Tasman Engineers Pty Ltd v Ausbelt Splicing Services (International) Pty Ltd
[1996] APO 13
•27 February 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 645150 in the name of Tasman Engineers Pty Ltd
Title: Improvements in Belt Conveyor Training Idlers
Action: Opposition by Austbelt Splicing Services (International) Pty Ltd; a request to amend the statement of grounds and particulars under regulation 5.9, and an application by Austbelt Splicing Services (International) Pty Ltd under regulation 5.10(4) to serve further evidence.
Decision: Issued .
Abstract: Further evidence; Decision in Ferocem v The Commissioner of Patents (1994) AIPC 91-057 relevant and issue to be decided without insistence upon “imperative” compliance with particular requirements as found in Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (1993) AIPC 91-013; Balance found to be against allowing the request taking into account that while some of the evidence could have a bearing on the outcome of the opposition this likelihood is small, the opponent had not been diligent and could have obtained the evidence at an earlier stage and that the delay that would result by the request being allowed would inflict an injustice on the applicant.
Request under regulation 5.9 was trivial and clearly would not prejudice the applicant; consequently it was allowed.
Opposition in relation to section 40 succeeds; claim 2 not fairly based and claim 15 redundant; Claim 1 not restricted to tilt frame with freedom to separately tilt and slew on the presumption against redundancy of claim 10.
Prior use not established in that there was insufficient evidence to verify that information concerning a training idler constructed at Dalrymple Bay Coal Terminal was communicated without an obligation of confidence to individuals who were either employees or contracted to that facility.
Applicant given 60 days to file amendments to overcome the section 40 deficiencies.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 645150 in the name of Tasman Engineers Pty Ltd, and Opposition by Austbelt Splicing Services (International) Pty Ltd; a request to amend the statement of grounds and particulars under regulation 5.9, and an application by Austbelt Splicing Services (International) Pty Ltd under regulation 5.10(4) to serve further evidence.
background
Patent application 645150 (88535/91) was filed on 22 October 1991 as PCT/AU91/00488 and claims priority from provisional application PK 2959 filed on 23 October 1990. The application was advertised accepted on 6 January 1994 and the opponent filed its notice of opposition on 6 April 1994. The Statement of Grounds and Particulars was served on the applicant on 6 July 1994 and service of the evidence in support was completed on 16 November 1994. On 13 April 1995 the service of the applicant’s evidence in answer was completed and in the absence of evidence in reply the applicant sought a hearing of the matter. I note here also that the applicant filed on 13 October 1994 a divisional application which was sealed on 14 February 1995 as petty patent 658110.
Prior to the setting of a hearing date the opponent filed both a request for permission to serve further evidence and a request to amend the statement of particulars. It was agreed that these matters would be heard as a preliminary to the substantive hearing which in the event took place in Brisbane on 4 December 1995. Submissions on the substance of the further evidence were deferred pending the outcome of my decision under regulation 5.10(4).
The applicant was represented by Mr C Anese, patent attorney of Cullen and Co., Brisbane. The opponent was represented by Mr C Carrigan of counsel and Mr T Dredge, patent attorney of Intellpro, Brisbane.
FURTHER EVIDENCE
At the hearing there was some dispute as to the date and the effect of the request for the Commissioner to permit service of further evidence. Reference to the file reveals in fact two purported requests, one dated 30 August 1995 which seeks leave but indicates that evidence was being sought, viz. “The Declarants are currently being interviewed by the opponent’s solicitors with a view to the declarations being served as soon as possible”, and a second dated 25 October 1995 which is accompanied by the evidence and is said in the covering letter by Mr Dredge to be “the formal application”. Both appear to have been accompanied by the necessary fee.
The serving of further evidence is governed by regulation 5.10(4), which provides:
“(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.”
The regulations further provide that:
“(5)The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party‑is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his or her own motion‑ensures that the parties are notified of the proposed action; and
(c) in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.”
There is no requirement here that the request must be accompanied or made in conjunction with service of the evidence as I believe Mr Anese was suggesting. What is required of a request, apart from the specified fee, is that it provides sufficient justification for the exercise of the Commissioners discretionary power. It is also clear that I should consider the opponent’s request on its merits and should not shut it out on a mere technicality, if indeed one exists.
Mr Carrigan for the opponent argued that the Commissioner under Regulation 5.10(4) has a broad discretion and referred me particularly to the decision in Ferocem v The Commissioner of Patents (1994) AIPC 91-057 where Burchett J at 38,207 states that:
“The idea that such a broad discretion can validly be reduced by a decision maker to an insistence upon “imperative” compliance with particular requirements has repeatedly been rejected by the courts”
and at 38,208
“The determination of an application for an extension of time under reg 5.10(2) involves a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not all necessarily ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon proper professional standards being maintained by those who deal with the Office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Corporation v The Reynolds Metal Company (1969) 120 CLR 136 at 143, "the public interest that a serious opposition by a person in fact entitled to oppose the grant of a patent should be dealt with on the merits, rather than it be shut out in consequence of a failure in procedure, lamentable though that failure may be."
I agree that the same principles should apply to a determination under regulation 5.10(4), not the least because regulation 5.10(5) is common to both provisions. I also believe the specific considerations espoused in Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd (1993) AIPC 91-013 and some subsequent Office decisions are in conflict to the extent that those considerations were used as an “imperative” rather than issues that assist in exploring the circumstances of each case and the interests of the parties.
For example the Delegate in Sandoz states that:
“In deciding how regulation 5.10(4) should be interpreted I have also considered the other regulations which provide for evidence to be lodged. With this in mind I do not believe that regulation 5.10(4) exists to give unlimited time for the filing of evidence which should normally have been lodged as another form of evidence, such as evidence-in-support. In my opinion strict rules apply for the adducement of further evidence.
The criteria to be satisfied to grant a request under regulation 5.10(4) have not been considered by the Commissioner in any previous decision. However, in the context of adducing further evidence under regulation 59 of the 1952 Act, previous decisions have discussed certain matters which I believe are also appropriate to the new provisions. For example in Micronair (Aerial) Ltd v Waikerie Co-operative Producers Ltd (1986) 7 IPR 107 the hearing officer held that there were 3 matters to be considered in deciding whether leave should or should not be granted:
1.It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.
2.The evidence must be such that, if given, it would probably have an important influence on the result of the case.
3.The evidence must be such as is presumably to be believed, that is it must be apparently credible, though not necessarily incontrovertible.”
It is clear that the concept of “strict rules” in exercising a broad discretion goes against the decision in Ferocem. However this does not mean that regulation 5.10(4) can be used to circumvent the overall scheme of the opposition provisions and any decision to that effect would be to ignore the interests of the public and the party opposing the request.
In coming to this point I believe there are a number of factors which are useful to consider in balancing the interests of the parties. These are:
Is the evidence which it is proposed to serve, based on the nature thereof and information supplied in the request, relevant to the action - in the sense that it would contribute to a more correct, just, or expeditious result?
If the request to serve further evidence were to be allowed, would this cause unnecessary protraction of the opposition?
Would there by any injustice done to the other party, if the request was to be allowed?
Has the party seeking to serve the further evidence been diligent in prosecuting the opposition action?
The further evidence subject of the request in my view comprises a declaration by Trevor James Dredge dated 25 October 1995 with the following exhibits:
a)A decision of Cooper J in the Federal Court, U & I Trading (Australia) Pty Ltd v Tasman-Warajay Pty Ltd.
b)A letter and enclosures from the solicitor Xavier Kelly & Co
c)An extract from the Australian Journal of Mining dated June 1995
d)Copies of photographs said to be supplied by Brian William Rochford
e)What is said to be a copy of a declaration by Kevin Robert Peatey but which appears to be the original.
This evidence is said by Mr Dredge in the letter of 30 August 1995 to have “only come to hand as a consequence of a groundless threats action currently before the Federal Court”. However in the declaration of 25 October at para 7 he also states that he was and still is of the view that Brian Rochford’s uncorroborated evidence is sufficient for the opposition to succeed but that Mr Carrigan requested corroborating evidence on being engaged by the opponent.
From the information on file I make the following conclusions:
The evidence in relation to a) to c) above is not relevant to the outcome of the opposition as it does not appear to support any of the grounds of opposition. It is at best interesting background information.
The evidence in relation to d) and e) could possibly have a bearing on the outcome as it is said to corroborate evidence already served and goes to the issue of prior use which is the key to the opponent’s case as is apparent from the statement of grounds and particulars. I don’t believe Mr Dredge’s confidence in the evidence already served necessarily negates this, however it supports the view that the likely impact is small. Certainly the evidence is not in the nature of a potential prior publication that could, on its own, clearly render a patent granted on the application invalid.
The evidence in relation to d) and e) was obtained at the request of Mr Carrigan when he became involved in the case and I have been given no valid reason why it could not be obtained at an earlier stage. In this regard it is clear that the opponent has not been diligent in prosecuting the opposition. If the evidence is of any value in the case , and Mr Carrigan clearly believes it is, and was apparently available, then it should have been sought at the appropriate time and included in the evidence in support.
Allowing the request would inflict an injustice on the applicant by significantly delaying the outcome of the opposition process. The delay would include time to formally serve the evidence, time for the applicant to respond and further time to reconvene the hearing.
The fact that the further evidence has been finalised is not justification in itself for the request to be granted. It is a significant factor but only one of a number to be considered in exercising the Commissioner discretion.
Taking into account all the circumstances, I believe that the balance is for me to refuse the request. While it may be that a “more correct” determination of the opposition could have resulted from the evidence, this possibility appears small and is outweighed by the detriment that would be caused to the applicant and the public interest in the maintenance of an expeditious and orderly opposition process. Ultimately the opponent’s position is of its own making in the way it has prosecuted the opposition and it has failed to justify the exercise of the Commissioner’s discretion in its favour.
Accordingly I refuse the opponent’s request under regulation 5.10(4).
Amendment to the Statement of Grounds and Particulars
While there appeared to common ground between the parties that the amendment sought under regulation 5.9 is trivial, Mr Anese objected to the reasons given for the request in that they made groundless allegations about the actions of the applicant.
The request seeks to add the following particular:
“Ground 2(c) the expression “tilting means responsive to the slewing” is unclear and of uncertain ambit in claim 1 and 2.”
I can not allow a request under regulation 5.9 if I believe any person would be unduly prejudiced by the addition of this particular. While the reasons given to support the request are somewhat unsatisfactory, it is nevertheless clear that the applicant would not be prejudiced and I consequently allow the amendment requested.
Even though it was agreed initially that submissions on this particular should be postponed pending my decision, both parties did in fact address this issue in their submissions at the hearing. Therefore I do not believe a further hearing is required to address this point and I will proceed to consider the substantive issues of the opposition.
specification
The specification states that the invention relates to improvements in training idlers for belt conveyors for correcting lateral misalignment of the belt. It refers to known training idlers including that disclosed in French Patent specification 2586235 and then describes a broad form of the invention and characterising aspects. There are 17 claims including three independent claims of which claim 1 reads:
“1. Apparatus for correcting lateral misalignment of a conveyor belt, comprising an idler roller upon which the belt is adapted to run; a base frame; a tilt frame having the roller rotatably mounted thereon, the tilt frame being pivotally mounted to the base frame; slewing means, responsive to the lateral misalignment of the conveyor belt, for causing slewing of the tilt frame and roller generally about an axis substantially normal to the belt to thereby urge the belt in a direction opposite to the misalignment; tilting means responsive to the slewing of the tilt frame to cause the tilt frame and roller to pivot relative to the base frame about an axis substantially parallel to the direction of belt travel to further urge the belt in a direction opposite to the misalignment; characterised in that the slewing means comprises an abutment member located adjacent each edge of the conveyor belt but spaced therefrom, and wherein the urging of an edge of the conveyor belt against its associated abutment member due to misalignment of the belt causes slewing of the tilt frame and idler roller.”
evidence and the statement of grounds and particulars
Mr Carrigan at the hearing indicated that the Opponent would rely only on selected portions of the statement of particulars. These are in summary:
Paragraph 3(b)(2) - That the invention claimed was not novel in light of public disclosure of the invention claimed with the Applicants consent between the provisional and international filing dates by virtue of the claims not being fairly based on the provisional specification.
Paragraph 3(b)(3) - That the invention was not novel by virtue of the installation of training idler apparatus at Dalrymple Bay Coal Terminal.
Paragraph 3(d)(1) - Claims 1 to 5 and 7 to 16 are not fairly based on the description because these claims omit the feature claimed in claim 6 which is essential to the invention described.
Paragraph 3(d)(2) - Claim 2 is not fairly based on the description because it omits the feature claimed in claim 12 which is essential to the invention described.
“ground 2(c)” - The particular added by the amendment considered above.
The evidence in support comprises four statutory declarations made by the following persons:
Trevor James Dredge, patent attorney, dated 6 October 1994 including opinion on the scope of the provisional and PCT applications and the priority date of the claims.
Bernard Athol Anderson, owner of the opponent company, who provides details of information said to be disclosed to him by Brian William Rochford concerning tracking frame installations at Dalrymple Bay Coal Terminal.
Brian William Rochford, employed as Maintenance Supervisor/Superintendent at Dalrymple Bay Coal Terminal who describes tracking frame equipment that he says he installed at Dalrymple Bay “before or at the latest in August 1990”.
Trevor James Dredge, patent attorney, dated 16 November 1994 including exhibits which apparently relate to work done by Tasman Engineers Pty Ltd on “New Training Idlers” for the Gladstone Port Authority. Mr Dredge says that in light of this evidence the claims of the application with a priority date later than 2 April 1991 are invalid.
The evidence in answer comprises the following:
A declaration by Carlisle Michael Wordsworth, a director of Tasman Engineers Pty Ltd, principally in response to the Rochford declaration and including transcripts of telephone conversations said to have been made with two ex-employees of Dalrymple Bay Coal Terminal.
A declaration made by William Robert MacDonald, solicitor, and including as exhibits copies of affidavits by Mr Dredge and Duncan Bartlett Gilmore filed in the Federal Court proceedings referred to previously. Mr Gilmore is a technical consultant of UniQuest Limited and his affidavit includes opinion on the “Blacktracker” tracking system marketed by Tasman Warajay Pty Ltd, the “A.B. Tracker” system produced by the Opponent and the claims of petty patent 658110.
I will refer to the evidence, the statement of particulars and the submissions made at the hearing where appropriate in my decision.
decision
Section 40
The Opponent argues that because claims 1 to 5 and 7 to 16 do not include the feature added in claim 6 they are not fairly based on the invention described in the specification. To the extent that this argument is based on features said to be essential to the invention described in the provisional then it must fail since while the provisional may be pertinent to determining the priority date of the claims it is not directly relevant to the question of fair basis under Section 40. Otherwise and mindful of what was said in Catnic Components v Hill and Smith Ltd, [1982] RPC 183 concerning essential features, I cannot conclude that details of the guide and guided members on the tilt and base frames is essential to the invention described. In fact the description at page 4 clearly indicates that the nature of the guiding mechanism is optional.
The situation with claim 12 is somewhat different. Claim 12 is dependant from claim 2 and defines the slewing means as comprising a pair of servo rollers mounted on the tilt frame adjacent the edges of the belt and responsive to misalignment of the belt to cause slewing of the tilt frame. While I do not think the servo rollers of claim 12 are essential, the provision of an abutment member to transfer movement of the belt to a slewing motion of the tilt frame clearly is essential to the invention, for example as defined in the characterising portion of claim 1.
In this regard there is an implication in the specification that the invention overcomes the disadvantages of the prior art. These disadvantages are apparently either:
In a slewing frame driven by servo rollers responsive to belt misalignment, limited realigning influence due to one degree of freedom, ie slewing only; or
In a training idler with slewing and tilting of the frame, a complex mechanism to apply a positive force to rotate the frame including optical sensing of the belt misalignment.
From this the addressee could only conclude that to achieve the advantages of the invention the frame should both be driven by a simple mechanism, ie the action of the belt edge on an abutment member, and include a idler that slews and tilts. Consequently I find that claim 2 does not define the invention and is not fairly based.
The next point of contention relates to the terminology “tilting means responsive to the slewing of the tilt frame”. Mr Anese explained with the aid of a model that while there may be separate means for slewing and tilting, the slewing and tilting actions occur simultaneously and attacked the opponents suggestion that there were separate pivotal movements as in paragraph 11 of Mr Dredge’s declaration of 6 October 1994.
The main point put by the opponent is that the appended claims 10 and 15 both refer to “separate [relative] tilting and slewing between the separate frames”, ie between the tilt frame and the base frame, and as a consequence the intent of the wording in claims 1 and 2, “responsive to the slewing of the tilt frame”, is unclear.
I am assisted in construing the claims by the principles of construction conveniently summarised by Shepherd J in Decor Corp v Dart Industries, 13 IPR 385. In claim 1 it is clear that the invention defined possesses both slewing means and tilting means and that tilting occurs in response to the slewing of the tilt frame. In this respect it is apparent in the context of the specification as a whole, and as argued by Mr Anese, that the slewing and tilting actions occur simultaneously. That is, as the tilt frame slews it also tilts. I also do not think that the claim is restricted to a mechanism which allows separate slewing and tilting motions of the tilt frame and roller so long as the required slewing and tilting motion of the roller and tilt frame relative to the base frame is achieved and that tilting occurs in response to the relative slewing action of the tilt frame. The Macquarie dictionary defines the term “slew” “as to turn or twist (something), esp upon its own axis or without moving it from its place” but I think the meaning of “slewing” used here is that component of motion that results as a turning or twisting of the roller and tilt frame about an axis substantially normal to the belt. Thus a tilt frame turning only on an axis inclined to the belt, as in FR 2586235, can be said to have a motion that exhibits both slewing and tilting components as is apparent by considering the motion in orthogonal planes parallel and normal to the belt.
Claim 10 demands this interpretation on the presumption that is not redundant over claim 1 (Parkinson v Simon (1894) 11 RPC 493) as does the additional requirement for two degrees of freedom of movement in claim 2. Thus the intention of the draftsman appears to be clearly that claim 1 is not restricted to separate tilting and slewing motions.
Claim 2 however by referring also to two degrees of freedom of movement between the tilt and base frames indicates the freedom to separately slew and tilt and on that basis claim 15 is redundant. Otherwise claim 2 would be claiming something not fairly based on the description.
Novelty
Central to the Opponent’s case is that the invention claimed is not novel by virtue of the installation of training idler apparatus at Dalrymple Bay Coal Terminal before the relevant priority date. There was also a suggestion that the Applicant disclosed the invention to the Gladstone Port Authority before the PCT application date but I consider that the evidence to support this secondary allegation to be so inadequate that it does not warrant further consideration. This applies also to the alleged disclosure to “Access Engineering” referred to by Mr Rochford at paragraph 18 of his declaration.
From Mr Rochford’s declaration it is clear that what he alleges to have been used and discussed at Dalrymple Bay is essentially a known PROK training idler, for example as described in the exhibit BWR1, which was modified by tilting the bearing so that the pivot axis was inclined away from vertical. This is consistent with what is shown in the sketch BWR2 despite Mr Anese’s objections on the disproportionate scale used in the diagram. The test for determining whether an invention lacks novelty is the "reverse infringement test" as set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, (1977) CLR 228 and in that context infringement occurs where "each and every one of the essential integers" of that claim have been taken (Rodi and Wienenberger AG v Henry Showell Ltd, (1969) RPC 367 at page 391). Given the interpretation of the “slewing” and “tilting” means that I have come to above, I find that all the essential features of the invention as defined in claims 1, 3, 7 and 8 are found in the device described by Mr Rochford.
The applicant did not seriously challenge this. Mr Gilmore’s affidavit is mostly concerned with a comparison of the devices made by the respective parties rather that an analysis of the present claims and the alleged prior art. However, in referring to the “tilting means” in claim 1 of the petty patent he states that while the A B Tracker system “does not possess separate tilting means” the “slewing action induced by the “slewing means” in this roller system naturally produces an “effective” tilting motion without the need for independent “means” ”. In saying this I think Mr Gilmore confirms that the A B Tracker (which is said to have features in common with the Dalrymple Bay device) has effectively both slewing and tilting motions. Contrary to Mr Gilmore’s statement I do not find that the present claims are restricted to physically separate slewing and tilting means but if that were the case it could equally be said that the servo mechanism of the tilted PROK idler is “responsive to the lateral misalignment of the conveyor belt, for inducing slewing...” and that the tilted bearing by its nature includes means “responsive to the slewing of the tilt frame to cause the tilt frame and roller to pivot...”.
The affidavit by Mr Dredge in defence of infringement of the invention by the A B Tracker is not helpful to the applicant either because:
Mr Dredge is clearly not a person skilled in the art;
The opponent has effectively sought to disown the interpretation of the claims made by Mr Dredge;
The applicant, not surprisingly, also disagrees with the interpretation contained therein; and
It could not be considered to estop the opponent in the present action.
What it does do however is to place doubt on the validity of some other opinions expressed by Mr Dredge in declarations filed in relation to this case.
I will now turn to the question of prior use. The level of proof required in an opposition case to establish prior use is succinctly stated in Seiller's Application [1970] RPC 103, where Graham, J said at pg 106:
"In my judgment it is necessary that proof of prior user in opposition cases should be very clear."
To this I add that in proceedings before the Commissioner the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523), and that the opponent or informant carries the onus of establishing the grounds alleged. Mr Carrigan referred me to Glenwood Systems v Gooden (1993) AIPC 90-985 in relation to Mr Rochford’s declaration, and in that case the Hearing Officer decided that the uncorroborated evidence of a single declarant was sufficient proof on the basis that:
the evidence was prima facie credible;
there was no contradictory evidence; and
the declarant was an independent witness.
In relation to this the Hearing Officer noted that Seiller's Application and similar cases, eg. Laguerre's Patent [1970] RPC 587, Dunlop Holdings Ltd's Application [1979] RPC 523 and Jarvis v Doman (1984) 3 IPR 300, did not deal fully with the degree of corroboration of an independent witness or declarant. Furthermore, on the second point, that in Dunlop Holdings, supra, Waller, L.J. stated that: "the opponent's evidence, being unchallenged and uncontroverted, must be accepted at face value.".
The circumstances here however are not as clear cut. For example it is far from clear that Mr Rochford is a totally independent party. From Mr Anderson’s declaration at paragraph 7 it is apparent that a commercial relationship existed and may still exist between Mr Anderson’s company and Dalrymple Bay for supply of tracking idlers according to the design allegedly discussed between Mr Rochford and Mr Anderson.
Certainly there is little evidence to challenge the statements put by the opponent’s declarants. Mr Wordsworth provides hearsay evidence in relation to former employees of Dalrymple Bay but even this is questionable in that while both Brownlow and Gregson are said to have indicated that they did not want to be involved in legal proceedings there is nothing in the diary notes of the conversations with Mr Wordsworth to suggest this. On the other hand I recognise that the applicant is at a considerable disadvantage in answering evidence that arises in the opponent’s domain.
The real question with Mr Rochford’s declaration is whether it is sufficient to show that the modified PROCK idler became available to the public through its use at Dalrymple Bay Coal Terminal. Clearly a coal terminal is not a site that is normally open to public access. Mr Rochford says that before 23 October 1990 he discussed the design of the tracking frame with other fitters and turners at Dalrymple Bay and “none of those people were under any obligation of confidentiality to me or to my employer concerning the design of the tracking frame”.
On the matter of confidentiality, I refer to paragraph 43.12 of Ricketson's The Law of Intellectual Property:
"... information ceases to be confidential once it becomes public knowledge. However, it may be a difficult question of fact as to when this happens as confidentiality is not lost simply because the information is known to persons other than its originator. Thus, a lecture delivered to a limited audience may still remain confidential, as in Abernethy v. Hutchinson. Secrecy in this context, therefore, means "relative secrecy" and to fall within the public domain the information must have been published, in the sense of being available without restriction to the relevant public."
In Wykmanshytte's Application at [1961] RPC 180 it was also held that when a person makes something within the privacy of a factory, with employees who are under the normal legal duty to their employer, he is not acting publicly, and that such use is not public use. Similarly in Wood and others v Westaflex (Aust) Pty Ltd 20 IPR 387, it was held that dissemination of samples by a person to other persons within that person's own company did not constitute entry to the public domain of the product. In light of these decisions it is difficult to accept on face value Mr Rochford’s statement that workers at Dalrymple Bay were under no obligation of confidence to their employer. It is something that may have been confirmed by the employer but there is no evidence of this type before me. In any case, the content of the discussions between Mr Rochford and other fitters and turners in relation to Rochford’s tracking frame has not been specified so the exact scope of the alleged communication is not clear.
Mr Rochford says he also discussed the modified PROK frame with Mr Anderson but he does not say when this discussion occurred. Mr Anderson says it was “in 1990” which could place the date either before or after the earliest priority date claimed. Putting aside this point, much depends on the accuracy of Mr Anderson’s statement that he was “not placed under any obligation of confidentiality to Brian William Rochford or any other party”. Again I have difficulty in accepting this statement in the absence of any supporting evidence (apart from Mr Rochford saying that he did not put Mr Anderson under an obligation), particularly as, at the time, Mr Anderson’s company was carrying out belt splicing for the Dalrymple Bay Coal Terminal and subsequently agreed to produce training idlers for them. The question is not whether Mr Anderson believed at the time he was not under an obligation of confidence but whether it was reasonable in the circumstances to conclude that the information was given to him without an obligation of confidence - Coco v. A. N. Clark (Engineering) Ltd. [1969] R.P.C. 41. This applies also to the “other fitters and turners” and has more to do with the conditions of employment at Dalrymple Bay and its contract with Mr Anderson than Mr Rochford’s assessment of the obligation owed by the parties. Ultimately I do not believe I have sufficient evidence before me to resolve this question and given that the onus is on the opponent I find that prior use has not been established.
Having come to this point the issue of the earliest available priority date becomes mute and I do not need to consider whether the claims are fairly based on provisional application PK2959.
conclusion
For the reasons given above I have:
Refused the opponent’s request for the Commissioner to permit service of further evidence under regulation 5.10
Allowed the amendment to the statement of particulars sought by the opponent; and
Found that the opposition fails on all grounds except that:
a)Claim 2 does not define the invention and is not fairly based; and
b) Claim 15 is redundant
I consider that the deficiencies identified can be resolved and accordingly I allow the applicant 60 days from the date of this decision to file amendments to overcome these defects.
costs
I award costs as follows:
In relation to the request under regulation 5.10(4), costs against the opponent;
In relation to the request under regulation 5.9, costs against the applicant; and
In relation to the substantive opposition, no award of costs on the basis that the opposition was only partially successful on the grounds of non-compliance with section 40.
PHILIP SPANN
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : G.R. Cullen & Co., Brisbane
Patent attorneys for the opponent : Intellpro, Patent & Trade Mark Attorneys, Brisbane