Rosario Adamo v Requiem Manufacturing Pty Ltd
[2002] APO 8
•1 March 2002
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. PQ6804 in the name of Rosario Adamo
Title: Improved Coffin
Action: Request under section 32 of the Patents Act by Requiem Manufacturing Pty Ltd.
Decision: Issued .
Abstract
Found that the section 32 requestor, Requiem Manufacturing Pty Ltd, derived sole entitlement as an assignee of the actual inventors. In particular, it was found that an assignment from the applicant, Mr Adamo, as a co-inventor could be implied by conduct or, in the alternative, the requestor would be entitled to relief under section 55 of the Property Law Act (Qld) on the basis of an implied agreement between Mr Adamo and the other directors of Requiem - Speedy Gantry Hire Pty Ltd & Anor v Preston Erection Pty Ltd [1998] 210 FCA (13 March 1998) applied.
While it was clear on the evidence that Mr Adamo was not the sole inventor, Requiem failed to demonstrate that Mr Adamo did not make a material contribution to the invention described including at least the initial concept of a hermetically sealed fibreglass coffin and the addition of chemical agents to address odour problems. However, his conduct and dealings with the two other Requiem directors prior to and following the incorporation of the company overwhelmingly implied that an assignment was agreed and came into effect.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. PQ6804 by Rosario Adamo and a request under section 32 of the Patents Act by Requiem Manufacturing Pty Ltd.
BACKGROUND
Provisional patent application PQ6804 was filed on 10 April 2000 by Rosario Adamo (Adamo). The patent request filed in relation to the application lists as inventors of the invention both Adamo and Wayne Parker.
On 29 November 2000 Requiem Manufacturing Pty Ltd (Requiem) filed a request under Section 32 of the Act in relation to the application, for a determination of "the person who may proceed with the application". The circumstances under which it alleges entitlement are:
"Mr Adamo was a director of Requiem Manufacturing Pty Ltd at the time of filing Provisional Patent Application Number PQ 6804. He made this application in his own name without the rightful permission of the Requiem Manufacturing Pty Ltd.
Requiem Manufacturing Pty Ltd, have been assigned the rights to apply for the invention believed to be described in PQ6804, from the rightful inventors. The rightful inventors are Messrs Wayne Parker and Jeffery Smallwood of Requiem Manufacturing and Messrs David Tomlinson and Wayne Linklater of THC (a consultant chemical company)."
Both parties subsequently filed evidence and the matter came to hearing in Canberra on 6 December 2001. Adamo was represented by Mr Trevor Dredge, patent attorney, of Intellpro, Brisbane. Requiem was represented by Mr Peter Fisher, patent attorney, of Fisher Adams Kelly, Brisbane.
SPECIFICATION
It is apparent from the specification that the invention relates to an improved coffin and more particularly a coffin that is effective in controlling the liquid and gaseous products that are generated by decomposition. These products would appear to be a significant hazard if permitted to escape from the coffin and can be potentially explosive, problems that are particularly significant when the coffin is interred in a mausoleum.
A number of prior art approaches to these problems are referred to and include the provision of:
seals between the lid and body of the coffin which can withstand the build up of internal pressures;
pressure relief valves;
external containment and collection apparatus; and/or
evacuation and the replacement of the air inside the coffin with inert gas.
These solutions are said not to address all aspects of the problem and in particular that evacuation and use of an inert gas only retards decomposition and does not prevent decomposition products accumulating.
A summary of the invention is provided in the following terms
"In one aspect therefore the present invention resides in a coffin for storing one or more cadavers. The coffin comprises:
a)a base body having a bottom wall, and opposed side walls and opposed end walls joined to the bottom wall;
b)a lid adapted for sealingly closing said base body;
c)at least one pressure relieve valve arranged in one of the walls of said base body or said lid, said at least one valve being adapted to release gas when the pressure within the sealed coffin exceeds a predetermined level;
d)absorbent materia [sic] arranged in said base body to absorb liquid decomposition products from said one or more cadavers; and
e)absorbent material arranged on said lid to absorb ammonia, methane, hydrogen sulfide and other decomposition gases from said one or more cadavers."
The discussion that follows suggests that, in use, the coffin is initially evacuated through a separate evacuation valve or through the pressure relief valve. Evacuation is said not only to reduce internal pressure but reduce the risk of spontaneous combustion ratios of the oxygen and the combustible decomposition gases from reaching critical levels. Gas products will however form and the gas pressure will increase until the pressure relief valve operates at a predetermined level. The absorbent material also acts to reduce internal pressure and to immobilise the decomposition products.
The specification describes the packaging of the absorbent material and its composition in considerable detail. In general it suggested that the absorbent material be a particulate including:
a) 5 to 30% by weight of a hygroscopic polymer; and/or
b) 10 to 55% of porous silica minerals; and/or
c) 15 to 50% of an absorbent for small molecules; and
d)10 to 50% by weight of an aqueous emulsion of a mixture of terpene odour masking compounds impregnated in the particular components.
It is said that, surprisingly, these component materials absorb liquid and gaseous wastes in humid and dry atmospheric conditions and release the odour masking terpenes in a synergistic interaction of the absorbents and the emulsion. Preferably the hygroscopic polymer is a polyvinyl alcohol/polyacrylate blend while the porous silica minerals preferably includes a mixture of perlite and/or vermiculite. The molecular absorbent may include finely divided zeolite preferably mordenite and/or activated carbon. Finally the emulsion of terpene type compounds may include a mixture of available terpene type compounds such as camphor, menthol, pine, eucalypt and ti-tree oils. The detailed description discloses specific examples of the absorbents for positioning at various locations within the coffin. Sachets are used to contain the absorbents used in layers or within cassettes.
EVIDENCE
The evidence filed in support of the section 32 request comprises:
a statutory declaration, dated 14 February 2001, by Wayne John Parker, a director of Requiem Manufacturing Pty Ltd and of Striking Distance Struer Pty Ltd (Struer), with exhibits WJP-1 to WJP-4. Mr Parker is also listed as an inventor in respect of the application.
a statutory declaration, dated 14 February 2001, by Ken Lyle Neil, also a director of Requiem and Struer, with exhibits KLN-1 to KLN-48
Evidence filed in reply comprises:
a statutory declaration, dated 12 June 2001, by Rosario Adamo who is the applicant and also listed as an inventor with respect to the application. Mr Adamo furthermore is a former director of Requiem and retains a shareholding through his company Imex International Importer & Exporters Pty Ltd (Imex). His declaration is accompanied by exhibits RA-1 to RA-41.
a statutory declaration, dated 20 June 2001, by Renata Matacchioni.
an un-witnessed declaration, dated 27 June 2001, by Casiello Giovanni, chemical engineer (with translation).
an un-witnessed declaration, dated 19 June 2001, by Roberto Salvatori (with translation).
Further Evidence
On 21 November 2001 Requiem filed further evidence being:
a statutory declaration, dated 3 November 2001, by Dr David Tomlinson, the director of THC Pty Ltd (THC).
a statutory declaration, dated 2 October 2001, by Darryl Mischlewski, a registered patent attorney.
I received submissions on the allowability of this further evidence at the hearing. The present proceedings are not governed by Chapter 5 of the regulations but the considerations that apply to regulations 5.10(4) and (5) are also relevant here and, in essence, require that before allowing a request to adduce further evidence I must be reasonably satisfied that the serving of further evidence is appropriate in all the circumstances. In deciding whether to exercise my discretion in this regard I am mindful of the well known principles set out in A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213 and Ferocem Pty Ltd v Commissioner of Patents 28 IPR 243 as were recently affirmed in National Starch & Chemical Company v Commissioner of Patents [2001] FCA 33. Hence in determining what is appropriate I must give consideration to a number of competing considerations including the interests of the parties as well as that of the public. In relation to the latter, it is the case that when a question of ownership arises, as was pointed out recently by the delegate in Spencer Industries Pty Limited v Anthony Collins and B & J Manufacturing Company [2002] APO 4 (18 January 2002), the public interest lies very much "against compromising any legitimate claim to the invention through a failure to determine the matter on its merits".
From the other evidence filed it is clear that the recollections of Dr Tomlinson and Mr Mischlewski could be of some significance in this matter. Dr Tomlinson in particular is a key figure, being allegedly an inventor of the absorbent materials disclosed in the application. Mr Mischlewski on the other hand is said to have had professional dealings with Mr Adamo in relation to the invention. Hence I am of the view that the evidence sought to be introduced is very likely to contribute to a more correct determination of the matter before me. At the same time I do not think that there would be any injustice to Mr Adamo, since there is no significant issue of delay and he has, in any event, the opportunity to provide reply evidence and to be heard in relation to the new matter. Consequently on 17 January 2002 I decided to allow the further evidence and permitted Mr Adamo one month from that date to file evidence in reply. In the event he filed two further statutory declarations, both dated 15 February 2002.
In the circumstances I do not think it is a matter of giving reduced weight to the evidence as suggested by Mr Dredge but it may be a factor that may be considered in an award of costs should Requiem be ultimately successful.
DECISION
The present matter arises ostensibly as a dispute between the directors of Requiem, Ken Neil, and Wayne Parker and a former director of the company, Rosario Adamo, concerning the intellectual property contained in provisional patent application PQ6804.
As indicated above, Requiem assert that it is the person entitled in relation to the invention by virtue of assignment from the inventors Messrs Wayne Parker, Jeffery Smallwood, David Tomlinson and Wayne Linklater. In the alternative it was argued that if Mr Adamo made an inventive contribution then those rights were assigned to Requiem as a result of the agreement under which it was established. For his part Mr Adamo claims sole entitlement to the disclosed invention, despite the listing of Wayne Parker as co-inventor on the request form and no apparent assignment from him to Adamo.
S.32 of the Act provides that
"If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires."
From schedule 1 of the Act:
“interested party, in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person”.
Clearly Requiem is an interested person and it is apparent that, if I am to make any determination in this matter, there are two fundamental issues to be resolved. Firstly, what are the inventive contributions of Adamo, Parker, Smallwood, Tomlinson and Linklater, if any and secondly, what entitlement, if any, does Requiem derive from the persons found to have made an inventive contribution.
It is also clear from the authorities that I can only make the determination sought if I am satisfied that Requiem is entitled and in this it has the onus of proof. However, in deciding the matter I am entitled to act on any material that is “logically probative” and in reaching a conclusion the standard of proof required is the civil standard, that is, on the balance of probabilities (Dunlop Holding Ltd’s Application (1979) RPC 469).
From the evidence, the sequence of events leading to the invention and underlying the subsequent dispute appear to be, in general:
Struer (trading as Kayakqua Sports) was established by Parker in 1993 as a fibreglass manufacturing business, particularly for the production of fibreglass kayaks.
In at least 1997/98 Parker’s operation was located in Kunda, Queensland adjacent to Mr Adamo’s business, Queensland Marble & Granite. Mr Adamo indicates that he is a stone merchant and stone mason and that he and his family had been in the business of supplying headstones for graves and mausoleums. He also indicates that he had exported coffins to the Solomon Islands during 1996/97.
Whether the idea came from Adamo through his visit to Sicily in 1997 or from Parker in his desire to expand his business options, it appears that in late 1997 Parker and Adamo discussed the production of fibreglass coffins that were capable of containing the fluids and gasses from decomposing corpses.
In August and September 1998 Kayakqua Sports invoiced Mr Adamo for the construction of a demonstration coffin.
Adamo, Parker and Neil met on 8 October 1998. The minutes of this meeting (KLN-2) were not challenged and indicate more relevantly:
"4.Discussion on design was discussed [sic] with WP to complete design as discussed.
….
6.Moved Down Under Coffins with copyright insignia preferable name for product and literature.
….
9.Decided that development company to hold control of product for benefit of subsidies and grants etc, as well as copyright.
….
12.Ross & associates and Kayakqua to share profits 50/50 from gross sales less $400.00 less costs of commissions, freight, overheads etc. incurred in producing sales."
In the following week an effort was made to develop a joint venture agreement. Contrary to Mr Adamo's declaration, the evidence suggests the initial draft was forwarded by Mr Adamo's lawyers to Struer on 14 October 1998. This draft appears to generally reflect the minutes of the earlier meeting, including the interests to be had by the various parties, and significantly indicates that:
"B.Kayakqua and Ross propose to establish a business in the manufacture and retail of fibreglass coffins to be called "Down Under Coffins"
C.The parties have agreed to contribute start up capital in order to manufacture approximately seven (7) coffins to evaluate the commercial viability of the business"
Clauses 5 & 6 indicate that Down Under Coffins (DUC) would undertake certain activities including the production of coffins for which Kayakqua would be paid. DUC would also undertake various promotional activities and would appoint Ross as the marketing and promotional manager.
Clause 7 indicates that if the parties are satisfied with regard to the due diligence valuation then they would incorporate a company. Significantly the parties would:
"7.3transfer to the company the business name, equipment, assets and contracts held by Down Under Coffins"
The version signed on behalf of Struer on 15 October 1998 and apparently forwarded to Mr Adamo is very similar but not identical. In recital B rather than "propose to establish" the wording is "propose to investigate the establishment". To recital C is added the words "… and the roll [sic] of "Down Under Coffins" will be the wholesale distribution internationally". Interestingly, a new clause was added but apparently then struck out. It stipulated that:
"Both parties acknowledge that Kayakqua will hold the manufacturing responsibilities and rights separate to this agreement"
This agreement does not appear to have been signed by Mr Adamo.
On 19 February 1999 a provisional patent application PP8791 was filed in Struer's name. From the draft provided in evidence, the invention disclosed in the specification was essentially a two piece coffin, preferably manufactured from fibreglass, with a fluid tight seal between the two parts and evacuation means adapted to exhaust substantially all of the air within the coffin. The evacuation means is described as being preferably a valve assembly in the coffin through which the air can be evacuated. Notably there is no mention of gas or liquid absorbent material associated with the coffin or a pressure relief valve.
Also in February 1999 Adamo indicates that he took a coffin to Italy and met with Salvatori, Giovani and Davini to whom he suggested that they could put together a combination of chemicals that would solve the problem with the gases and odours.
On his return to Australia in March Mr Adamo says that he asked Parker to source available chemicals in Australia or locate a chemist to assist. He also had obtained activated carbon from Salvatori.
Apparently on 27 April a meeting between Neil, Parker, Adamo occurred where , inter alia, the formation and name of the new company was discussed. The minutes of this meeting, although unsigned, include the note points:
"Working capital:
…
- Patent Application - Ken paid
…"
and
"Ownership of the Patent:
Striking Distance to transfer the patent to Envirotech Pty. Ltd."
"Envirotech" was one of the names suggested for the new company.
10. On 14 May the joint venture company was registered but under the name Requiem Manufacturing Pty Ltd. Ultimately, Neil, Parker and Adamo were made directors with Struer and Mr Adamo's company Imex being the joint shareholders.
11. Mr Parker in mid to late 1999 contacted the Fibre Composites Design and Development Group (FCDD) at the University of Southern Queensland on behalf of Requiem and commissioned them to do a series of tests, including vacuum testing, on a number of prototype coffins. The evidence indicates a shifting in emphasis over the timeframe of the project. The report and other interim documents indicate that at a final meeting between Parker and FCDD staff it was "decided that a pressure relief valve be installed to remove any major pressure loading on the coffin". As a result FCDD was advised that their structural design input was no longer required. The timing of this meeting is not clear but would appear to have been prior to 26 October 1999 when the invoice for the FCDD work, including the meeting, was issued.
12. Whether on his own initiative or from Mr Adamo, Parker mentioned to a Mr Double of the Queensland State Development Centre that he was looking for further methods of containing decomposition products. Double introduced Parker to Wayne Linklater of Puro Systems and Mr Linklater wrote to Parker on 19 October concerning the development of a trial system. Apart from pricing, this letter indicates that the intellectual property in aspects of the filter and odour control system to be developed would remain with "your company" but that the technology to treat the odour problem had already been developed and the rights to that would remain with "us".
Through Linklater, Dr David Tomlinson of THC Pty Ltd became involved in the project. He indicates that he met with Adamo and Parker in early December 1999. Mr Tomlinson's belief was that a sealed evacuated coffin was Mr Adamo's concept.
On 9 November 1999 Wayne Linklater sent a further letter to Mr Parker concerning his proposal for a full scale trial.
13. During December 1999 Dr Tomlinson was in correspondence with Mr Adamo, on behalf of Requiem, concerning the commercial relationship between Requiem and himself and Linklater. It is clear from the evidence filed in relation to PQ6928 that a joint venture between Requiem and THC was under consideration and that Tomlinson believed that he and Linklater were contributing intellectual property for which a royalty would be payable.
A facsimile dated 8 December 1999 indicates that Tomlinson would endeavour to send Adamo technical details of the odour control system "by weeks end". This seems to give context for the technical description ascribed to Dr Tomlinson which appears in the declarations of the parties and is dated 9 December.
14. The facsimile of 8 December indicates also that Tomlinson would make contact with the "IP/patent specialist" and provide Adamo with contact details. Subsequently Adamo met with a registered patent attorney , Darryl Mischlewski, on 21 December 1999. On 22 December Mr Mischlewski wrote to Requiem confirming the meeting and reflecting his understanding of the development, various marketing issues and ownership. Most notably the letter includes the following:
"Inventors/ownership
Based on your advice it appears that David Tomlinson and possibly Wayne Parker should be named as inventors.I note that the patent will be filed in the name of Requiem Manufacturing ACN 087600762.The inventors will need to assign their rights to Requiem in return for some consideration such as equity in the company.
I note that an agreement has been proposed with David Tomlinson and that Wayne is a shareholder in Requiem. I will need to review those documents to ensure that they are consistent with the transfer of title."
Subsequently, Mr Neil wrote to Mr Mischlewski on behalf of Requiem's directors indicating that they would like him to proceed "with the provisional patent protection". Neil goes on to state that, "I believe both David and Wayne Parker will appear as inventors as per your suggestion" and then clarifies that Mr Parker is not a shareholder of Requiem.
A letter from Mr Mischlewski on 28 January 2000 thanks Requiem for his appointment and indicated the information he requires. There are two lists of items, one headed "coffin design [Wayne Parker]" and the other "Chemical control [David Tomlinson]". From later correspondence it is apparent that Mr Mischlewski received information from Adamo and possibly Tomlinson and Parker and that he produced a draft specification which was forwarded to Requiem on 5 April 2000.
15. Michael Petrascu is said by Mr Neil to be a friend of Mr Adamo and was appointed by Requiem as an intellectual property advisor for the purpose of negotiations with THC. Mr Adamo indicates that on 18 February 2000 he had Mr Petruscas prepare a letter in response to a draft agreement presented to Requiem by Dr Tomlinson. A copy of this letter (RA-18) indicates more information was sought from Dr Tomlinson concerning ownership of the intellectual property involved in the chemical absorbents and production costs. Notably this letter indicates:
"We believe that you have developed the formula, but legally we need to have, in writing, the evidence supporting the ownership of the formula's to avoid any future litigation."
16. A meeting of Requiem directors occurred on 27 March 2000. Among the notes contained in the official minutes is the entry:
"Ross Adamo and Michael Petrescue [sic] to travel to Brisbane on Tuesday, 28th March to start coffin patent application using Ross Adamo's lawyers who have a dedicated patent division in-house"
A further meeting was held on 3 April 2000. Relevantly the minutes to this meeting include the entries:
"B. Ross Adamo held patent meeting with Michael Owens of Bowden Lawyers on Tuesday, 28 March. Owens to get back to Requiem by 31st March, 2000. No contact, so Ross Adamo to chase up today.
C. Meeting with Ross Adamo, Michael Petrescue [sic], Wayne Parker and David Tomlinson held on Wednesday night 29th March. Agreement on Technology Transfer from Tomlinson to Requiem on chemical content finalised and Petrescue [sic] to write up formal documents for signing. … "
Shortly after this meeting Mr Adamo sent a letter to the other directors listing a number of concerns with the conduct of the business of the company and listing priorities and indicating the direction he thought they should pursue. It includes as the first dot point:
"1.Our number one priority is to have the patent application submitted ASAP, I will push for this to be carried out this week if possible."
17. On 5 April 2000 Mr Petrascu appears to have sent a letter to Michael Owens of Bowden Lawyers on Requiem letterhead indicating that "I have take [sic] the opportunity to add a little more information relevant to the Patent application." and "The attached draft has been compiled by us and the person in Melbourne that I mentioned on the telephone. I hope that it will be valuable to you for short cutting a lot of thinking and documentation so that the Patent application may be filled [sic] as soon as possible."
The patent specification attached to this letter appears to be identical to the one Mr Mischlewski forwarded to Requiem also on 5 April and the provisional specification subsequently filed on 10 April 2000 is clearly based on it.
18. On 17 April 2000 THC Pty Ltd filed provisional patent application PQ6928 entitled "Odour control" and listing David Tomlinson and Wayne Linklater as inventors. The invention disclosed in that application is referred to in the following terms:
"An absorbent device for liquid and gaseous contaminants consisting of a package having at last one porous surface, said package incorporating a particulate absorbent including
a) 5 to 30% by weight of a hygroscopic polymer
b) 10 to 55% of porous silica minerals
c) 15 to 50% of an absorbent for small molecules andd) 6 to 50 % by weight of an aqueous emulsion of a mixture of terpene odour masking compounds impregnated in the particulate components."
I note that the particulate absorbent described here is substantially identical to the particulate absorbent described on page 6 of the present application.
PQ6928 eventually proceeded in the name of both THC and Requiem after the settlement of a section 32 dispute, evidence in which I have referred to above.
19. After the filing of the present application the relationship between Mr Adamo and the other directors quickly deteriorated. In a letter of 5 May 2000 Mr Adamo indicated to them that "I have now taken all steps necessary to protect my intellectual property rights in relation to my invention. If the company wishes to negotiate with me to take a license of my invention, it will first have to address my concerns about the conduct of the companies affairs." In his declaration he states that "I instructed my attorneys to go ahead and make the application in May 2000 so as to ensure that Ken and Wayne could not do something against me underhanded as for the case when they applied for a Patent pending under the mane [sic] of Striking Distance the year before without advising me or consulting me and I felt I had to take matters into my own hands instead of relaying of [sic] Ken Neil and Wayne Parker to do the right thing."
Contribution of Adamo, Parker, Smallwood, Tomlinson and Linklater
In Row Weeder Pty Ltd v Nielsen and Others 39 IPR 400 the delegate considered a number of earlier decisions of the Commissioner and said the common theme from these was that a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the invention. This approach has been approved by the Administrative Appeals Tribunal in Upham v Commissioner ofPatents and Another [1998] AATA 852. Of course, under section 15 of the Act, entitlement may pass from an inventor to another person by assignment or under some other principle of law. Initially however it is necessary to identify those persons who have made an inventive contribution and subsequently to determine to whom those rights may have passed under law.
In the present circumstances the principle discussed in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32 (16 June 1995) may also be of some assistance. The delegate in that case concluded that:
"... it seems to be the case that a second person, engaged because of that person's expertise to construct a device ... based on instructions from or given the concept of a first person, is not normally regarded as an inventor of the device, and this holds true even if the second person suggests ways to aid its design or operation. However if the second person's suggestions give a result or advantage not contemplated by the original concept then the second person may qualify as a joint inventor of the improved device. In this context I think the result or advantage would need to be a material one so that the resulting device is overall an improved one not merely a preferred workable embodiment of the original concept."
In general I am of the view that the evidence provided by Requiem in this matter has raised significant questions as to the entitlement of Mr Adamo and the role that he asserts in the development of the invention. However, as is often the case when such matters become acrimonious, the weight of evidence does not lie clearly on one side or the other and parts of the evidence of both parties would seem to be of questionable veracity. In this regard cross-examination of the key witnesses may have been of some considerable assistance but as it stands I am left to make a decision only on the existing declaratory evidence.
On the evidence, I can only conclude that the concept for a sealed fibreglass constructed coffin came from Adamo through his contacts with the funeral industry and his relatives in Italy. While Mr Adamo provides corroborative evidence, including that of Matacchioni and others, Parker does not provide convincing reasons for his interest in coffin making and certainly no corroboration even though he mentions a Mr Sommers with whom he is said to have had discussions. The evidence suggests to me that in the early stages Parker was developing the invention for Adamo. Parker, for example, invoiced Adamo for the construction of the first coffin. Therefore, there is support for the suggestion that Adamo approached Parker to see if it were possible to construct a sealed fibreglass coffin.
On the other hand I believe it is clear that Mr Parker took a leading role in the subsequent development of the coffin, evidenced, for example, by Struer's provisional patent application PP8791 and his work with the FCDD. In relation to PP8791 I do not think the evidence is consistent with an endeavour of Parker and Neil to appropriate or deal dishonestly with the concept at least as it existed at that time. While Parker and Neil may not have informed Adamo before filing the application in February 1999, they appear to have brought it to his attention shortly after when he returned from his overseas trip and kept him informed of subsequent correspondence in relation to it.
In its basic form, the invention of provisional application PP8791 is a sealed evacuated coffin. Fibreglass construction is only an optional feature. Mr Adamo, while discussing the pressure relief valve in some detail does not provide any indication of how he arrived at the concept of an evacuated coffin. Despite Dr Tomlinson's impression that "the sealed evacuated coffin or casket was Mr Adamo's concept", I believe the conclusion most consistent with the evidence is that this feature came from Parker, even if the concept of a sealed fibreglass coffin did not.
In this I give weight to the minutes of the meeting of 8 October 1998 where reference is made to "WP to complete design as discussed" and that the role indicated for Mr Adamo was in marketing and promotion. Mr Adamo's appointment in this role was also specified in both forms of the later joint venture agreements and seems consistent with the impression that while Mr Adamo may have developed a general concept, the technical implementation was left to others. This is further supported by Adamo's statement that he was not "proficient in discussing technical things". On the other hand I reject his assertion that Parker and Neil were acting on his behalf because he did not have a good command of the English language. The correspondence in evidence written by Adamo suggests otherwise and such an inability would be totally inconsistent with his appointment in a marketing and promotional role.
On the subject of the pressure relief valve, I do not think this feature was discussed as early as Mr Adamo suggests and I find his evidence on this matter confused. In particular, he seems to give two different dates for his instruction to Parker, the provision of pressure release does not seem to fit well with his description of the conceptual development of the coffin and Exhibit RA-10 clearly does not disclose a slow release valve. Moreover, if the pressure relief valve was a key feature in 1998 as suggested by Adamo it would seem highly unlikely that it would not be mentioned in the patent application filed in February 1999, particularly, if as alleged, Parker and Neil set out to misappropriate the invention. Consequently I find it more likely that the valve was not considered prior to the filing of PP8791 and possibly not at the time Mr Parker first approached the FCDD. A letter from the FCDD written by a Professor Van Erp (RA-16) seems to indicate strongly that the pressure relief valve came out of discussions between Mr Parker and the FCDD consultants. Parker however indicates that the valve was pre-existing and that those discussions only led to the inclusion of "a more sensitive relief valve than the one used at the time". This is somewhat puzzling and perhaps even suggests that Parker is attempting to downplay a contribution made by the FCDD consultants. . Nevertheless, all things being considered, I find that the pressure relief valve was more likely to have originated with Parker in his work with the FCDD and not with Adamo.
Mr Adamo's evidence is far more convincing in relation to chemical odour control. I believe it is quite likely that he returned to Australia in March 1999 with some idea that a chemical additive would be worth pursuing since he was informed of the practice that existed in Italy. I however am not convinced that Mr Adamo, even with the assistance of engineers in Italy, arrived at the package of chemicals that is described in the present application. I believe it is overwhelmingly clear that the chemical solution in the present case was provided by Linklater and Tomlinson at the request of Requiem and that it is quite disingenuous for Mr Adamo to claim that THC "put together a combination of chemicals as explained to them by me to be incorporated into the coffin". In the alternative I accept Dr Tomlinson's evidence that "Mr Adamo certainly identified the problems needing to be solved but Mr Linklater and I provided the solutions within the cadaver receptacle" and that "the absorbents or "chemicals" put together by me were of my selection but met the essential functionalities defined by Mr Adamo. Mr Adamo never suggested to me any chemical moiety."
Mr Adamo's "essential functionalities" appear from his declaration of 15 February 2002 merely to be based on what he knew was in use in Italy. That is, "deodorants mixed with fine activated carbon and polymer absorbents" and injecting "the cadaver's stomach with antibacterial solutions and sometimes formaldehyde". The solution described in the specification appears to go far beyond this and it is not surprising that Tomlinson and Linklater told him "not to worry too much because they had everything from me in order to work on selecting chemicals for solving the odour problems in the coffin". They were far more capable of appreciating the particular requirements within the broad problem and I have no doubt that the specific solution proposed by THC gave, from Falkenhagen, supra, "a result or advantage not contemplated by the original concept". The specification certainly refers the surprising effect of the chemical combination and their "synergistic interaction". It follows that I do not believe that the general idea for a chemical additive came from Parker.
It would seem that an inventive contribution can be ascribed to Adamo, Parker, Linklater and Tomlinson. While Parker does not give any credit to Adamo and this is perhaps supported by Mr Mischlewski's recollection of his meeting with Adamo, the facts are most consistent with Adamo arriving at a very general concept that was put into practical effect and developed by Parker and others. Hence he may not, at the time, have thought of himself as an inventor. If I am wrong in this I would merely point out that the evidentiary burden lies with Requiem and it has provided sufficient evidence for me to conclude that Mr Adamo is not an inventor in relation to the present application. On the other hand, Parker is named as an inventor of the present invention and while Adamo seems to be saying that this was done merely as a sign of gratitude for his assistance, I believe it is more likely than not that Parker in fact made an inventive contribution. In any event, the exact allocation of inventive contributions would not appear to be essential for determining the central question of entitlement.
Requiem also assert an inventive contribution by Jeffery Smallwood. The evidence does not provide any indication as to what his contribution may have been and hence I do not make any conclusions as to his involvement. However, I note the existence of an assignment between him and Requiem and hence the point is apparently mute.
Entitlement of Requiem
On the basis of my finding above I can only conclude that Requiem has been shown to have entitlement at least in part. Most significantly, from the evidence filed in relation to PQ6928, this entitlement appears to derive by assignment from Parker and possibly Smallwood, and from THC, to Requiem. THC in turn is the assignee of Linklater and Tomlinson. In any event, Mr Adamo by nominating Parker as a co-inventor cannot possibly avoid, at best, joint entitlement with Requiem since he simply has not shown nor suggested any way in which he could possibly derive entitlement from Parker.
The question that remains is whether the entitlement that Adamo may have as an inventor has passed to Requiem as a matter of law. This issue was the subject of the more substantial submissions made by Mr Fisher and Mr Dredge. Mr Fisher submitted that the present case was analogous to the case in Falkenhagen, supra. In that case the finding of the Delegate was that Eric Alan Falkenhagen was the sole inventor but that entitlement to the invention subsequently passed to Polemate by virtue of an understanding between the directors that the rights would vest in the company that they had formed. One factor in reaching this conclusion was that Falkenhagen had purportedly acted on behalf of Polemate in his dealings with the patent attorney involved.
Mr Dredge on the other hand referred me to the decision of the Federal Court in Speedy Gantry Hire Pty Ltd & Anor v Preston Erection Pty Ltd [1998] 210 FCA (13 March 1998). The finding in that case was that there was an assignment between the inventor and Speedy Gantry which was implied by conduct. While this conclusion was sufficient for Emmet J to dispose of the issue he also went on to consider arguments presented in relation to section 55 of the Property Law Act (Qld). Section 55(1) provides that a promisor who, for a valuable consideration moving from the promisee, promises to do an act for the benefit of a beneficiary, shall, upon acceptance by the beneficiary, be subject to a duty enforceable by the beneficiary to perform that promise. Under section 55(3) upon acceptance, the beneficiary is to be entitled in the beneficiary's own name to such remedies and relief as may be just and convenient for the enforcement of the duty of the promisor. In the present matter Mr Dredge submitted essentially that there was no assignment and that there was no clear evidence of a promise or of acceptance to meet the requirements of the Property Law Act.
While decided in relation to section 34 of the Patents Act 1952, Speedy Gantry, supra, seems to be clear authority for the general principle that the assignment of an invention does not need to be in writing and can be implied by the conduct of the parties. I note also that while Emmet J's decision on the question of obviousness was overturned on appeal, the Full Court in Preston Erection Pty Ltd & Anor v Speedy Gantry Hire Pty Ltd [1998] 1615 FCA (18 December 1998) confirmed the decision on entitlement and agreed on a number of points including that the assignment need not be expressed but may be implied by conduct, per Terrell on the Law of Patents 12 ed, 1971 at par 89, p30. In Infra Red Technologies Pty Ltd v Dirk Domenico Cortesi [1997] APO 6 the delegate of the Commissioner also considered the possibility of an implied assignment but found that this was not the case since consideration by way of a shareholding did not eventuate.
In the present matter, while there is no written assignment, I believe there is more than sufficient evidence to conclude that there was assignment of the inventive contribution of Adamo to Requiem implied by the conduct of Adamo and the other Requiem directors. Mr Adamo participated in a number of discussions with Parker and Neil prior to the formation of Requiem. Minutes of the meeting of 8 October 1998 indicate that it was "Decided that development company to hold control of product for benefit of subsidies and grants etc, as well as copyright" as well as indicating a profit sharing arrangement. Subsequently, forms of a joint venture agreement were proposed but apparently not agreed or formalised. However a common term in those agreements was "transfer to the company the business name, equipment, assets and contracts held by Down Under Coffins". Read with the minutes of 8 October I can only assume that this indicates an intention of both parties that assets, including intellectual property rights, would pass to the new company.
Although agreements were not formalised at this time, collaboration on the coffin continued apparently unabated and provisional application PQ6928 was filed. On 27 April 1999 a further meeting was held. The minutes of this meeting under "Working capital" include the entry "Patent Application - Ken paid" and later indicate:
"Ownership of the Patent:
Striking Distance to transfer the patent to Envirotech Pty. Ltd."
This further indicates to me that there was an agreement for the future company to hold rights to the intellectual property in the coffin development.
In the event, Requiem was registered on 14 May 1999 with Mr Adamo receiving a 50% shareholding through his company Imex. Development work continued and, after assistance was obtained from THC, Mr Adamo met with Darryl Mischlewski concerning the filing of patents for the new developments. It is clear that at this meeting Mr Adamo was understood to be representing Requiem and that Mr Adamo did not take steps to correct this impression. Requiem also appointed a friend of Adamo's, Michael Petrascu, as "Intellectual Property advisor" for the purpose of negotiating with THC. At the directors meeting of 27 March 2000 it was decided that:
"Ross Adamo and Michael Petrescue [sic] to travel to Brisbane on Tuesday, 28th March to start coffin patent application using Ross Adamo's lawyers who have a dedicated patent division in-house"
Mr Adamo appears to have complied because at the following meeting it was recorded that:
"B. Ross Adamo held patent meeting with Michael Owens of Bowden Lawyers on Tuesday, 28 March. Owens to get back to Requiem by 31st March, 2000. No contact, so Ross Adamo to chase up today.
After this Mr Adamo forwarded his list of concerns to the other directors including that:
"Our number one priority is to have the patent application submitted ASAP, I will push for this to be carried out this week if possible"
Whether or not Mr Adamo indicated to his lawyers that he was seeking assistance on behalf of Requiem it appears that Mr Petrascu was certainly of the view that the application was to be in the name of Requiem since he used Requiem letterhead when forwarding to them a copy of Mr Mischlewski's draft patent specification.
All these highlighted events suggest overwhelmingly that the earlier intention for the company to hold intellectual property rights in the coffin had become a reality. The company was actively dealing with, and in its negotiations with THC, seeking to acquire the intellectual property rights in the coffin development. The last declaration of Mr Adamo is particularly telling in that he states:
"I went to Mr Darryl Mischlewski … on my own accord and not on behalf of Requiem"
but later (with my underlining) indicates that
"I was surprised that I was getting correspondence from Mr Mischlewski regarding a proposed patent application. At the meeting on the 27th of March 2000, the directors of Requiem agreed that we should not use Mr Mischlewski because there was too much conflict of interests between him and us since he was working for Dr David Tomlinson. I suggested that we sought out another law firm to use. Everyone agreed that I should see my own Lawyers in Brisbane -Bowdens, to start a patent application since we could not use Mr Mischlewski."
and
"Wayne Parker and myself had no intention to use Mr Mischlewski …."
Consequently it would be difficult to conclude otherwise than that Mr Adamo had passed to Requiem beneficial ownership of his inventive contribution and for this, and his initial financial investment, he received consideration in the form of a shareholding in the new company. In the alternative I find that there is nothing to support the contention that "It was never my intention that Requiem would hold the overall rights to the invention." Mr Adamo's own account of the directors meeting of 27 March 2000 confirms that this was not so.
On the case put by Mr Dredge it would appear that the present matter is highly analogous to the situation in the Speedy Gantry case. Mr Adamo's inventive contribution was seemingly made prior to the formation of Requiem and there appears to be a clear understanding between Adamo, Parker and Neil that the right to apply for a patent on the development made by Adamo and Parker would lie with Requiem once established. The subsequent conduct of the Requiem directors including the decision to file a patent application implies that this agreement became effective. In such circumstances Emmet J found there was a promise and acceptance by the beneficiary, both of which were implied by conduct. Consequently as in that case I find that if Requiem was not an assignee of Mr Adamo it would in any event be entitled to relief by way of specific performance under section 55(3) of the Property Law Act. Hence Requiem would appear to have sole entitlement to the grant of the patent either on the basis that it derives title to the invention under section 15(1)(c) or would on the grant of a patent be entitled to have the patent assigned to it, per section 15(1)(b).
CONCLUSION
I have found on the evidence before me that Adamo, Parker, Linklater and Tomlinson all have made an inventive contribution to the invention described in the present provisional application. I have further found that Requiem is solely entitled on the basis of an implied assignment from Mr Adamo and written assignments in relation to the other inventors including, in relation to Linklater and Tomlinson, an assignment from THC. If I am incorrect in finding an implied assignment, it would appear that in any event Requiem would be entitled by virtue of Mr Adamo's obligations under the Property Law Act (Qld).
Since the present provisional application has lapsed there is no appropriate direction that the Commissioner could give concerning how the application is to proceed. However, an associated complete application 35114/01 was filed by Adamo on 10 April 2001 and it would appear that my findings are likely to be relevant to any proceedings that Requiem may wish to initiate in relation to that application under section 32 or 36, if in fact they cannot serve as a basis for settlement between the parties.
COSTS
Costs normally follow the event. Mr Dredge requested that I consider the late filing of evidence when deciding on costs however I do not believe this was determinative and find no other reason to depart from the general principle. I therefore award costs against Mr Rosario Adamo.
P M Spann
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Intellpro
Patent attorneys for the requestor : Fisher Adams Kelly
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