Signature Mouthguards Pty. Limited v Vijay Baria

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 42519/99 in the name of SIGNATURE MOUTHGUARDS PTY. LIMITED

Title: A Mouthguard

Action: Application under Section 36(1) of the Patents Act by VIJAY BARIA for a declaration regarding entitlement to an invention disclosed

Decision: Issued .
Abstract

Found that the section 36 applicant had not satisfied the delegate that he was an eligible person, either solely or in part, of the invention at issue. While the evidence of both parties was found to be insufficient to support their respective version of events, the onus was on a section 36 applicant to make out its case and he had not done so. In particular he had not demonstrated on the balance of probabilities that he had communicated the invention to the person currently recorded as the inventor. The section 36 applicant had not provided any specifics of when, where and how the invention had been communicated to the inventor of record and he had put forward no hard evidence effective to support his allegation that he was the actual inventor and had communicated it to the inventor of record, rather than vice versa.
Consequently the application under section 36(1) was refused.

PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 42519/99 by SIGNATURE MOUTHGUARDS PTY. LIMITED and an application by VIJAY BARIA under section 36 of the Patents Act for a declaration regarding entitlement to an invention disclosed.

BACKGROUND
The patent application

Signature Mouthguards Pty. Limited (“Signature”) filed International Application PCT/AU99/00458 on 11 June 1999, claiming priority from Australian provisional application
PP 4098 filed on 11 June 1998. PCT/AU99/00458 designates, inter alia, Australia, and it entered the national phase in Australia on 12 December 2000. The inventor of record is Peter Burns, who is the Managing Director of Signature. The international application has been subjected to an international search and to international preliminary examination. A request for national examination was filed on 5 February 2001, but as yet no national examination has been carried out on the application.
The section 36(1) application
On 30 November 2001 Mr Vijay Baria ("the section 36 applicant") filed an application under section 36(1) requesting that he be declared an eligible person in respect of matter disclosed in application 42519/99. The grounds on which the application is made state merely that Mr Baria believes that he is an inventor of at least some of the subject matter described and claimed in Australian Patent Application 42519/99.
The filing of supporting evidence and evidence in response
The evidence in support of the section 36 application was filed with that application (that is, on 30 November 2001). Signature initially indicated that no evidence in response would be filed, but apparently this was contingent upon the section 36 applicant accepting an offer by Signature to amend the specification to delete certain claims if the section 36 applicant would withdraw his section 36 application. The section 36 applicant, however, declined this offer and, after being granted an extension of time, Signature filed its evidence on 13 May 2002. The section 36 applicant subsequently sought, and was granted, leave to file further evidence. This evidence was filed on 22 May 2002. Signature filed evidence in response to this further evidence on 27 August 2002.
The hearing
The hearing was held in Sydney on 4 December 2002. The section 36 applicant was represented by Peter Dummer, patent attorney of Wallington-Dummer, Sydney. Signature was represented by Greg Turner, patent attorney of Spruson & Ferguson, Sydney. Mr Vijay Baria, the section 36 applicant, was also present at the hearing.
THE INVENTION AT ISSUE
Application 42519/99 relates to mouthguards such as are commonly used by participants in sporting activities and the like. In all, the specification describes five embodiments by reference to 31 drawing figures. The fifth embodiment has just one figure - figure 31 - devoted to it, and I comprehend from the evidence and the submissions at the hearing that it is with one aspect of this fifth embodiment Mr Baria's section 36 application is concerned.
It emerges from the evidence and the submissions that there are three basic types of mouthguard disclosed in the specification. These are designated "Type 1", "Type 2" and "Type 3" in the retailed product and this nomenclature is also employed in the evidence and submissions, although not actually in the specification. While occasionally in the evidence there appears to be some confusion surrounding the distinction between various types of mouthguard, for the present purposes nothing appears to directly turn on this. The general distinction between the Type 1 and the Type 2 lies in the more complex structure of the latter, the purpose of which is presumably to improve its functionality.
Type 1 and Type 2 mouthguards, it would seem from the evidence, have been in widespread use since before the earliest priority date of the present application. They are made of a polymeric material shaped to approximately conform to the intended user's teeth and jaw. Prior to first use the mouthguard is heated to a plastic state whereupon it is placed in position in the intended user's mouth and then bitten down on to leave an impression corresponding to the teeth of the intended user. From this is achieved a mouthguard closely fitting the intended user's teeth and jaw.
The Type 3 mouthguard is a development of the Type 1 and Type 2 mouthguards. In particular, the retail product consists of a kit of a Type 1 or Type 2 mouthguard plus a sachet of what is referred to in the evidence as a "gel", although this expression is not used in the specification, which instead refers to a vinyl containing polydimethylsiloxane. The principle behind the Type 3 mouthguard is that prior to use the gel is placed in situ in the mouthguard and the mouthguard is placed in the intended user's mouth and bitten down on. An impression of the intended user's teeth is thus made in the gel. Although this is not stated explicitly in the specification, my understanding is that the gel subsequently sets. The advantage stated in the specification for employing the gel is that, if need be, once set it can still be removed from the mouthguard simply by peeling it away from the surface to which is attached. However, the evidence from the section 36 applicant refers to another advantage, namely, that there is "a better customization of the resulting mouthguard than was the case for the single-step mouthguard". Nothing in the foregoing is alleged by the section 36 applicant to be his invention.
The ability of the gel once it has set to peel away turns out to be a double-edged sword, in that unless preventative measures are taken it apparently peels away altogether too easily. One measure which can be taken to ameliorate the problem is to texture the surface of a substrate to assist in the mechanical bonding of the gel to the substrate. This general technique is, it would appear from the evidence, well known in the prior art. Evidence was given of the disclosure of this technique before the relevant priority date in a Manufacturer's Specification booklet from a company called Mold-Tech. There is, however, a disclosure deep within the specification of a particular form of texturing which lies at the root of the present matter. It is described thus:
"…….the mouthguard body 50 has an inner flange 51 joined to an outer flange 52 by means of a base 53. The base 53 includes a layer 54 of material that is plastically deformable. More particularly, the layer 54 has a plurality of projections 55 which are plastically deformable to conform to the configuration of the user's teeth. In this embodiment the projections 54 are hollow and cylindrical in form. Received between the flanges 51 and 52 and covering the base is a moldable layer 57 constructed as follows. Firstly, the interior of the body 50 has applied to it an EVA copolymer coating. To this there is applied a thicker layer of vinyl containing polydimethylsiloxane. When the person to wear the mouthguard bites on the vinyl material, a dental impression results. However, the projections also deform to provide a physical "key" to bind the vinyl layer to the body 50."
The hollow and cylindrical projections have been commonly referred to in the evidence and at the hearing as "ferrules", and it will be convenient henceforth in this decision to do likewise.
The ferrules do not form the subject matter of any claim. Also, there was no disclosure of this feature in the provisional specification, and thus this matter is only entitled to the filing date of the international application (11 June 1999).
In essence, it is alleged by the section 36 applicant that he is the actual inventor of the ferrules feature. Signature on the other hand contends that the person who is recorded as the inventor - Mr Peter Burns - is in fact the inventor.
THE EVIDENCE
The section 36 applicant’s supporting evidence
The supporting evidence for the section 36 applicant consists of statutory declarations by the section 36 applicant himself (Vijay Baria) and by Kevin Coleborn. Mr Coleborn had a business association with Peter Burns, and formally introduced Mr Baria to Mr Burns on 5 May 1998. Mr Coleborn was also at a subsequent meeting in August 1998 between Mr Baria and Mr Burns which figures prominently in this matter.
The patent applicant's evidence in response to the supporting evidence
Signature’s evidence in response consists of a single statutory declaration by Peter Burns.
The section 36 applicant's further evidence
The further evidence filed by the section 36 applicant consists of a second declaration by Vijay Baria.
The patent applicant’s evidence in response to the further evidence
Signature’s evidence in response to the further evidence consists of a second declaration by Peter Burns and declarations by Stephen West and John Gavin, both of whom are business associates of Peter Burns. The West and Gavin declarations are substantially identically worded.
I will refer to the evidence in more detail, where appropriate, in my decision.
SUBMISSIONS
Mr Dummer outlined three inconsistencies which he perceived to exist in the evidence of Mr Burns and then proceeded to what he referred to as "the section 36 applicant's primary submissions" which, quoting from the written submissions provided by Mr Dummer at the hearing, were as follows:
"1. Mr Baria's declarations provide a plausible scenario as to how the ferrule version of the Type III mouthguard came to be constructed. The evidence indicates that Mr Baria was commissioned by Mr Burns for his expertise in mould technology. The evidence indicates that, in accordance with true inventorship, Mr Baria anticipated problems with the anchoring of gel in the lined/grooved versions of the Type III mouthguards and had proceeded to develop the anchoring technology further by way of his ferrule structures so that he, in effect, had a solution ready for Mr Burns by the time Mr Burns discovered from the marketplace that the lined/grooved Type III mouthguard structures simply did not anchor the gel well enough.
2. Mr Baria is happy to concede that the lined/grooved versions of the Type III mouthguards were a collaborative effort arising from the brainstorming discussions of August 1998 (or following on from thereon) at which Baria, Burns and Coleburn were all present. However, Mr Baria submits that the ferrule versions of the Type III mouthguards (as illustrated in Fig. 31 of the PCT/Patent Application) were the results of his own efforts and his expertise and experience in mould technology."
Mr Turner, in his submissions for Signature, travelled over the various ways in which the documentary evidence contained in the exhibits to the statutory declarations making up the evidence in this matter supported Signature’s version of the events leading to the invention of the ferrules over those of the section 36 applicant.
APPLICABLE LAW
In deciding a matter such as this the Commissioner is entitled to act on any material which is "logically probative" of the issues under consideration. In reaching a conclusion on any issue, the standard of proof required is the civil standard of proof on the balance of probabilities (see, for example, Dunlop Holdings Ltd's Application, (1979) RPC 523). In so doing the Commissioner may consider the evidentiary weight to be applied in light of any doubts he or she may have as to the credibility of the declarants and may come to a view of events on the balance of probabilities which is different to that alleged by either party. Furthermore it is clear from the authorities (see, for example, Stamp v W J Powell Pty Ltd, (1918) 24 CLR 339) that it is incumbent upon an opponent to prove its case. Thus in this case the onus is on the section 36 applicant, Mr Vijay Baria, to provide clear evidence to justify a finding that the inventor of record, Mr Peter Burns, is not the true and correct inventor of the invention which is the subject of this application.
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 of Patents and Another ([1998] AATA 852).
Also potentially relevant in the present circumstances is the principle discussed in Falkenhagen et al v Polemate Pty Ltd [1995] APO 32 where it was said:
"……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."
DECISION
The events relating to this matter up to and including the meeting of August 1998 are not in dispute. Mr Baria and Mr Burns were introduced by Keith Coleburn in May 1998 and in July of that year they signed what Mr Baria refers to as "a letter of engagement" in which Mr Baria's company VB Precision Tooling Pty Ltd agreed to provide mouthguard moulds to Mr Burns’ company Signature Mouthguards Pty. Limited for an agreed price. [The evidence seems to suggest that eventually VB Precision Tooling supplied the actual mouthguards themselves, but nothing turns on whether or not this is the case.] At the August meeting the topic of discussion was the designing of a Type 3 mouthguard. The evidence from both Mr Baria and Mr Coleburn, who was also at the meeting, establishes that it was Mr Burns who raised the problem of the adhesion of the gel to the mouthguard and Mr Baria who proposed the solution of texturing the surface, an expedient which was apparently well-known in the prior art (exemplified by the Mold-Tech Manufacturer's Specification booklet).
I should note at this point that Mr Coleburn does not figure any further in the events behind this matter. He does state his view that Mr Burns had no expertise in relation to injection moulding and relied on his (Mr Coleburn's) and Mr Baria's expertise in relation to the manufacture of moulds for use in injection moulding machines, and did not have the technical expertise to provide a solution to the problem presented by Mr Burns to the August 1998 meeting. However, the inventive concept itself is clearly not a technically complex one (although putting it into operation, it seems, might have presented challenges), and I think little, if any, weight attaches to these bland assertions by Mr Coleburn.
Subsequent to the August 1998 meeting, Mr Baria in his first declaration states that it became clear to him that the surface texturing envisaged in the Manufacturer's Specification booklet was of too fine a nature to be effective. Accordingly in "around August and September 1998" he devised a method of manufacturing a mould for a mouthguard which would include raised ferrule-like structures on an inner base surface and involved an electric discharge machine (EDM) loaded with special electrodes which he also devised. However, Mr Baria provides no hard evidence to substantiate any of this. His declaration exhibits photographs of an EDM and a Type 3 mouthguard, but the evidentiary value of these is negligible, even to the extent that there is no indication of when the photographs were taken.
In his second declaration Mr Baria elaborates upon this evidence a little. He now sets the time at which he began looking for a better anchoring for a mouthguard as October to December 1998. He claims as his inspiration a button mould (a mould for making clothing buttons) which a different client had ordered on 30 August 1998. Mr Baria says he realized that profiling analogous to that given by the button mould might serve as a helpful type of formation for the inside surfaces of mouthguards in order to retain gel for a Type 3 mouthguard (although greatly sized-down, it would seem). The tie-in between the button moulds and the EDM electrode referred to in Mr Baria's first declaration is, as I understand from an explanation provided by Mr Dummer at the hearing, that the sized-down button moulds are produced using EDM electrodes.
Mr Baria goes on to state that between October and January he produced various trial moulds, and his declaration exhibits photographs of two of these. Once again, these photographs are of very little evidentiary value, as they are undated.
On no occasion up to this point does Mr Baria lay claim in his evidence to having informed Mr Burns about any of this investigation he has carried out on looking for a better anchoring for a mouthguard. However in the penultimate paragraph of his second declaration he states as follows:
"To the best of my recollection I made the first deliveries of completed mouthguard batches with ferrules to Mr Burns in February 1999. Now shown to me and marked Exhibit "VJX-9" are pictures of a Type 3 mouthguard set with ferrules as delivered to Mr Burns at that time together with a copy of a delivery docket for one of the deliveries."
At the hearing Mr Turner criticised this evidence in several aspects Firstly, the delivery docket does not specify the version of Type 3 mouthguard it refers to, that is, whether it is the version having ferrules. Secondly, the evidence is ambiguous as to whether the pictures referred to are pictures of the actual mouthguards delivered to Mr Burns. Thirdly, the qualification used at the outset of the paragraph "To the best of my recollection" conveys a sense of tentativeness as to the correctness of what follows. In my view these criticisms are all well-founded.
Then in the final paragraph of his second declaration, Mr Baria states:
“I say that at no stage did Peter Burns suggest to me the idea of using ferrule structures to anchor gel for a Type 3 mouthguard. I say that I derived the concept of the ferrule structures from my own experience and suggested the concept to Mr Burns after initial experimentation on my part. I recollect that Mr Burns expressed his great satisfaction to me for this development at the time (around January 1999).”

I also have misgivings about this evidence – not so much in relation to what it says, but in the lack of detail it provides. It would appear from the delivery document referred to in the previous paragraph of the declaration that the mouthguard batches supplied in February 1999 involved commercial quantities. Clearly for this situation to have been reached there would have had to have been some consultation with Peter Burns and ultimately agreement on the part of Peter Burns for Mr Baria to proceed with the supply of the Type 3 mouthguards with ferrules. While the last paragraph of Mr Baria’s second declaration states that Mr Baria “suggested the concept to Mr Burns”, there is otherwise an absence of detail about this crucial aspect of the section 36 applicant’s case.
This then is more or less the sum total of Mr Baria's evidence for the purpose of establishing, firstly, that he invented the ferrules feature and, secondly, that he conveyed knowledge regarding his invention to Mr Burns. There is no corroboration from any other person and no hard evidence effective to support Mr Baria's version of events. The only other evidence to speak of is a signed letter (included as an exhibit to Mr Baria's second declaration) from a "Department Manager" called Steven Wiggins at Rebel Sports Parramatta (NSW) store, "certifying" that the Type 3 mouthguard was first sold in Rebel Sport Parramatta on 24 December 1998. The intention of this evidence is, I think, to contradict certain evidence from Signature on the timing of the placing of the various versions of the Type 3 mouthguard on the market, thus casting doubt on Signature’s evidence as a whole.
Mr Burns’ version of events subsequent to the August 1998 meeting is that in February 1999 he (that is, Signature Mouthguards) started selling the first version of the Type 3 mouthguard. This first version, according to Mr Burns’ corrected version of events contained in his second declaration, had no slits, grooves or ferrules (that is, was based on a Type 1 mouthguard). I should mention at this point that in pointing to errors made in his first declaration, Mr Burns left out one particular statement in his first declaration stating that the first version of the Type 3 mouthguard had grooves. This was seized upon by Mr Dummer in his submissions at the hearing as an inconsistency in Mr Burns’ evidence. To me this looks more like pure oversight on the part of Mr Burns than anything else, and I am disinclined to draw any adverse inference beyond that.
By March 1999, so the story goes, a significant number of these first version Type 3 mouthguards were returned by purchasers because of failure of the gel, whereupon Mr Burns approached Mr Baria advising him of the problem and proposing three possible solutions:
(i) add grooves or slits;
(ii) add projections; or
(ii) use hollow ferrules.
He then states:
"Mr Baria advised me that it would be difficult to make these changes to my mouthguard. Mr Baria however was engaged to make a mould which would allow a mouthguard to be easily made with hollow ferrules, and that the ferrules were to be deformable."
Mr Burns alleges that even prior to his first meeting with Mr Baria he had been aware of the possibility of using ferrules for similar purposes to which they would be put in the invention in suit. In particular, his evidence refers to three US Patents, one of which in particular has buried within it a disclosure of something bearing a close resemblance to the ferrules of the present application. Although Mr Burns states in his evidence that "I regularly review patent literature worldwide and have [Spruson & Ferguson] provide opinions on any discovered patents of concern", for Mr Burns to have been able bring this rather obscure piece of prior art to bear in coming up with the present invention seems, on the one hand, to test credulity, yet on the other hand is not really out of the ordinary as inventions go. One of the inconsistencies to which Mr Dummer drew attention in his submissions is the fact that there is no evidence confirming Mr Burns’ claim that Spruson & Ferguson have provided opinions on “discovered patents”, a point which I think is well made.
In Mr Burns' second declaration, and following the further evidence from Mr Baria contradicting the evidence given by Mr Burns regarding the timing of the placement of the various Type 3 mouthguards on the market (the letter of Mr Wiggins), he provides additional evidence in regard to this. The production-distribution chain for Signature mouthguards is described thus:
"I instructed Mr Vijay Baria ("VB") on the manufacture of SM^[*^] mouthguards. VB delivered the manufactured SM mouthguards to the George Lewis Group ("GLG") who packaged SM mouthguards. GLG delivered the packaged SM mouthguards to E. & S.A. West Pty Ltd.("West"). West delivered the packaged SM mouthguards to the stores for sale."
*Signature Mouthguards
Mr Burns further states:
"I confirm that West was the only distributor of SM mouthguards in Australia up until about March 2000. All SM mouthguards going to sporting stores pass through West”
and
"Around March/April 1999 I discussed with Stephen West [Managing Director of West] and John Gavin [General Manager of West] problems that had occurred with SM mouthguards that had been returned to West and how I might reduce the number of returns."
There are two exhibits to Mr Burns’ second declaration. One is a listing of all deliveries made by VB Precision Tooling to the George Lewis Group up to 31 May 1999. It comes under a covering letter by Vijay Baria, and clearly establishes that there were no deliveries of mouthguards from VB Precision Tooling before 7 January 1999.
The second exhibit is a letter from the suppliers of the gel for the Type 3 mouthguards. It indicates that the first delivery of gel to Signature took place on 29 January 1999. The conclusion which is intended to be drawn from this is that the first Type 3 mouthguard could not have been on the market before this time.
The evidence of Stephen West and John Gavin is that E. & S.A. West did not receive any Signature mouthguards before 2 February 1999, and no Type 3's until 11 February 1999. This evidence is backed-up by E. & S.A. West's “goods received” dockets from the George Lewis Group, the "Goods Received Log", sales analysis printouts and the first invoice to Rebel Sports for Signature mouthguards, which is dated 17 February 1999.
Thus far, setting aside the direct evidence from Mr Burns, there is nothing in Signature's evidence contradicting the evidence from Mr Baria that he delivered mouthguard batches with ferrules in February 1999 "to Mr Burns" (which I take as not necessarily being Mr Burns himself, but could also refer to somewhere else within the Signature organisation). The evidence from Signature does, however, cast considerable doubt over the evidence constituted by the letter from Mr Wiggins, on the basis of which that evidence, I think, can be rejected.
The final evidence from Stephen West and John Gavin is data relating to "returns" of Signature mouthguards from when they first appeared on the market. The pattern of figures is very much open to interpretation, but is put forward by Signature as support for Mr Burns' contention that it was the first and second versions of the Type 3 mouthguard which were on the market in March and April, and the failure of these provided the impetus to seek a solution to the gel detachments, giving rise to the idea of using ferrules to anchor the gel. Mr Dummer’s principal counterargument to this was that the numbers of returns was so low (for example, 53 in 1999) that rather than indicating there was a problem with the mouthguards, it was an indication of no problem. I am far from convinced of the validity of this approach, since 53 returns of a $10 item could well be a "tip of an iceberg" situation. Nonetheless, I agree with Mr Dummer to the extent that in my view the evidence of the returns is inconclusive and does not serve to any substantial degree to prove Signature’s version of the events surrounding this matter.
A limitation of the data is that although it is specific as to the type of mouthguard, it does not indicate, in the case of Type 3 devices, which version it is. That is, there is no indication of whether a reference to a Type 3 device is to one having ferrules or not. Thus the data does not provide any direct indication of when these devices were first retailed. Another limitation is that while Signature seeks to draw inferences from the declining number of returns from 1999 to 2000 and subsequent years, the data is not expressed as a percentage of total sales, which would appear to be a more telling statistic rather than the absolute number of returns. Mr Turner surmised that sales would be low when the mouthguards initially came onto the market and would build up with time, but it seems to me that another quite realistic scenario is that there could have been a pent-up demand when the mouthguards first went onto the market and this was gradually satisfied. In any case, even if it were the case that the percentage of returns had declined over the years this might be attributable to a variety of reasons other than that being pressed by Signature.
Mr West and Mr Gavin do confirm that they contacted Mr Burns in respect of the returns during the first three months of sales, but they do not give any details of the causes of the returns and nor do they give any details of any solutions devised by Mr Burns to the problems behind the returns.
In the foregoing I have addressed two of the three purported inconsistencies in the evidence of Mr Burns which Mr Dummer drew attention to in his submissions at the hearing. The third inconsistency related to this paragraph in the second declaration of Mr Burns:
“6.Attached hereto as Annexure PB-1 is a copy of a facsimile dated 1 June 1999 from VB Precision Tooling and VB confirming all deliveries VB made to GLG up to 31 May 1999. GLG were the only packagers of SM mouthguards up until January 2002. As it will be noted, no deliveries were made prior to 7 January 1999.”
Mr Dummer selectively quoted the last two sentences of this paragraph to read them as saying that Signature mouthguards have only been on sale in Australia since January 1999. This he contrasted with the first Burns’ declaration which states that Signature mouthguards have been on sale in Australia since 1989. However, in my view focussing on the last two sentences of this paragraph in isolation as Mr Dummer has done results in a distortion of what is being said. Read in the context of the whole paragraph it is clear that the deliveries referred to in the last sentence of it are deliveries from VB Precision Tooling to the George Lewis Group, and does not preclude deliveries having been made from some other supplier, and thus the inconsistency contended by Mr Dummer does not exist.
The long and the short of this matter is that neither side has put forward any significant evidence to prove its case or disprove the case of the other side, beyond the conflicting attestations of the two protagonists, Mr Baria and Mr Burns. Of course, the state of the evidence also precludes any finding as to Mr Baria having made a material contribution to the invention in accordance with Falkenhagen et al v Polemate Pty Ltd (supra). In these circumstances it is necessary to fall back on the basic principle that the onus is on the section 36 applicant to establish the entitlement it alleges. In my view Mr Baria has been manifestly unsuccessful in meeting this requirement, and it follows that I must refuse this section 36 application.
Just before the end of the hearing, Mr Turner made a submission that in the eventuality that Mr Baria was successful in satisfying this tribunal that on the balance of probabilities he had in fact supplied Mr Burns with Type 3 mouthguards with ferrules in February 1999, he would still not be entitled to be declared an eligible person in respect of that matter. The reasoning for this (following, I think, the approach taken in Mining Supplies Australia Pty Ltd v Mining Equipment (Minquip) Pty Ltd [1999] APO 55) is that this would, in effect, be a finding of prior use before the priority date of the matter in question, and thus there would be no invention for entitlement to subsist in. Mr Dummer’s response was simply that supply to Mr Burns did not establish prior use.
In the event this issue is a nullity as I have found that Mr Baria has not made good the allegation that he supplied Type 3 mouthguards with ferrules to Mr Burns in February 1999. However I think it worthwhile to observe that I consider there is some force to Mr Turner’s contention. While strictly speaking Mr Dummer is correct in saying that supply to Mr Burns does not establish prior use has occurred, it would be extremely unlikely that had the Type 3’s with ferrules been supplied in February 1999 (remembering that Mr Baria’s evidence appeared to be that saleable quantities were supplied), none would have been available for sale before 11 June 1999, the filing date of the international application and priority date for the ferrules feature. In fact the evidence points to there being very little delay between manufacture and availability for sale of the particular commodity under consideration here (the Signature mouthguard). But even if prior use had not occurred, there would still remain the issue of whether any obligation of confidentiality attached to the disclosure of the ferrules feature by Mr Baria to Mr Burns. Once again, there is no inkling in the evidence that confidentiality exists, in which case the possibility arises that such disclosure to Mr Burns constitutes publication.
CONCLUSION
I am not satisfied that Mr Baria is an eligible person either solely or in part and consequently the application under Section 36(1) is refused.
Pursuant to Section 36(4) an appeal against this decision lies to the Federal Court.
COSTS
Having considered all the circumstances in this case I see no reason to depart from the normal practice that costs follow the event. I therefore award costs against Vijay Baria.
E. J. Knock
Delegate of the Commissioner of Patents
Patent attorneys for the section 36 applicant : Wallington-Dummer, Sydney
Patent attorneys for the patent applicant : Spruson & Ferguson, Sydney

[2003] APO 1

14 January 2003