Shaun Gregory Power v Dale Arthur John Long
[2018] APO 57
•31 August 2018
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Shaun Gregory Power v Dale Arthur John Long [2018] APO 57
Patent Application: 2015336923
Title:Wear protection assembly
Patent Applicant: Dale Arthur John Long
Requestor: Shaun Gregory Power
Delegate: O L Haggar
Decision Date: 31 August 2018
Hearing Date: Written submissions completed on 18 May 2018
Catchwords: PATENTS – request under section 36 – eligibility – requestor named as an inventor – whether requestor should be named as an applicant – regulation 3.1A – applicant taken to be the nominated person – parties found to be joint inventors – requestor is an eligible person – direction under section 36(3A) that the application proceed jointly in the names of the parties – costs awarded against the applicant
Representation: Patent Attorney for the applicant: Lord & Company
Solicitor for the requestor: Dentons Australia
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015336923
Title:Wear protection assembly
Patent Applicant: Dale Arthur John Long
Date of Decision: 31 August 2018
DECISION
I declare under section 36(1) that Dale Arthur John Long and Shaun Gregory Power are eligible persons in relation to patent application 2015336923. Pursuant to section 36(3A), I allow a period of two (2) months from the date of this decision for Dale Arthur John Long to file a new patent request and statement of entitlement to reflect the finding of joint eligibility, following which I direct that patent application 2015336923 proceed in the names of Dale Arthur John Long and Shaun Gregory Power. I will be prepared to make further determinations as are deemed necessary to give effect to this course of action upon the request of one or both of the parties. Costs according to Schedule 8 are awarded against Dale Arthur John Long.
BACKGROUND
International application PCT/AU2015/000627 (the international application) was filed on 20 October 2015 claiming priority from provisional application 2014904207 (the provisional application) filed on 21 October 2014. On 19 May 2016 the claims of the international application were amended under PCT Article 34 during the course of international preliminary examination. The international application subsequently entered the national phase in Australia on 11 May 2017 as application 2015336923 (the present application). By virtue of regulation 3.5AC(5), the claims as amended under PCT Article 34 are deemed to form part of the complete specification of the present application.
The only named applicant is Dale Arthur John Long. Mr Long and Shaun Gregory Power are named as joint inventors. On 20 September 2017 Mr Power filed a request under 36 that he be included as a joint applicant along with Mr Long. The parties were afforded the opportunity to file evidence and written submissions to support their respective claims of entitlement to the invention the subject of the present application. I will refer to this material as appropriate in my reasons below.
THE INVENTION
The invention relates to a wear protection assembly. More particularly, it relates to a wear protection assembly for an earth moving tool, such as an excavator bucket, used in the mining and construction industries.
In a first embodiment the invention comprises a plurality of corner shrouds (item 132 in Figure 3) located along an external edge of the excavator bucket and releasably attached to a plurality of oppositely located gusset plates (item 134 in Figure 5) as shown in Figure 7.
As explained by the present application at [0035]:
“Although it is known to provide side wear plates on conventional excavator buckets, these plates are welded into place … Accordingly, in use, it tends to be difficult to replace the side wear plates if they become too worn or damaged during such use, thereby requiring the bucket to be dispatched to a workshop for repair. Also, if only a small section of such side wear plates become worn through, it may be necessary to replace the entire side wear plate, resulting in increased material wastage and costs.”
And then at [0036]:
“Contrary to the above problems, the present invention is directed to an easily replaceable wear protection assembly … wherein the individual corner shrouds 132 and gusset plates 134 can be manually removed onsite by an operator of the excavator. This is achieved by simply unscrewing the bolts 136 and nuts 137 to remove and substitute the damaged or worn corner shroud 132 with a new part.”
In second and third embodiments the invention respectively comprises first and second sets of elongated wear strips, or first and second sets of rectangular wear plates. The wear strips or wear plates can be simultaneously fitted with the corner shrouds and gusset plates of the first embodiment. It is not necessary to discuss the second and third embodiments in any more detail.
I note that the provisional application discloses the first and second embodiments, but not the third. It is also the case that the drawings accompanying the provisional application are identical to Figures 1 to 12 of the present application.
Claim 1 as amended under PCT Article 34 is in the following terms:
“A wear protection assembly for earth moving machinery, comprising:
a plurality of corner shrouds, wherein each corner shroud is adapted to be joined to any position along an external edge of the earth moving machinery such that the corner shrouds are spaced apart from one another along the external edge; and
a plurality of gusset plates being associated with the plurality of corner shrouds, wherein the gusset plates are adapted to be located on a side of the earth moving machinery being opposed to the corner shrouds, so that the earth moving machinery is sandwiched between the corner shrouds and the gusset plates,
whereby each corner shroud has one or more countersunk passages each capable of receiving an attachment means that extends through the earth moving machinery and engages with the gusset plate associated with the corner shroud for separately and releasably securing the corner shroud to the earth moving machinery.”
It is apparent that the wear protection assembly claimed by claim 1 is a generalisation of the first embodiment. There are no other independent claims. Dependent claim 15 stipulates that the earth moving machinery mentioned by claim 1 is an excavator bucket.
EVIDENCE AND SUBMISSIONS
The evidence on which Mr Power relies to support his entitlement consists of a first declaration made by him on 18 December 2017 (Power #1) with Annexures SP-1 to SP-14, and a second declaration made by him on 7 February 2018 (Power #2) with Annexure SP-15.
Mr Long has not filed any supporting evidence of his own. He instead relies on a declaration made by his patent attorney, Kelvin Ernest Lord, on 9 January 2018 (the Lord declaration). The Lord declaration encloses a number of documents which I have treated as formal exhibits even though Mr Lord has not identified them as such. The first of these is a Non-Disclosure Agreement (the Agreement) executed on 19 June 2014 between Mr Power’s company, S & K Mine Services, and Mr Long. The Agreement apparently coincided with “discussions regarding ‘lightweight-low maintenance excavator & shovel buckets’”. It imposes an obligation of confidentiality on Mr Power’s company in respect of proprietary information belonging to Mr Long. However, the Agreement says nothing about the nature of the information that was proprietary to Mr Long, and nor does the Lord declaration explain the relevance of the Agreement to the present matter.
The Lord declaration also encloses four sheets of drawings of what from a comparison with Figure 1 for example of the present application is obviously an excavator bucket, and a single sheet depicting a gusset plate which is essentially identical in appearance to that shown in Figure 5 (collectively, the sheets of drawings). The relevance of the sheets of drawings, and indeed their provenance, has again been left unexplained.
Mr Power filed written submissions on 20 April and 18 May 2018. The material filed by Mr Long under the guise of written submissions comprises copies of a letter from Mr Lord dated 20 April 2018 (the Lord letter) and, most noticeably, a declaration made by Mr Long on 16 May 2018 (the Long declaration). The Long declaration was filed beyond the time allowed by a delegate of the Commissioner[1]. Both the Long declaration and the Lord letter attempt to introduce new evidence, are unsubstantiated by contemporaneous documentation, and are in the main concerned with various activities allegedly undertaken by Mr Long unaided by Mr Power which appear to simply relate to the commercialisation of the invention. The significance of this evidence to the question of entitlement has not been made at all clear. It follows that the Long declaration and the Lord letter are not likely to affect the resolution of this question such as to justify their admission as evidence under regulation 5.23.[2]
[1] Timeframe for filing evidence set by direction on 9 November 2017
[2] Per Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [24]
In view of the fundamental deficiencies outlined above, I do not see any value in having further regard to the Agreement, the sheets of drawings, the Lord letter or the Long declaration.
THE LAW
Subsection 36(1) as amended by the Intellectual Property Laws Amendment (Raising the Bar)Act 2012 applies to the present matter since the section 36 request was filed after the commencement date. The amended subsection reads:
“(1) If:
(a) a patent application has been made and, in the case of a complete application, the
patent has not been granted; and
(b) an application for a declaration by the Commissioner is made by one or more persons
(the section 36 applicants) in accordance with the regulations; and
(c) the Commissioner is satisfied, on the balance of probabilities, in relation to an
invention disclosed in the specification filed in relation to the application for the patent:
(i) that the nominated person is not an eligible person, but that the section 36 applicants are eligible persons; or
(ii) that the nominated person is an eligible person, but that the section 36 applicants are also eligible persons,
the Commissioner may declare in writing that the persons who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention so disclosed.”The present case satisfies paragraphs 36(1)(a) and (b). “Nominated person” is defined by Schedule 1 to mean the person identified in a patent request as the person to whom the patent is to be granted, and “eligible person” is defined as meaning a person to whom a patent may be granted under section 15. Subsection 15(1) provides:
“(1) Subject to this Act, a patent for an invention may only be granted to a person who:
(a) is the inventor; or
(b) would, on the grant of a patent for the invention, be entitled to have the patent assigned to the person; or
(c) derives title to the invention from the inventor or a person mentioned in paragraph (b);
or
(d) is the legal representative of a deceased person mentioned in paragraph (a), (b) or (c).”It can thus be seen that the primary person to whom a patent may be granted is the inventor; all other persons mentioned in subsection 15(1) ultimately derive entitlement to the invention through the inventor.
ISSUES TO BE DETERMINED
Mr Power is named as a co-inventor thus establishing his prima facie eligibility within subsection 15(1). However, he is not identified in the patent request as a co-applicant and, consequent upon regulation 3.1A, is not presently recognised as a nominated person to whom the patent is to be granted. Mr Power has requested that this be remedied pursuant to subsection 36(1).
The scheme of the Act makes it plain that the fact that a person is specified in a patent request as a nominated person is insufficient proof of entitlement, unless that person falls within the categories of persons listed by subsection 15(1).[3] That is to say, the mere identification of a person as a nominated person cannot of itself be the source of entitlement. It is therefore apparent that before making the determination sought by Mr Power, I must be satisfied that he can legitimately claim inventorship and in this Mr Power carries the legal burden of proof on the balance of probabilities[4]
[3] See also e.g. University of British Columbia v Conor Medsystems Inc [2006] FCAFC 154 at [34], [44], [62]
[4] Dunlop Holding Ltd’s Application [1979] RPC at 542-544
It is well settled by authority that resolution of the inventorship issue turns on an assessment of whether Mr Power made any contribution to the conception of the invention which had a material impact or led to a result or advantage not originally contemplated, in contrast to a better way of implementing the invention in practice. The question may otherwise be stated as would the invention have come about without Mr Power’s involvement.[5]
[5] See e.g. Polwood Pty Ltd v Foxworth Pty Ltd (Polwood) [2008] FCAFC 9 at [33]-[34], [53]
For completeness I note that Mr Power has not disputed Mr Long’s eligibility, and nor does Mr Long contend that any rights to the invention that may reside with Mr Power have been assigned to him.
CONSIDERATION
I have not found the evidence of either party to be altogether helpful. Nevertheless, I can only make a determination in the present matter on the basis of the material before me and, if either party (particularly Mr Power given the onus he bears) has failed to provide relevant evidence, they must accept whatever consequences may rise from that failure.
By way of background Mr Power deposes that “during around May and June 2014” he participated in discussions with Mr Long among others regarding a proposed excavator bucket maintenance program. Mr Long is said to have informed Mr Power of this proposal earlier the same year. Mr Power omits to explain why he was approached by Mr Long in the first instance, but this may have been because of Mr Power’s experience in the mining industry.[6] According to Mr Power, ideas were discussed “about how to attach heel shrouds, wear strips and wear liners to the bucket.” Mr Power and Mr Long later agreed to continue with the maintenance program using bolt-on components.[7] However, it seems that despite some reluctance by Mr Power, bolt-on wear liners were retained as part of the maintenance program at Mr Long’s insistence.[8]
[6] Power #1 at [8]
[7] Power #1 at [6]-[7]
[8] Power #1 at [14]-[15]
Annexure SP-1 is a copy of an email sent to Mr Long on 17 June 2014 enclosing a sketch said to have been prepared by Mr Power. Mr Power characterises the sketch as “the initial design of the internal retainer of the bolt-on heel shroud”. The term “heel shroud” has not been used in either the provisional application or the present application. Nevertheless, in view of the obvious similarities between the sketch and Figure 5 of both applications, I think it can be safely assumed that Mr Power is here referring to the gusset plates of the first embodiment of the invention which, as said earlier, is the subject of claim 1. The term “gusset” in fact appears several times in Mr Power’s email of 17 June 2014. Annexure SP-2 is a copy of an email sent by Mr Power to Mr Long the next day enclosing what Mr Power has described as “sketches of an outside retainer of a heel shroud”. This evidence is not entirely clear. Far from being rudimentary in nature, the “sketches” have undoubtedly been professionally drawn which leaves the original source of them open to speculation.
The drawings depict an excavator bucket. Mr Power states that the “annotations on the drawings of the bucket were done by [Mr Long] and me together”[9]. A number of annotations are clearly visible from one of the drawings, including an overlaying hand-drawn sketch of some components of the excavator bucket labelled as “gussets” which a comparison with Figure 1 confirms are representative of the gusset plates[10]. In the absence of evidence I cannot be certain of who between Mr Power and Mr Long drew the sketch.
[9] Power #1 at [11]
[10] Figure 1 item 134
Mr Power further deposes that in August 2014 Mr Long forwarded the above-mentioned sketches to a professional draftsman. Mr Long enclosed the technical drawings prepared by the draftsman in an email dated 11 August 2014 for comment by Mr Power.[11] The drawings duplicate a number of those accompanying the provisional application and the present application, most notably Figures 3, 5 and 7.
[11] Power #1 Annexure SP-3
The next step according to Mr Power was to build a prototype of the heel shroud. On 6 February 2015 Mr Power emailed photographs he took the same day of the first prototype allegedly built by him to Mr Long. These photographs are included in Annexure SP-5. Leaving aside the fact that the photographs post-date the provisional application, I find Mr Power’s evidence in relation to the prototype to be once again unclear. The heel shroud purportedly shown in the photographs is dissimilar in form to the gusset plate illustrated in Annexure SP-1 and Figure 5 and, if anything, seems to have more in common with the corner shroud of Figure 3. For these reasons Annexure SP-5 is of no benefit to Mr Power’s claim to entitlement. The remainder of his evidence is by and large concerned with the further development and testing of the prototype heel shroud which is not presently relevant.
For his part Mr Lord confirms that he was engaged by Mr Long to file the provisional application and, subsequently, the present application. He says in this regard that:
·all consultations during this period were solely with Mr Long.
·the drawings filed with the provisional application did not rely on input from Mr Power.
·Mr Power had no involvement with the drafting of either application.
Mr Lord appears to imply that Mr Power’s non-participation in discussions preparatory to filing either application reinforces the notion that his contribution to the invention was significantly less than the contribution of Mr Long. Mr Power has acknowledged that the “present application was organised by Mr Long”,[12] but does not explain why he did not join Mr Long in discussions held with Mr Lord. Mr Long sent a copy of the present application to Mr Power under cover of an email dated 18 October 2015,[13] that is, two days before the present application was filed. If Mr Power’s involvement with the invention was insubstantial as implied, it seems remarkable that he would be asked by Mr Long to “have a look through [the application] and see if you notice anything that needs amending”.
[12] Power #1 at [28]
[13] Power #1 Annexure SP-12
Mr Lord continues by drawing attention to an email sent by Mr Power to Mr Long on 9 December 2014 enclosing some simple sketches of what the email has referred to as “the heel block for the casting mob”. Mr Power clarifies that the sketches were of “the heel shroud for which I built the prototype”.[14] However, as with the photographs of Annexure SP-5, the sketches bear little resemblance to the gusset plate of Annexure SP-1 and Figure 5 and thus likewise do not advance the case pressed by Mr Power.
[14] Power #2 at [10]
It is fair to say that the evidence raises more questions than are answered. This state of affairs has not been assisted by Mr Long’s failure to give evidence of his own when afforded the opportunity to do so, or the emphasis placed by a good deal of the evidence that is before me on efforts to commercialise the invention subsequent to its conception. Furthermore, I find it quite surprising that the evidence is wholly silent as to the origin of the corner shrouds which are another key feature of the invention. A diagram of a corner shroud is included among the drawings of Annexure SP-3,[15] but there is no evidence of who was initially responsible for the sketches on which these drawings are based.
[15] Annexure SP-3 Figure 2
However, what the evidence does on balance establish to my satisfaction is that the feature of the gusset plate was devised by Mr Power independently of Mr Long. Despite the misgivings I have spoken of regarding the corroborative value of some of the material relied on by Mr Power, his account of events leading to the sketch of Annexure SP-1, which preceded Figure 5 of the provisional application and the present application, is both plausible and uncontroverted by Mr Long. With regard to the latter consideration, Mr Power states that:
- he has never met Mr Lord.
- Mr Lord was not present during any face-to-face or telephone conversations he had with Mr Long.
- Mr Lord was not present when he prepared any sketches concerning the invention.
- he does not recall Mr Lord being copied to any of his email exchanges with Mr Long.[16]
[16] Power #2 at [4]-[5]
Clearly, Mr Lord is not in a position to give first-hand evidence about Mr Power’s involvement with the invention. Interestingly though, Mr Lord has said that “when filing the provisional specification, [Mr Long] recognised that [Mr Power] had made a minor contribution to the development of the technology and therefore nominated him as a co-inventor.” Taken at its highest, this statement is supportive of Mr Power’s case. However, the assertion that his contribution was “minor” is inconsistent with the weight of the evidence and, in any event, is not to the point. The role of co-inventors does not have to be equal; the assessment is qualitative, not quantitative.[17]
[17] Polwood at [33]
CONCLUSION
I am satisfied that Mr Power is an inventor, and consequently an eligible person, along with Mr Long. I am further satisfied that the present application should proceed jointly in the names of Mr Long and Mr Power.
COSTS
Mr Power has successfully pursued his section 36 request, and I see no reason why costs should not follow the event. I therefore award costs against Mr Long.
O L Haggar
Delegate of the Commissioner of Patents
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