act to order production of documents, but, like the summonsing of witnesses, there are formal processes to be gone through, and in any case, as I have already stated, I do not have a section 210 delegation as it is non-delegatable.  Mr Shavin then asked Mr Wilson to retain the exhibit in question, to which Mr Wilson agreed.

During the adjournment there was a deal of correspondence on this between the parties and from the parties to the Commissioner.  The applicant requested Mr Millar to hand over Exhibit 2 in order to carry out forensic testing upon it.  Mr Millar declined, saying that he would only produce the original of Exhibit 2 if the Commissioner so ordered.  The applicant asked the Commissioner to draw appropriate inferences from this.  The following quotes from the correspondence are illustrative:

Mr Wilson to the Commissioner:

“We..........advise that we have been contacted by the attorneys representing Robert Hicks Pty Ltd with a request that we hand over Exhibit 2 of the declaration by Robert Millar dated 20 November 1996 for forensic examination............

............We consider the submissions made on behalf of Robert Hicks concerning the authenticity of that exhibit to be outrageous and consider this matter should be decided based on the evidence as filed and also the additional evidence which the Hearing Officer has directed be served within twenty-eight days and replied to within a further twenty-eight days............”

Freehills to Mr Wilson:

“...........we see no reason why your client should object to the release of those documents to us for this purpose.  If the documents are in fact authentic, then your client should have nothing whatsoever to fear from having them examined by a forensic expert in the manner we propose.

Clearly, if your client does not consent to the examination of the documents by a forensic expert, an inference can be drawn that your client has something to hide in relation to their authenticity.”

Mr Millar has not acceded to the applicant’s request.

I will provide details of the parties’ submissions regarding the substantive issues in this matter later in my decision.

THE SPECIFICATION

The invention described and claimed by the specification relates to sunshades for motor vehicles.  Such sunshades are well known and occur in a number of varieties, depending on the window or windscreen they are intended to shade and the means by which, in use, they are secured to the vehicle.  The present invention is a sunshade to cover both the windscreen or rear window of the vehicle plus at least some side windows.  Apart from the fact that the end parts of the sunshade for covering the side windows are defined as “moveable” relative to the central part for covering the windscreen or rear window, in broadest form that is all that the invention involves.

Various preferred embellishments comprise: construction of the sunshade in whole or in part of flexible material or in concertina form for ease of storage; various means of attachment to the vehicle; and adaptations of the sunshade enabling its placement on the inside or outside the vehicle or with the centre part on the outside and the end parts on the inside, and vice versa.

The specification describes two main embodiments.  In the first of these the sunshade consists of a number of vertically-oriented hinged slats.  In the second embodiment, which is of greater interest in this matter, the sunshade is not slatted, but is just a suitable sheet material.  In order to be “suitable” it would, presumably, have to be opaque and flexible -  the preferred material appears from the specification to be vinyl.  The end parts, or “wing segments” as they are referred to in the specification, are joined to the central segment by intermediate portions made of elastic material.  The specification states:

“If the central segment is fitted inside the vehicle............the wing segments are passed between the vehicle body and the vehicle door.  The elasticity of the intermediate portions will assist in allowing the appropriate tension, as well as allowing the vehicle door to be shut on the intermediate portions without damaging the sunshade.  Due to their elasticity, variations in the thickness and/or size of the door pillar of the vehicle may also be allowed for.”

And

“Alternatively, the wing segments could be within the vehicle............and the central segment could be mounted on the exterior surface of the windscreen.  The tensile force extended upon it by the retention of the wing segments within the vehicle and the intermediate portions being held between the vehicle doors and the vehicle body, would hold the central portion in position.”

The specification concludes with 22 claims as follows:

1.  A sunshade for a motor vehicle, the sunshade including a centre segment to be positioned adjacent to the windscreen or rear window of the vehicle; and two wing segments, one at each end of the centre segment, each wing segment to be positioned adjacent to the side windows of the vehicle; each of the wing segments being connected to the centre segment and being moveable relative thereto.

2.  A sunshade as claimed in claim 1, wherein the wing segments are constructed in concertina form so that each may be compacted, or extended into position.

3.  A sunshade as claimed in claim 1 or claim 2, wherein the centre segment is constructed in concertina form so that it may be compacted, or extended into position.

4.  A sunshade as claimed in claim 2 or claim 3, wherein the concertina form is a series of planar slats each hinged to one or more adjacent planar slats, the hinges being arranged generally vertically when the sunshade is fully installed.

5.  A sunshade as claimed in any one of claims 2 to 4, wherein the sunshade is fabricated from a cardboard material which can be creased to permit the concertina form.

6.  A sunshade as claimed in claim 1, wherein the sunshade is fabricated from a flexible material to permit the sunshade to be folded or rolled for storage.

7.  A sunshade as claimed in any one of claims 1 to 6, wherein the sunshade has a reflective coating on at least one side thereof.

8.  A sunshade as claimed in any one of claims 1 to 7, wherein the wing segments are each connected to the centre segment by a main hinge.

9.  A sunshade as claimed in claim 8, wherein the main hinge is located to allow the sunshade, when in its operative configuration, to stretch so that the wing segments are each capable of movement with its respective vehicle door.

10.  A sunshade as claimed in any one of claims 1 to 9, wherein the centre segment, when in its operative configuration, stands upon an upper surface of a dashboard of the vehicle and extends upwardly to a position higher than the lowermost point of an appointment of the vehicle to enable the centre segment to be releasably retained in that position by that appointment.

11.  A sunshade as claimed in any one of claims 1 to 10, wherein each wing segment has an upper edge and a rear edge, each wing segment having a locating means extending upwardly from its upper edge to enable the wing segments to be releasably attached to the vehicle.

12.  A sunshade as claimed in claim 1, wherein the attachment is to at least one grab handle of the vehicle.

13.  A sunshade as claimed in claim 11 or claim 12, wherein the attachment is to at least one door of the vehicle.

14.  A sunshade as claimed in any one of claims 11 to 13, wherein the attachment is to a retaining device attached to the vehicle.

15.  A sunshade as claimed in any one of claims 1 to 14, wherein at least one of the wing segments is adapted to be placed outside the vehicle, the centre segment being adapted to be placed inside the vehicle.

16.  A sunshade as claimed in any one of claims 1 to 14 wherein the centre segment is adapted to be placed outside the vehicle, at least one of the wing segments being adapted to be placed inside the vehicle.

17.  A sunshade as claimed in claim 16 when appended to claim 10, wherein the appointment is at least one windscreen wiper of the vehicle.

18.  A sunshade as claimed in claim 15, when appended to claim 10, wherein the appointment is one sun visor affixed to the vehicle interior.

19.  A sunshade as claimed in claim 8, or any one of claims 9 to 18 when appended to claim 9, wherein the main hinge includes an elastic portion.

20.  A sunshade as claimed in any one of claims 1 to 19, wherein each wing segment has a lower edge, the lower edge having a cut-out portion.

21.  A sunshade as claimed in clam 20, wherein the cut-out portion is of an elastic material.

22.  A sunshade substantially as hereinbefore with reference to and as illustrated by each of the accompanying drawings.

It will be remembered that this application has not been subjected to national examination.  It has, however, been subjected to international search and examination.  The International Preliminary Examination Report will not be open to public inspection until such time as the application is accepted.  The International Search Report cited “X”-category documents against claims 1, 6 to 8, 11 and 13 to 17.

THE EVIDENCE

Mr Millar’s supporting evidence

As I have already observed, Mr Millar’s supporting evidence consists of four statutory declarations, the declarants being Mr Millar himself, his wife Debra Dorothy Millar, William Lisle Nagel and David Lindsay Polkinghorne.  Mr Polkinghorne is the brother of Mr Millar, and was a fellow director and shareholder of a company called Creation Concepts Pty Ltd which is at the periphery of this matter.  William Nagel was a director of the applicant company until June 1993.

The Robert Millar declaration traces the history of his association with the applicant company and of developmental work by him upon sunshades similar in concept to that which is the subject matter of this application.  Mr Millar’s account of the events extends from when he first became associated with AutoFashions - the trading name of the applicant, Robert Hicks Pty. Ltd. - to when he became aware from advertisements for the product that it was on the market and he approached Ray Pawsey (the Managing Director of the applicant company) for some redress for having used his intellectual property.

The evidence of Debra Millar, David Polkinghorne and William Nagel confirms various aspects of Robert Millar’s evidence of which they have direct knowledge.

The applicant’s supporting evidence

The supporting evidence for the applicant consists of statutory declarations by Rayman Pawsey, Ronald Hayes, Doreen Jean Montague and John Telfer Pitman.

Mr Pawsey is a key figure in this matter, since he is the person named as the inventor in this application.  He sets out Mr Millar’s involvement with him, his company and the present invention, and gives details of how the invention came into being and of his inventive activity outside the present invention.

Doreen Montague and Ronald Hayes are or were employees of the applicant, and their evidence confirms various aspects of Rayman Pawsey’s evidence of which they have direct knowledge.

Mr Pitman has been a director of Creation Concepts Pty Ltd since 1988.  His evidence is that he was not aware of any prototype sunscreen by  Creation Concepts at the relevant times.  The possible significance of this will be addressed in my decision.

Mr Millar’s evidence in response

The evidence in response from Mr Millar consists of a second statutory declarations by Robert Millar, Debra Millar and William Nagel and a statutory declaration by Maxwell Dickison.

Robert Millar’s second declaration generally disputes details of all the statutory declarations of the applicant’s supporting evidence.

William Nagel’s second declaration mainly reiterates aspects of his first declaration.  As well, some drawings which are alluded to in several of the declarations in the supporting evidence are annexed as exhibits.  However, these do not have any real bearing on this matter.

Debra Millar’s second declaration is somewhat curious.  It recounts how she visited John Pitman (who, of course, provided evidence for the applicant) on 27 April 1997 and asked him if he could provide any further information regarding a meeting he gave details of in his first declaration.  It appears he could not provide anything else of any significance.

Mr Dickison is a professional product designer.  His declaration is basically a report of what he believes “is being conveyed” by certain of the drawings annexed to Robert Millar’s first declaration.

The applicant’s evidence in response

The evidence in response from the applicant consists of a second declaration by Rayman Pawsey and a declaration by Andrew Papax.

Rayman Pawsey’s declaration is confined to  either refuting, placing a different slant on, or, occasionally, acknowledging the accuracy of various aspects of, Robert Millar’s evidence.

Andrew Papax was an employee of the applicant during the period of interest, and was present at some of the more significant episodes concerned in this matter.  According to his evidence he is now employed by a company called Auto Concepts Australia Pty Ltd which, as I understand it, is not linked to either of the parties to this action.  He seems to have been somewhat reluctant to provide evidence, but apparently deigned to do so when Mr Millar included in his first declaration hearsay statements attributed to Mr Papax.

The applicant’s further evidence

The further evidence from the applicant is a third declaration by Rayman Pawsey and a second declaration by Andrew Papax.  Leave to file further evidence had been granted in order to allow the applicant to properly address the evidence contained in the Exhibit 2 of Mr Millar’s first declaration, which was referred to previously.  Exhibit 2 is two hand-drawn sketches of proposals for motor vehicle sunshades which bear a close resemblance to the subject matter of the present invention.  Mr Millar alleges that he showed and explained these drawings to Messrs Pawsey and Nagel at a meeting in October 1991.

In his further evidence Mr Pawsey denies having any recollection of having seen the Exhibit 2 documents or having had their content explained to him, although he does not appear to rule out, as clearly he cannot, the possibility that that could have occurred.  He also appears to concede the pertinence of the drawings to this matter, but contends he would have recognised “that these drawings contain a depiction of a product which could be commercially developed”, and he would have worked with Mr Millar to do so.  Andrew Papax’s further evidence is along the same lines as that of Mr Pawsey.

Mr Millar’s evidence in response to the applicant’s further evidence

Mr Millar’s evidence in response to the applicant’s further evidence consists of third statutory declarations by Robert Millar, Debra Millar and William Nagel.  Robert Millar’s declaration gives his version of what occurred at, and leading up to, the meeting in October 1991.  In addition he comments upon sections of the further evidence of Pawsey and Papax.  Dorothy Millar’s declaration describes Robert Millar’s working habits and gives details of what occurred leading up and subsequent to the October 1991 meeting.  William Nagel’s declaration elaborates his earlier declarations insofar as the October 1991 meeting is concerned.

I will refer to the evidence in more detail, where appropriate, in my decision.

DECISION

In deciding a matter such as this the Commissioner is entitled to act on any material which is "logically probative" of the issues under consideration.  In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holdings Ltd's Application, (1979) RPC 523). Furthermore it is clear from the authorities (see, for example, Stamp v W J Powell Pty Ltd, (1918) 24 CLR 339) that it is incumbent upon an opponent to prove its case. Thus in this case the onus is on the requestor, Mr Millar, to provide clear evidence to justify a finding that the inventor of record, Mr Pawsey, is not the true and correct inventor of the invention which is the subject of this application. In the present matter I must consider the evidence and decide the issues mindful of these general parameters.

As a first step in making a determination in this matter, it needs to be decided what information concerning the invention was actually communicated from Mr Millar to Mr Pawsey.  More particularly, I need to decide whether the information represented by Exhibit 2 was communicated to Mr Pawsey.  If so, then as this seems to encompass the full ambit of what Mr Millar claims to have communicated I can proceed to consideration of what elements of the subject matter of application 27810/95 were invented by Mr Millar and which by Mr Pawsey.  If not, I would then have to determine what lesser quantum of information was gained by Mr Pawsey from Mr Millar and the concomitant subject matter of 27810/95 attributable to Mr Millar.  I note that at the hearing the applicant was prepared to concede that the sunshade comprising a central segment to cover the windscreen and two wing segments to cover the side windows was invented by Mr Millar.

At the hearing and in its evidence, the applicant has naturally sought to undermine the credibility of the evidence for Mr Millar.  I should observe at this point that I consider that it is possible to reconcile the evidence of the two sides if one accepts the possibility that, as Mr Wilson surmised at the hearing, Mr Pawsey really had been apprised the contents of Exhibit 2, but had subsequently forgotten this, and even now has no recollection of it having happened.  Apart from the evidence concerning Exhibit 2, there are some other minor inconsistencies in the evidence (including, in some instances, in  evidence from the same side, and even the same person), but this is not surprising given the passage of time (some recollections being of seemingly readily forgettable incidents which occurred five or more years previously) and an understandable tendency to recall events in a self-interested light.

The evidence put forward by Mr Millar is a statutory declaration attesting to the central facts of this matter.  As a statutory declaration as to primary facts, this evidence must be given considerable weight even though Mr Millar is obviously not disinterested in this matter.  Mr Millar’s assertion as to the facts is supported by some hard  (on the face of it, at least) evidence, most notably the “Exhibit 2” drawings and some corroborating evidence from Mr Nagel and, to a lesser extent, Debra Millar.  Although some doubts have been raised as to the impartiality of Mr Nagel due to an alleged falling out with Mr Pawsey and the fact that the two are now business competitors, his evidence has a sense of integrity about it.

To undermine Mr Millar’s evidence, Mr Shavin firstly attacked the credibility of Mr Millar himself.  He did this by contending that Mr Millar had broken the Corporations law by breaching his fiduciary obligations as a director of Creative Concepts Pty Ltd. This arose from Mr Millar having apparently had dealings on his own behalf with the applicant without the knowledge of Creative Concepts Pty Ltd. While the circumstances do appear to raise some interesting legal questions, it would be inappropriate for me to arrive at any conclusion adverse to Mr Millar without a far more thorough inquiry into the circumstances than is possible on the basis of the superficial evidence now before me. In particular, Mr Millar appears to have been caught unawares by this allegation, and has had no opportunity to provide a defence to it. As with several other issues which the applicant brought up at the hearing, I do not see why these matters could not have been signalled prior to the hearing, especially as the hearing took place more than a year after the supporting evidence was filed.

I do, however, have a couple of other slight concerns regarding the credibility of Mr Millar’s evidence.  The first of these relates to the tone of Mr Millar’s evidence in response.  This was subjected to some strong criticism by Mr Shavin, describing it as

“ one of the most objectionable and embarrassing declarations to be filed.  It is completely incompetent.  The sarcasm, snide remarks and speculation should be completely disregarded and given no weight."

I think that Mr Shavin’s criticism has some basis, and the tenor of this evidence to my mind raises the question of whether in Mr Millar’s evidence as a whole the truth to some degree could have become blurred by emotion.  My second concern relates to the unequivocal certainty with which Mr Millar purports to remember details of seemingly minor events which occurred several years previously, while everyone else, it appears, has difficulty in doing so.  I recognise that powers of recall vary widely from one person to another, but nonetheless Mr Millar’s evidence does, I believe, tax credulity in this respect, and this reflects on his evidence as a whole.

Next Mr Shavin reviewed the various drawings/sketches attached as exhibits to Mr Millar’s first declaration, with particular focus on the various dates indicated on some of them.  Clearly, the inference that Mr Shavin intended I should draw was that these documents may have been forgeries.  However, I am not at all convinced that such an inference can reasonably be drawn.  It seems to me that the most that can be said of the various aspects of the drawings remarked upon by Mr Shavin is that they are mildly idiosyncratic, but well within the spectrum of ordinary human behaviour.  Regarding Exhibit 2, Mr Shavin saw something significant in the fact that these drawings show something more sophisticated than the actual prototypes made subsequently.  However, I find nothing surprising at all that a prototype does not have all the “bells and whistles” that it is intended that the final production version should have, particularly in such a “backyard” operation as Mr Millar’s appears to be.  I feel Mr Shavin was on slightly more solid ground when he questioned the authenticity of Exhibit 2 on the basis of its “feel”.  The use of a United States-type copyright symbol of a “C” in a circle next to a date seems fairly eccentric, and the occurrence of a date on such a rough pencil sketch seems fortuitous.  To have had Exhibit 2 forensically tested would, from my point of view, have been useful, and I am not entirely satisfied with the reasons given by Mr Millar for his refusal to give it up for that purpose.  In this regard, Mr Shavin cited the decision of the High Court in Jones v Dunkel (1959) 101 CLR 298. In his judgement in this case, Windeyer J cited with approval the following quote from Wigmore on Evidence 3rd edition (1940) vol. 2, s. 285, p.162, as follows:

“The failure to bring before the tribunal some circumstance, document, or witness, when either the party himself or his opponent claims that facts would thereby be elucidated, serves to indicate, as the most natural inference, that the party fears to do so, and this fear is some evidence that the circumstance or document or witness, if brought, would have exposed facts unfavourable to the party.  These inferences, to be sure, cannot fairly be made except upon certain conditions; and they are also open always to an explanation by circumstances which made some other hypothesis a more natural one than the party’s fear of exposure.  But the propriety of such an inference is in general not doubted.”

In this case there are, I think, some special circumstances which lead me to the view that I ought not attach much significance to the reluctance of Mr Millar to subject Exhibit 2 to forensic testing.  Firstly, there is the timing of the applicant’s manoeuvre.  The applicant could have moved on this well before the hearing, and its failure to do so smacks a little of a ploy rather than any serious questioning of the genuineness of the exhibit.  Also, there was, and still is, of course, no actual evidence in existence that could have been put to the hearing, although the adjournment perhaps afforded an opportunity for the evidence to have been obtained and adduced as further evidence.  Finally, I accept that Mr Wilson’s concern that what the applicant was proposing was unprecedented in actions before the Patent Office was real, albeit, in my view, baseless.

My overall feeling is that Exhibit 2 is, on the balance of probabilities, genuine, although, as I have indicated, I have some reservations on this, but also remembering that Mr Millar has sworn to that effect.  The issue that then has to be resolved is whether Exhibit 2 was tabled at the impromptu meeting in October 1991 between Millar, Pawsey and Nagel and whether Mr Millar gave a verbal account of its contents, and, as a result, whether Mr Pawsey had any awareness of the information contained in the sketches of Exhibit 2.

The evidence from the applicant as to what happened in the October 1991 meeting is essentially that neither Mr Pawsey or Mr Papax (who was also at the October 1991 meeting for part of its duration) recall Mr Millar producing Exhibits 2 and 14.  In his first declaration, Mr Pawsey does not directly refer to the meeting at all.  In his second declaration he appears to recall the meeting, but gives no indication of recollecting Exhibits 2 and 14.  In his third declaration he denies having any recollection of either seeing the Exhibit 2 drawings or of noting any of the features depicted in them.  Mr Papax also denies having any recollection of having ever seen the Exhibit 2 drawings.  As support for the reliability of his memory, Mr Pawsey asserts that had he been acquainted with the contents of Exhibit 2 he would have immediately recognised their commercial value and would have acted then and there to exploit them.

I am prepared to accept that Mr Pawsey and Mr Papax have stated the truth to the limit of their recollection.  However there are aspects of each one’s evidence which do not inspire much confidence in their powers of recall.  For example, in his third declaration Mr Pawsey seems to concede the possibility that Exhibit 2 was produced at the October meeting, even though he is categorical that he does not remember him having done so.  He states, for instance:

“ If Millar produced the sketches during a meeting I have no recollection of either seeing them or noting any of the features depicted in them.”

It is also of relevance to this situation that at the time these events took place Mr Pawsey and Mr Millar were having dealings on an unrelated matter which seems to have been of considerable vexation to Mr Pawsey, and this may have been a distraction to him.

Mr Papax’s evidence I regard as being quite unreliable.  It is not even clear that he remembers the October 1991 meeting, apparently confusing it with the one held in May of that year.  This is quite understandable, in that as a sales representative for the applicant company he seems to be rather at the periphery of the events surrounding this matter.  From the evidence it appears he was only called into the October 1991 meeting at the latter part of the meeting.

The thrust of the evidence by Mr Millar and Mr Nagel is that Mr Pawsey looked towards the sketches without actually studying or examining them.  Given the nature of the sketches, which require a bit of an effort to assimilate their content, I do not think that merely looking towards them would be sufficient to normally enable someone to become aware of what they showed.  However, Mr Millar also states in his evidence that he gave a verbal outline to Mr Pawsey and Mr Nagel of what was contained in the sketches.  That evidence is confirmed by Mr Nagel.  Although Mr Nagel’s evidence in places suggests his memory has been prodded (for example, in his third declaration he states: “In my second declaration, in paragraph 5, I note I discussed both the May and October 1991 meetings without separating each meeting.  To clarify..........”), as I have already indicated I think the evidence of Mr Nagel deserves to be given considerable weight.

There is no doubt that most of the evidence for Mr Millar is susceptible to challenge on some basis or another.  However when considered in its entirety it constitutes an accumulation of interwoven threads of evidence which lends credence to the evidence as whole.  On balance, I incline towards the evidence for Mr Millar over that of the applicant.  Accordingly I conclude that as a result of the meeting of October 1991 Mr Pawsey gained full knowledge of the subject matter of Exhibit 2 of the first declaration by Mr Millar.

The question that then arises is - as it was expressed in analogous circumstances in Dabscheck v Hecla Electrics Pty. Ltd., 57 CLR 418 by Starke J - whether that knowledge originated in Mr Pawsey's mind the device which became the subject of application 27810/95. In Dabscheck v Hecla Electrics Pty. Ltd., Starke J thought it "possible, perhaps probable" that that had happened.  In the present matter there has been a substantial quantity of evidence in relation to the development work expended by Mr Pawsey in developing his (as he considered it to be) invention.  However, this was clearly after the conception of the invention.  The circumstances at play in this matter suggest to me that Mr Pawsey's invention is more likely in reality to have been a resurrection of Mr Millar's invention rather than originating from the mind of Mr Pawsey.

As I have indicated previously, Exhibit 2 seems to fully encompass that which Mr Millar is seeking to establish Mr Pawsey obtained from him.  However, for the sake of completeness I should have regard to whether the evidence also establishes that certain of the subject matter of application 27810/95 was obtained by Mr Pawsey from Mr Millar by other means than via Exhibit 2.  In my view, it does, and in particular the evidence is that both the “second prototype” and the “third prototype” were shown to Mr Pawsey.  The third prototype is Exhibit 14 to Mr Millar’s first declaration, and the evidence in relation to that is on much the same footing as Exhibit 2.  The second prototype is itself not in evidence, but a copy of a drawing of it is attached to the first declaration of Mr Nagel and to the first declaration of Dorothy Millar as “Annexure A”, in each case.  It is conceded by Mr Pawsey that he had been in receipt of the second prototype.

Accordingly I find 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.

Turning now to the matter claimed in application 27810/95, it has been conceded by the applicant that the invention in its broadest form is the invention of Mr Millar.  Given my finding in relation to the inventorship of the matter disclosed in Exhibits 2 and 14 of the first of Mr Millar’s 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 question that then must be addressed is whether all aspects of the matter in 27810/95 were invented by Mr Millar, or whether some of it is attributable to Mr Pawsey.  From the established facts of this matter it is clear that there is no basis to conclude that Mr Millar and Mr Pawsey co-invented any portion of the disclosure in the specification, as it is clear that their exertions in this regard have been independent of each other.

Exhibits 2  and 14 and Annexure A disclose all permutations of combinations of both internal and external sunscreens shaped to cover both the windscreen and the side windows of a vehicle.  When internal, the sunscreen is folded cardboard, while the external form appears to be of vinyl material, optionally mirrored, as is common general knowledge in the art.  The sunscreen is disclosed as being of one piece, as well as three pieces comprising a central segment for the windscreen connectable by velcro to two wing segments at each end for the side windows.  As well, in the one piece sunscreen the windscreen portion is disclosed as being joined to the side window portions by an elastic insert and by an upwardly divergent concertinaed portion.  There are also flaps positioned on the top and ends of the side window portions to enable them to be secured to a vehicle.

There is no doubt that most of what is claimed has, based on my finding of what Mr Millar disclosed to Mr Pawsey, been obtained from Mr Millar.  Nevertheless, it seems to me that there is matter described and claimed in the specification for which there is no evidence that Mr Millar has had a role in the inventing of and which must be considered to have been invented by Mr Pawsey unless it is subsequently proved otherwise. Without expressing a concluded view on this, I consider that claims 12 and 21 and some shapes of sunscreen and forms of attachment described in the body of the specification may fall within this category.  I note that at the hearing neither party considered it appropriate in these proceedings to get into a detailed consideration of the claims, perhaps in anticipation of what my approach in this would be and perhaps in recognition that the claims had not yet been examined and were in any case under a cloud in consequence to the International Search Report.

Hence there is no justification for Mr Millar be accorded sole inventorship of, and entitlement to, application 27810/95.  That leaves open two possibilities.  Firstly, I could direct that application 27810/95 proceed in its present form, with Messrs Millar and Pawsey joined as inventors and applicants.  Alternatively, I could permit Mr Millar a relatively short period of time in which to file a request under section 36 for a declaration of the Commissioner as to Mr Millar's eligibility to the matter contained in application 27810/95 which he has invented.  My finding as to eligibility in this section 32 action should have effect in any subsequent action before the Commissioner in which the issue of eligibility arises.  If I were to adopt the latter approach, in my view, I need issue no further determination in regard to the manner in which application 27810/95 is to proceed over my finding as to what matter in the specification the applicant, Mr Pawsey, does not have entitlement to.  That will have the effect that when the application is examined it will be incumbent upon the examiner to implement that finding so that the accepted application reflects my finding as to entitlement.

In the course of the hearing both parties left no doubt as to where their preferences lay on these two options.  Mr Millar strongly favoured the second option, regarding joint ownership of application 27810/95 as being a pointless outcome for him as his co-applicant, Robert Hicks Pty Ltd, would be able to carry on as before without providing him with any recompense for having appropriated of his intellectual property.  (It appears that Mr Millar does not himself have the capability to manufacture and market his invention.)  The applicant favoured joint ownership, ostensibly on the basis that it was the logical way to resolve this matter.

My present inclination is to accede to Mr Millar's wishes in this regard, as giving a more just outcome, and to allow him 28 days in which to file a section 36 request.  However in order to safeguard the interests of both parties, before taking that step I think it prudent to allow them 28 days in which to make submissions in relation to how this matter should proceed from here on.

Conclusion

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

COSTS

Ordinarily in matters such as these, costs follow the event.  At the hearing, some debate ensued as to what would constitute a “win” or a “loss” in this matter for costs purposes.  It was said by the applicant that if Mr Millar did not obtain sole entitlement in application 27810/95 - as his section 32 request sought - he could not be said to have established his case.  I see some sense in that.  I am also cognisant of the fact that shortcomings in formal aspects of Mr Millar’s evidence have unreasonably inconvenienced the applicant and led to the hearing needing to be adjourned.  In the circumstances I think both sides should bear their own costs.  Therefore I make no award of costs.

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