Royden George Mayfield v Colin Radcliffe
[1993] APO 3
•22 January 1993
official notice
decision of a delegate of the commissioner of patents
Application : No. 582459 in the name of
ROYDEN GEORGE MAYFIELD
Title: Ground Levelling Machine
Action: Opposition under s. 59 by
COLIN RADCLIFFE
Decision : Issued . Claims 1 to 15 prior
published by public use
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 582459 by ROYDEN GEORGE MAYFIELD
and opposition thereto under Section 59 of the Patents Act
1952 by COLIN RADCLIFFE.
background
Patent application No. 582549 by TREVOR KEELAN MAYFIELD and
LINDSAY FRANCIS RADCLIFFE was lodged on 14 August 1986 as a complete specification in respect of provisional specification No. PH1957 lodged 15 August 1985 and provisional specification No. PH3657 lodged 29 November 1985.
Acceptance of the application was advertised on 23 March 1989.
A Request for Direction under section 34(4) to have the application proceed in the name of ROYDEN GEORGE MAYFIELD was lodged on 17 April 1989 and the section 34(4) direction was advertised on 11 May 1989. COLIN RADCLIFFE lodged a notice of opposition under section 59 on 1 June 1989.
On 14 February 1991 a Request to amend the Complete Specification was lodged and the Request was advertised on 21 March 1991. Allowance of the amendments was advertised on 26 September 1991.
The matter came to hearing in Canberra on 4 August 1992.
Mr. Robert G Shelston, patent attorney of Carter Smith & Beadle represented the opponent while the applicant relied on written submissions provided by Mr. Richard S Catt, patent attorney of
R.K. Maddern & Associates.
As the application was both lodged and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and regulation 23.3, are applicable and therefore the opposition is in substance determined in accordance with the relevant provisions of the Patents Act 1952 and the regulations thereto.
Although the notice specified the grounds of opposition as those listed in paragraphs (a), (e) and (h) of sub-section 59(1) of the Patents Act 1952, the submissions at the hearing addressed the grounds specified in paragraphs (a), (e), (g), (h) and (i); i.e.
obtaining, prior publication, obviousness, lack of novelty and non-compliance with section 40.
EVIDENCE
Prior to the hearing, the opponent had lodged Evidence-in-Support in the form of statutory declarations provided by Mr. Colin Radcliffe, Ground Levelling Contractor and Mr. Malcolm Vercoe, Superintendent of the Rich River Country Club.
In addition to the written submissions on behalf of the applicant, Evidence-in-Answer in the form of a statutory declaration was provided by Mr. Trevor Keelan Mayfield, original co-applicant.
No Evidence-in-Reply as such was lodged but at the hearing Mr. Shelston made application to file further evidence in the form of statutory declarations by Mr. Robert G Shelston, patent attorney, Colin J Radcliffe, Ground Levelling Contractor, Mr. Timothy John Allman, Greenkeeper of the Rich Country Club and Mr. Lindsay Francis Radcliffe, original co-applicant. This application had been foreshadowed by facsimile transmission to both the Patent Office and the applicant on 3 August 1992, i.e., the day before the hearing. Although the application was made under regulation
5.10(4) of the 1990 Patents Act, the form and content of the application was in accordance with Form 28 of the 1952 Patents Act Regulations and, given the provisions of regulation 23.3, I have therefore treated it as an application made under regulation 59 of the 1952 Patents Act.
I advised Mr. Shelston that I would give the applicant the opportunity to make submissions as to whether I should allow the further evidence to be filed and after consideration of such submissions, if any, I would make a decision. Accordingly, in accordance with regulation 59(5) of the Patents Act 1952, I allowed the applicant 14 days to make written representations concerning the application.
On behalf of the applicant Mr. Catt did make written submissions.
It was submitted that the applicant strongly objected to the opponent's application to file further evidence. In support of the objection Mr. Catt made the point that it is clearly established that there are three criteria to be considered in deciding whether leave (to file further evidence) should or should not be granted i.e.
It must be shown that the evidence could not have been
obtained with reasonable diligence at an earlier stage.
(ii) The evidence must be such that, if given, it would probably
have an important influence on the result of the case.
(iii) The evidence must be such as is presumably to be believed,
i.e., it must be apparently credible, though not
necessarily incontrovertible.
In addition, one must consider the public interest and the interest of the applicant and those interests are best served in avoiding further delays in the opposition proceedings. Still further, where the ground of obtaining is relied upon by the opponent, the evidence must be of high probative value.
I agree with Mr. Catt with respect to the three criteria.
With regard to criterion (i), there is nothing on file to say why
the evidence was not obtained at an earlier stage however, with regard to criterion (ii) and criterion (iii), I have decided the evidence, if allowed, would probably have an important influence on the result of the case and that it is apparently credible.
In deciding whether or not to admit further or late evidence, the overriding matter to be considered, following Ernest Scragg & Sons Ltd's Application [1972] FSR 219, is whether the further evidence is entirely new evidence or, evidence that can more properly be considered as being in the nature of Evidence-in-Reply.
I am inclined to the view that although the further evidence is not properly in reply, it is nevertheless in the nature of Evidence-in-Reply and as such I have decided to admit it.
In doing this I have been mindful of the fact that admitting the further evidence has caused minimal delay to the proceedings and hence the applicant has not been disadvantaged in this respect. Further, the public interest is best served if I have the opportunity of considering all the relevant evidence that
has been presented.
Having said this, the fact remains that the application to file further evidence was only foreshadowed on the day before the hearing and pursued at the hearing. In the event that this evidence has any bearing on my decision, I will take this fact into account when considering costs.
Following my decision to admit the further evidence, in accordance with regulations 59(6) and 60 of the Patents Act 1952, I allowed the applicant one month to lodge any declarations in reply. I also afforded the applicant, within the same time period, the opportunity to lodge any written submissions, or seek to be heard, on the further evidence. No response was received.
THE SPECIFICATION
The specification commences by stating that
"This invention relates to an improved ground levelling
machine and relates particularly to an improved machine for
levelling relatively small areas of ground, such as bowling
greens, tennis courts, yards and the like.
More particularly, the invention concerns a ground levelling
machine which is controlled by a reference signal, such as a
signal produced by a laser beam."
Then follows a description of the prior art earth working levelling machines and an explanation of why such machines are unsuitable for levelling small areas.
The desirable features of a suitable machine are then set out as follows:
"It is therefore desirable to provide a machine which is able
to accurately level relatively small areas.
It is also desirable to provide a machine which uses a laser
beam or other beam for defining a level reference plane and
to which the levelling machine can work within relatively
fine tolerances.
It is also desirable to provide an improved levelling
machine which is relatively cheap, simple to construct and
is easy to operate."
Following the desirable features of the invention are consistory statements of the invention and following the statements are descriptions of embodiments of the invention.
The embodiments are followed by the claims. The claims as accepted read:
1. A mobile ground levelling machine comprising:
a main frame,
a pivotal sub-frame pivotally connected to the main
frame so as to lie in trailing relationship therewith,
a hopper carried on the main frame for containing a
supply of filling material e.g. soil or sand,
an elongate scraper blade mounted on the main frame
and extending thereacross,
discharge means associated with the hopper to
control the discharge of filling material from the
hopper, and arranged in use to discharge filling material
forwardly of the scraper blade,
a plurality of ground engaging wheels carried by the
sub-frame in trailing relationship to the scraper blade,
power means operatively connected between the main
frame and the sub-frame to effect said pivotal movement
of said sub-frame relative to the main frame and in turn
the raising and lowering of the main frame, together
with said scraper blade, relative to the ground over
which the machine travels, and
control means for controlling the operation of said
power means to in turn control elevation of the scraper
blade relative to a preselected reference plane.
2. A machine according to claim 1 wherein said control
means comprises a laser beam receiver means carried
on the main frame for sensing a laser signal
(from a laser beam transmitter remote from the machine)
which signal defines a reference plane, and for
generating command signals, in response to the vertical
displacement of said receiver means with respect to said
reference plane, to actuate the power means and in turn
effect the raising and lowering of the scraper blade.
3. A machine according to claim 2 wherein said laser beam
receiver means is mounted on an upstanding mast fixed
to said main frame and which is adjustable in height,
said mast being located approximately vertically above
said blade.
4. A machine according to any one of claims 1 to 3 wherein
said discharge means comprises an endless conveyor belt
extending longitudinally of said main frame, said belt
being positioned to receive filling material from the
hopper, and drive means to drive said belt.
5. A machine according to claim 4 wherein said hopper
comprises an elongate substantially rectangular shaped
bottom opening having a transverse width which is less
than the width of the main frame, said conveyor belt
having a width which approximates the width of the
hopper bottom opening and forming a floor for the hopper.
6. A machine according to any one of claims 1 to 5 wherein
said pivotal sub-frame is connected to the rear of said
main frame and comprises a transversely extending frame
member, rearwardly extending wheel support arms carried
by the said frame member for rotatably supporting said
ground-engaging wheels at their trailing ends.
7. A machine according to any one of the preceding claims
wherein said scraper blade is fixed rigidly to the main
frame.
8. A machine according to any preceding claim further
comprising a towing connection at the leading end of
said main frame whereby the machine can be coupled to and
drawn by a tractor or prime mover.
9. A machine according to any preceding claim wherein said
discharge means comprises an adjustable flap or gate
member hingedly attached to the front wall of said
hopper and arranged to be manually operated by a control
member for regulating the flow of filling material from
said hopper.
10. A machine according to any preceding claim wherein
said power means comprises a hydraulic ram, one end of
which is pivotally connected to said main frame, its
other end being pivotally connected to said pivotal
sub-frame medially thereof.
11. A machine according to any preceding claim wherein
said ground-engaging wheels are evenly spaced across
the width of said sub-frame at the rear thereof.
12. A machine according to any preceding claim
further comprising an elongate ski-foot secured along the
lower edge of said scraper blade and projecting
rearwardly thereof for engagement with the ground so as
to allow the scraper blade to ride smoothly over ground
over which the machine travels.
13. A machine according to any preceding claim further
comprising a pair of transversely spaced skid plates,
each being pivotally connected at its leading end to a
fixed support depending from said mainframe for pivotal
movement about a transverse horizontal axis, said skid
plates assisting to prevent any undesired pitching or
rolling of the machine and in maintaining the scraper
blade substantially horizontal.
14. A machine according to claim 13 wherein the rear portion
of each said skid plate has operatively associated
therewith a threaded adjustment member for adjusting the
height of the rear end of the skid plate relative to the
mainframe frame.
15. A machine according to claim 8 when appended to any of
claims 4 to 7 wherein said belt is driven by an hydraulic
motor carried on said main frame and is electrically
actuable by switch means located on the prime mover,
whereby an operator is able to feed out the soil as
required.
16. A mobile ground levelling machine substantially as
hereinbefore described with reference to and as
illustrated in FIGS. 1 to 3 or FIGS. 4 to 6 of the
accompanying drawings.
As a result of the Request to amend the Complete Specification, the allowance of which was advertised on 26 September 1991, the claims now read:
1. A mobile ground levelling machine comprising:
a main frame,
a pivotal sub-frame pivotally connected to the main
frame so as to lie in trailing relationship therewith,
a hopper carried on the main frame for containing a
supply of filling material e.g. soil or sand,
an elongate scraper blade mounted on the main frame and
extending thereacross,
an elongate ski-foot removably secured along the lower
edge of said blade and projecting rearwardly thereof for
engagement with the ground so as to allow the blade to
ride smoothly over ground over which the machine travels,
discharge means associated with the hopper to control
the discharge of filling material from the hopper, and
arranged in use to discharge filling material forwardly
of the scraper blade,
a plurality of ground-engaging wheels carried by the
sub-frame in trailing relationship to the scraper blade,
power means operatively connected between the main frame
and the sub-frame to effect said pivotal movement of said
sub-frame relative to the main frame and in turn the
raising and lowering of the main frame, together with
said scraper blade, relative to the ground over which the
machine travels, and
control means for controlling the operation of said power
means to in turn control elevation of the scraper blade
relative to a preselected reference plane.
2 to 11. These claims read the same as the corresponding
accepted claims.
12. A machine according to any preceding claim wherein said
ski-foot has its trailing edge height adjustably mounted
with respect to said main frame.
13 to 16. These claims read the same as the corresponding
accepted claims.
SECTION 40
With respect to the non-compliance with section 40, Mr. Shelston submitted that current claim 1 defines a machine that has a scraper blade where the height of the blade relative to the ground over which the machine travels is automatically controlled by both by the power means and, when it is in operation, the ski-foot. When both means of blade height adjustment are in operation one will "fight" the other. Mr. Shelston further submitted that the description is silent on how this conflict is resolved and as a result the complete specification does not fully describe the invention thus resulting in the non-compliance with section 40.
I do not agree with Mr. Shelston's submission. The complete specification is, after all, directed to a man skilled in the art
and following Romer L.J. in No-Fume Ltd v. Pitchford (Frank) & Co
(1935) 52 RPC 231 at 243 the test for insufficiency can be stated as follows:
"...if a man skilled in the art can easily rectify the
mistakes and can readily supply the omissions, the patent
will not be held to be invalid. The test to be applied for
the purpose of ascertaining whether a man skilled in the
art can readily correct the mistakes or readily supply the
omissions, has to be stated to be this: Can he rectify the
mistakes and supply the omissions without the exercise of
inventive faculty? If he can, then the description of the
specification is sufficient. If he cannot, the patent will
be void for insufficiency."
I note that there is no evidence on file from persons skilled in the art that there is not sufficient information to perform the invention and I doubt that an operator, a man skilled in the art, would not realise that in the situation where the ski-foot came into operation, the effects of the power adjusting means would be negated and that appropriate action on his part would be required. The appropriate action could be in the nature of temporarily shutting off the power means which can hardly be said to involve the exercise of inventive faculty.
Even though it could be shown that under certain conditions the operation of the machine was not fully satisfactory, such a finding i.e. inutility, is not a ground of opposition available under section 59 of the Patents Act 1952.
Prior Publication
Before I consider this question, since priority dates are likely to be an important factor, it will be useful to determine when certain matter was first disclosed.
I particularly note that the hopper conveyor belt floor and the scraper blade ski-foot features, in accordance with claims 5 and 12 respectively, of the accepted application were first disclosed in the provisional specification of application No. PH3657 and thus any claim including one or both of these features cannot have an earlier priority date than the lodgement date
of this application i.e. 29 November 1985.
With respect to the Evidence-in-Support, in Mr. Colin Radcliffe's statutory declaration dated 27 November 1989 he declares at paragraph 19 that machines illustrated in the drawings of the specifications of applications PH1957 and PH3657 were in commercial use prior to the respective lodgement dates of those applications.
Mr. Malcolm Vercoe, in his statutory declaration dated 5 October 1989 states that in the period July to December 1985 he was the Superintendent of the Rich River Country Club. In July 1985 he arranged for the contractors, Mayfield & Radcliffe's Laser Levelling, to level and dress some of his Club's golf greens and croquet lawn. Subsequent to this work being carried out, Mr. Vercoe states that the contractor's machine was modified to have a combination hopper and conveyor. Further work on the Club's croquet lawn was carried out using the modified machine and this work was completed well before November 1985.
In the Evidence-in-Answer, Mr. Trevor Keelan Mayfield in his statutory declaration states that he is one of the original co-applicants and co-inventor of Patent Application No. 61536/86.
(On acceptance this application was given the number 582459).
In paragraphs 10 and 11 of his statutory declaration dated 20 February 1991, Mr. Trevor Mayfield agrees that following work at the Rich River Country Club it was found that the levelling machine was unsuccessful in that the machine would neither spread nor level the dressing material efficiently, and that "we" were concerned by the extent of damage being caused by the grader blade to the turf and a decision was made to build a second machine. The second machine incorporated a hopper and conveyor system and also a ski-foot removably attached along the lower edge of the scraper blade and was first trialled at the Elizabeth Bowling Club in Adelaide in or around October 1985.
In paragraph 14, Mr. Trevor Mayfield denies that any of the machines were put into commercial use prior to the lodgement of Patent Applications PH1957 and PH3657.
From the evidence I have reviewed so far, both sides agree that a machine incorporating a hopper with a conveyor system and a scraper blade with a ski-foot was made before the lodgement date of PH3657. What I need to ascertain is whether or not the machine incorporating these features was used in public before the lodgement date of PH3657 i.e. 29 November 1985.
I now turn to the further evidence.
Mr. Colin James Radcliffe in his statutory declaration dated 3 August 1992 declares:
"In relation to the matter concerning the addition of the hopper and flat blade for top-dressing an early version of the machine was returned to McCurdys Engineering for these modifications to be undertaken so the machines (sic) could be used for top-dressing.
This machine with hopper for soil, conveyor belt for disrivution (sic) of soil and flat (sic) was then used by me to do the levelling at Rich River Country Club on the 8th October 1985.
It was also displayed and demonstrated by myself and others at the T.R.A.I. field days on 21 October 1985."
In his statutory declaration dated 3 August 1992 Mr. Timothy John Allman declares:
"1. I am presently the greenkeeper of the Rich River Country
Club at Moama, and held that position during October 1985.
2. On 8th October 1985 my work diary shows that the Club's east
green (being a bowling green) was "laser levelled" and
watered.
3. The levelling machine used was a laser-controlled machine
supplied by Mayfield and Radcliffe and operated by Colin
Radcliffe. It was a modified version of the machine
previously used on my Club's croquet lawn. The machine was
fitted with a hopper for the top-dressing soil, a Cushman-
type conveyor soil dispenser under the hopper, and a
top-dressing blade having a sole plate presenting a
rearwardly extending, broad surface to the ground."
Accompanying Mr. Shelston's statutory declaration dated 3 August 1992 was a copy of the Turf Research and Advisory Institute publication "TRAI Turf Topics" for Autumn 1986 Vol. 15, which gives details of the "Laser Leveller" (with the Operator/Supplier given as Trevor Mayfield and Lindsay Radcliffe) demonstrated at the TRAI Machinery Day at Frankston. Turfgrass Technology records show that this demonstration took place on 21 November 1985.
Reverting back to Mr. Colin James Radcliffe's declaration, Mr. Allman has provided independent verification that the levelling by the modified machine at the Rich River Country Club took place on the 8th October 1985, while the "TRAI Turf Topics" Vol. 15 publication is an independent verification that the "Laser Leveller" was indeed publicly demonstrated before 29 November 1985.
The "TRAI Turf Topics" publication (which the TRAI subscription notice states is distributed free of charge to all Golf, Bowls and Racing Clubs throughout Victoria) quotes the cost of utilising the "Laser Leveller" as "$100 per rink for bowling greens, other prices depending on job size".
I note that both Mr. Vercoe and Mr. Allman in their statutory declarations are silent on whether the work carried out at the Rich River Country Club was anything other than a commercial transaction or whether the work carried out was in secret. The "TRAI Turf Topics" publication, on the other hand, reports that the Frankston Field Day was attended by about 50 people and hence the demonstration of the "Laser Leveller" there was certainly in
public.
I therefore conclude, in face of the evidence before me that, as the respective integers of the subsequently identified claims were disclosed in PH3657, the ground levelling machine in accordance with amended claims 1 to 15, the allowance of which was advertised on 26 September 1991, was prior published by public use before the priority date i.e. before 29 November 1985.
Considering now the claims as accepted. Claim 1 does not include the ski-foot feature and defines the levelling machine of Patent Application No. PH1957 which was lodged at the Patent Office on 15 August 1985 which is thus its earliest priority date.
In his statutory declaration dated 27 November 1989, Colin Radcliffe declares that the first machine, which I take to be the original prototype of the ground levelling machine, was built by McCurdy Engineering and was virtually a miniature laser grader in particular comprising a main frame carrying a blade, a pivotally mounted sub-frame with wheels behind the sub-frame, an hydraulic cylinder for pivoting the sub-frame and a laser control for that cylinder. No mention is made of a hopper or associated discharge means. The first mention of a machine with a hopper and associated dispensing (discharge) means in Mr. Colin Radcliffe's declaration is his reference to the modifications carried out in anticipation of the work to be carried out at the Rich River Country Club. Mr. Colin Radcliffe declares "The machine with the hopper was used by me at the Rich River Country Club in early August 1985 before the 15th of that month, on which day, I am now aware, Trevor and Lindsay filed a patent application No. PH1957...". Mr. Malcolm Vercoe in his statutory declaration dated 5 October 1989 states "During July 1985 my club (The Rich River Country Club) arranged for Mayfield & Radcliffe's Laser Levelling to level and dress some of my Club's golf greens and its croquet lawn. I was present as the work proceeded and indeed was in more or less constant involvement with it. I recall that the machine first used by the contractors (my emphasis) to distribute top dressing had a hopper with a hydraulically powered gate to feed out the dressing." While this statement identifies the leveller, it does not specifically state when the work was actually carried out. However, in Mr. Lindsay Francis Radcliffe's statutory declaration, included in the further evidence, he declares "I have read the declaration of Colin Radcliffe made on the November 27, 1989 in this matter and confirm that to my knowledge it is a true statement of the events leading to the development of the invention and the commercial use prior to the application dates. (my emphasis)
Here again, there is no evidence on file that any attempt was made to keep the use of the machine prior to the lodgement date of PH1957 out of the public gaze and again, in the light of the evidence before me, I conclude that as the respective integers of the subsequently identified claims were disclosed in PH1957, the ground levelling machine of claims 1 to 3 and claims 6,7,8,10,11,13 and 14, when the latter claims are appended to the former three, as accepted, was prior published by public use before the priority date of PH1957.
Claims 4,5,9, 12 and 15 as accepted introduce features first disclosed in PH3657, but, as it has already been established that a ground levelling machine in accordance with PH3657 was prior published by public use prior to the priority date of PH3657, a ground levelling machine in accordance with these claims as accepted was similarly prior published by public use prior to the priority date of PH3657.
In his written submission dated 27 July 1992, Mr. Catt on behalf of the patent applicant stated:
"It is our submission therefore, that in the light of the
evidence presented, it was reasonably necessary, having
regard to the nature of the invention, that the working for
the purposes of reasonable trial should have been in public,
and, that any commercial aspects to that working which, in any
case, were of no consequence to the applicants, were also a
necessary consequence of the nature of the invention.
In conclusion therefore, we submit that even if the opponent's
evidence properly established prior use of the invention as
claimed in claim 1 of the accepted claims, which we forcefully
deny, in any event, Regulation 2.2 (2)(d) clearly exempts the
applicants from having prior published the invention on the
facts presented."
I do not agree with Mr. Catt's submission regarding the public working of the invention. From the TRAI publication on file it can be seen that Mayfield & Radcliffe, at least on the TRAI Machinery Field Day on 21 November 1985, quoted the cost of levelling a bowling green at $100.00. Invoices on file show that Mayfield & Radcliffe invoiced the White Hills Bowls Club and the Golden Square Bowling Club $380 and $400 respectively for the laser levelling of greens, far in excess of the published cost of $100 per green. This being the case, I am of the opinion that laser levelling work done, before the respective priority dates of the claims, was invoiced out at a commercial rate and that there is nothing before me to indicate that the laser levelling work undertaken by Mayfield & Radcliffe was completed under anything other than normal commercial conditions.
NOVELTY
In Colin Radcliffe's statutory declaration dated 27 November he states: "I further assert that there was no inventive ingenuity displayed or needed to develop the machines illustrated in the specification of patent application No. 582459. I was involved in the development process and in my opinion the first step in that process was an obvious adaption of a known device, namely, a laser grader, and each refinement thereafter no more than an obvious response or an obvious incorporation of a known device to meet a deficiency revealed by normal commercial use."
Leaving aside for one moment the fact that Mr. Colin Radcliffe is not competent to say that there is no inventive ingenuity displayed (Brooks v Steele and Currie 14 R.P.C. 46), there is no published evidence on file as to what constitutes a known laser grader and therefore there is nothing before me against which to apply the accepted tests for novelty. Consequently, disregarding the publication by use aspect, I am not in a position to decide one way or the other whether the claims, either at acceptance or as since amended, are otherwise not novel.
OBVIOUSNESS
In considering obviousness I have to take into account what has been established as being common general knowledge in the field of the invention at the priority date of the claims. (See the
judgement of Aicken J in Minnesota Mining and Manufacturing Co v
Beiersdorf (Australia) Ltd (1980) 144 CLR 253). I have no evidence before me which establishes what was the common general knowledge in the art at the priority date, and therefore, I am not in a position to conclude that the invention claimed is obvious.
OBTAINING
In his written submission dated 17 August 1992 Mr. Catt states "....a dispute as to whether a person should or should not be included as an inventor of an invention is not a valid ground of opposition and clearly does not fall within the scope of obtaining." I assume from this statement that Mr. Catt is questioning whether the use of section 59 of the Patents Act 1952 is appropriate for determining whether another person has contributed sufficient inventive ingenuity to an invention to establish their rights as an inventor.
The ground under question, i.e. ground (a) of sub-section 59(1),
is worded as follows:
" that the invention, so far as claimed in any claim, was
obtained from the opponent..."
Since a claim to a invention must include all the essential features, if it can be shown that a certain essential feature is included in a claim as a result of a person exercising inventive ingenuity, then that person will have established their rights as inventor alongside others who have also exercised inventive ingenuity in the development of the invention.
It therefore follows that in the situation where a person has exercised inventive ingenuity in developing an invention and a patent application has been submitted without that person's knowledge, then that person's contribution to the invention will have been obtained by the applicant(s). Ground (a) of sub-section 59(1) embraces this situation (as alleged) and thus in my opinion the use of section 59 of the Patents Act 1952 is appropriate for a person whose inventive ingenuity has been obtained to seek redress. Consequently, I do not agree with Mr. Catt's submission on this point and I will therefore proceed to consider the matter of obtaining based on the evidence submitted.
In Mr. Colin Radcliffe's statutory declaration dated 27 November 1989 he chronicles events as follows:
(a) February 1985 - discussions started between Brett, Colin
and Lindsay Radcliffe and Trevor Mayfield on notion of
levelling a bowling green with a grader culminating in a
decision to build a suitable machine as a result of a
positive interest by the greenkeeper of the White Hills Bowls
Club.
(b) First machine (comprising a main frame carrying a blade, a
pivotally mounted sub-frame and wheels behind the main frame,
an hydraulic cylinder for pivoting the sub-frame and a laser
control for that cylinder) built by McCurdy Engineering with
Lindsay Radcliffe being primarily responsible for liaison
with McCurdy while Brett and Colin Radcliffe had input as
design decisions were needed.
(c) June 1985 - first commercial use of machine.
(d) Machine returned to McCurdy for modification of blade and tow
hitch with all the Radcliffes and Trevor Mayfield being
involved in settling the design of the modifications.
(e) 10 July 1985 - first commercial use of modified machine.
(f) In anticipation of future requirements machine further
modified by addition of soil hopper and a hydraulically
operated gate for dispensing top dressing material. Again
all of the Radcliffes and Trevor Mayfield discussed the
machine and Colin Radcliffe states that it is impossible to
assert that any of the four was personally responsible for
the new addition.
(g) Machine further modified by provision of belt-type conveyor
floor for the hopper. Again Colin Radcliffe states "it is
impossible to say that any of us (the four) had the idea".
Mr. Colin Radcliffe completes his submission on obtaining by stating: "I assert that I played a substantial part in the devising of the machines illustrated in the specification of application NO. 582459...."
In his statutory declaration dated 20 February 1991, Trevor Mayfield gives his version of events with respect to the evolution of the machine design which can be summarised as follows:
(a) Early 1985 - discussion between Lindsay Radcliffe and Trevor
Mayfield regarding the feasibility of building a levelling
machine which would give a precision finish on bowling greens
and the like and, pursuant to those discussions a decision
was made to engage McCurdy's Engineering to build a machine
under the supervision of Lindsay Radcliffe and Trevor
Mayfield in approximately May 1985.
(b) June 1985 - machine completed with Trevor Mayfield being
responsible for around 60% of the design and Lindsay
Radcliffe contributing about 40%.
(c) Neither Brett or Colin Radcliffe sighted the machine until
near completion and neither made any contribution to the
inventive details of the machine.
(d) June 1985 - experimental work undertaken at the White Hills
Bowls Club with the three Radcliffes and Trevor Mayfield
being present.
(e) In paragraph 8 of his statutory declaration, Trevor Mayfield
admits to the statements made by Colin Radcliffe in
paragraph 11 of the latter's declaration.
Part (c) of paragraph 11 of Colin Radcliffe's declaration
states:
"The small turf machine was returned to McCurdy Engineering
for modifications shown to be desirable by the work done
at White Hills Bowls Club, specifically alterations were
made to the blade to increase its soil dragging capacity
and to the tow hitch to improve tracking accuracy. As was
to be expected, given their shared experience at White Hills
Bowls Club, all four partners (the Radcliffes and Trevor
Mayfield), including me, were involved in the design in
settling these modifications".
(f) With reference to the further work undertaken at the Rich
River Country Club Mr. Mayfield states:
"...we were concerned by the extent of damage being caused
by the grader blade on the turf."
(g) Following lodgement of Patent Application No. PH1957 a
decision was made to build a second machine which
incorporated a hopper and conveyor system and significantly
the addition of a ski-foot removably attached along the
lower edge of the scraper blade which Trevor Mayfield states
was entirely his idea. This second machine was trialled at
the Elizabeth Bowling Club in Adelaide with only Ian
Mayfield and Trevor Mayfield being present.
(h) In paragraph 13 Mr. Trevor Mayfield states:
"Whilst Mr. Radcliffe (Colin Radcliffe) has been present in
discussions between myself and Lindsay Radcliffe regarding
continuing development of the machine since June 1985, I
verily believe that it would be incorrect to regard Mr.
Radcliffe as co-inventor of the subject machine."
Turning now to the further evidence. Lindsay Francis Radcliffe (who was a co-applicant) in his statutory declaration dated 31 July 1992 declares:
"When lodging the applications I had little knowledge of
Patent Law. I was unaware for example, of the need to
identify all of the inventors concerned with an invention
and of the fact that no group of the inventors had the
right to apply for patent (sic) without the authority of
the others.
I now acknowledge that Colin Radcliffe and Brett Radcliffe
played a part in the development of the laser levelling
machines described and illustrated in the drawings of the
several specifications relating to the application.
I have read the declaration by Colin Radcliffe made on
November 27, 1989, in this matter and confirm that to my
knowledge it is a true statement of the events leading to
the development of the invention...."
The foregoing evidence deals with the aspect of the right to apply for a patent in relation to who contributed to the invention by way of inventive ingenuity.
I will now consider the evidence with respect to who otherwise has the right to apply.
From the evidence before me it is common ground, in the light of paragraph 8 of Trevor Mayfield's statutory declaration dated
February 20, 1991, that:
(a) A partnership was formed with Brett, Colin and Lindsay
Radcliffe and Trevor Mayfield as members under the name
of Mayfield and Radcliffe's Laser Levelling "to undertake
all work with the newly developed machine which we now
identified as work involving the small turf machine".
(b) The partnership was formed following an agreement reached
after the work at the White Hills Bowls Club in June 1985.
(c) All four partners were involved in settling the design of
modifications to the machine following the White Hills
Bowls Club work.
In accordance with the decision in Massey v Noack (11 IPR 632),
to prove obtaining, it is necessary for certain requirements to be satisfied. Thus it must be established:
1. What the invention is that has allegedly been obtained;
2. Whose invention it was when the alleged obtaining occurred;
3. That the claim defines, or includes within its ambit, the
invention allegedly obtained:
4. That the applicant actually obtained the invention from the
opponent, or from a person of whom the opponent is the
legal representative, assignee, agent or attorney, prior to
the priority date of the claim.
In reviewing the evidence I find that the only claimed feature that any one of the four partners claims was solely his idea is Trevor Mayfield's claim to the ski-foot feature. This claim is not disputed.
However, with regard to the other claimed features, I am not able to identify which of the partners proposed their use in the invention.
Returning now to the requirements to prove obtaining.
Requirement 1.
Having found that I am unable to identify which of the partners contributed the particular features of the invention I am unable to say what features of the invention have allegedly been obtained.
Requirement 2.
Similarly, since I have been unable to identify which of the partners contributed the particular features of the invention I am unable to say whose invention it was when the alleged obtaining occurred.
Requirement 3.
Since I have been unable to identify which features of the invention have been obtained I am unable to say whether the claims define, or include within their ambit the invention allegedly obtained.
Requirement 4.
As I have not been able to identify those features of the invention contributed by the opponent, I am unable to say that the applicant obtained the invention from the opponent.
I therefore find that the requirements to prove obtaining have not been met and consequently the opponent's case that the invention has been obtained, with regard to the inventive ingenuity aspect, has not been proven.
There is however one other aspect I need to consider and that is whether the partners have any rights in the invention by virtue of being members of the partnership.
Details of the partnership presented in the evidence are sparse. No evidence has been provided that the partnership agreement was in writing or what financial contribution the respective partners made to the partnership. Indeed, although there is ample evidence that work on the levelling machine was undertaken by McCurdy Engineering during the time of the partnership , there is no evidence to indicate how the work was financed.
Although paragraph 10 of Colin Radcliffe's statutory declaration dated 27 November 1989 states in part: "Therefore on the evening following that job (at the White Hills Bowls Club) Brett and myself spoke to Trevor and Lindsay and reached agreement with and obtained assurance from them that we would continue to participate in the ongoing business and the ongoing development of the machine", paragraph 11 of the same declaration states in part: "As a a result of the matters outlined in the foregoing paragraphs, particularly paragraph 10, the following events occurred: .... A new partnership was formed under the name of Mayfield and Radcliffe's Laser Levelling including all parties concerned, to undertake work with the newly developed machine which we now identified as work involving the small turf machine"(my emphasis).
It is not clear whether the agreement reported in paragraph 10 carried over to the purpose of the partnership reported in paragraph 11 (as stated in italics in the previous paragraph), and, in the absence of any evidence to the contrary, I am of the view that all I can do in determining the effect of the partnership on the partners is to decide what the phrase in italics actually means.
To me, the meaning is clear and I have no difficulty in construing the phrase to mean that the partners will do all the work that comes their way as a result of the availability of the newly developed machine. In other words, it is the right of members of the partnership to do the levelling and associated work with the new machine to the exclusion of others.
I do not construe the phrase to mean that it has any bearing on how otherwise the machine is exploited and I certainly do not construe it to mean that if the machine is patented, then the rights will belong equally to the partners. Having said this I am aware that if the working of the machine is the exclusive right of the partners, it is difficult to see how the patented machine can be used outside the partnership without breaking the partnership agreement, but this is not a matter that is in my province to consider.
I therefore conclude that the ground of obtaining has not been proven as a result of the partnership aspect.
SUMMARY
I find that claims 1 to 15 as accepted and claims 1 to 15 as subsequently amended, the allowance of which was advertised on 26 September 1991, were prior published by public use prior to their respective priority dates and thus the opposition succeeds on ground (e) of paragraph 1 of Section 59 of the Patents Act 1952.
I note that the evidence on file with respect to prior use is limited to the prior use of the machines illustrated in the drawings of the specifications of the applications PH1957 and PH3657. As there may be patentable subject matter contained within the specification, I allow the applicant 60 days from the date of this decision to propose amendments to overcome the prior publication deficiencies.
COSTS
In actions of this type, costs normally follow the event. While the opponent in this case has been successful, this success was mainly due to the information provided by the further evidence. In the circumstances, I make no order as regards to costs.
J.M.Sellars.
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Carter Smith & Beadle
Five Dock, N.S.W.
Patent attorneys for the opponent : R K Maddern & Associates
Adelaide.
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