Thomson CSF v Schlumberger Holdings Limited

[2001] APO 11

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 18832/97 in the name of Thomson CSF

Title:          Method for controlling the navigation of a towed linear acoustic antenna, and devices therefore.

Action:          Application under Section 36(1) by Schlumberger Holdings Limited for a declaration regarding entitlement to an invention disclosed.

Decision:          Issued            .

Abstract

In the unusual circumstances of this case the Section 36 applicant was seeking a finding on the facts that would exclude the present application from the prior art base for the purpose of its own application 53305/98. That is, the intention was to enliven the provisions of Section 24(1)(b) on the basis of a disclosure in the present application of confidential information.

Found that a determination in relation to Section 24 was not appropriate in the present circumstances but that the finding on the facts in this matter may be relevant in some degree to the Section 24 issue which may arise ex parte during examination of 53305/98. Nevertheless under Section 36 Schlumberger Holdings Limited was found to be jointly entitled to the invention disclosed. The information passed to the patent applicant, while further developed and leading to a somewhat different implementation, nevertheless was a material contribution to the invention. Costa v GR & IE Daking Pty Ltd (1994) 29 IPR 241 applied.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 18832/97 by Thomson CSF and an application under Section 36(1) by Schlumberger Holdings Limited for a declaration regarding entitlement to an invention disclosed.

BACKGROUND

This Section 36 action arises in somewhat unusual circumstances.

Thomson CSF (Thomson) filed an International Application under the PCT (PCT/FR97/00263) on 11 February 1997 with a priority date of 11 February 1996. This application designated Australia but did not enter the national phase in this country although it was pursued elsewhere including the United States (see US 6144342). The situation in Australia however is that by virtue of Section 88 a PCT application designating Australia must be treated as a complete application under the Act. Consequently the application became a complete application in Australia, was allocated the Australian application number 18832/97, but subsequently lapsed because of the failure to enter the national phase.  More importantly in this case is that the application, or rather the published specification filed in respect of it, became part of the prior art base for the determination of novelty as defined at paragraph (b)(ii) of the definition in Schedule 1. This component is relevant to what is known as a "whole of contents" novelty consideration where a invention defined can be found to lack novelty over the specification of an Australian Patent specification that, while published later, has an earlier priority date.

Schlumberger Holdings Limited (SHL) filed its application 53305/98 on 19 December 1997 as PCT/GB97/03507. That application is titled "Control devices for controlling the position of a marine seismic streamer" and claims a priority date of 20 December 1996. The application entered the national phase in Australia, examination was requested and the examiner has reported that the invention claimed lacks novelty in light of Thomson's application 18832/97. In response to that finding SHL submitted that:

"the parts of AU 18832/97 that are relevant to the present claims were included in the cited document by the applicant of the document (Thomson CSF) in breech of a Confidentiality Agreement between Thomson's subsidiary Thomson Sintra Activités Sous-Marines and Greco AS. Greco AS is a company belonging to the present applicant's group of companies."

SHL then sought to invoke the provisions of Section 24(1)(b) by alleging that there is information in 18832/97 made publicly available without consent and, in seeking a way to substantiate that allegation, has brought on the current action under Section 36.

It should be apparent however that the considerations under Sections 24 and 36 are entirely different. I certainly do not believe it is open to me in considering this application to make conclusions in relation to Section 24, particularly as that consideration falls squarely within the Commissioner's examination of application 53305/98. Nevertheless there is some prospect that my findings on the facts in relation to Section 36 may indirectly address the considerations relevant to Section 24 and I will comment further on this as may be appropriate from my findings below.

After an exchange of evidence the matter came to hearing in Canberra on 6 February 2001. Thomson was represented by Mr J Nicholas of Counsel who was instructed by Mr S Berggren, patent attorney of Spruson & Ferguson, Sydney. Mr A Ward, patent attorney of Griffith Hack, Melbourne represented SHL and was assisted by Mr B Stoole a UK patent attorney.

SECTION 36 REQUEST

The request indicates simply that the grounds on which SHL seeks a declaration under Section 36 is that "Thomson CSF is not the rightful owner of the invention disclosed in AU 18832/97". At the hearing however it became clear that SHL claims it is an eligible person only in respect of certain aspects of the disclosure of the present application and that they are seeking a declaration that they are an eligible person, either solely of jointly, in relation to the invention of claim 1 only.

SPECIFICATION

Having not entered the national phase, the present application is only available in its language of origin which happens to be French. It is unfortunate in that respect that the parties to this matter did not consider it necessary to provide me with a suitable translation. However it was agreed by the parties that for current purposes I could rely on the description of the equivalent US patent 6,144,342 and on the translation of claim 1 provided in Mr Stoole's second declaration. I of course have access to the drawings of the current application and the English language abstract which is at least indicative of the subject matter disclosed.

From this material it is evident that the invention relates to the positioning or steering of towed linear acoustic arrays or streamers which are used typically for marine seismic exploration or for defence purposes. More specifically it relates to the use of winged "birds" that are attached along the length of each streamer to produce a controlled hydrodynamic force in any given direction relative to the axis of the streamer, that is, to control depth, heading and shape of the streamer. In the main embodiment each bird is rotatably attached around the longitudinal axis of a special connecting member which joins together lengths of the streamer. The birds include two transversely opposed wings or hydroplanes, the inclination of which can be independently controlled by rotation of the wings about an axis transverse to the bird body. Flaps on the trailing edges of the wings are further used to effect rotation of the bird around the connector and hence position the wings for the steering effect required. Control signals and electrical power is transmitted inductively to the bird which is detachable so that it can be readily removed when the streamers are recovered.

According to Mr Stoole claim 1 in translation reads:

"A method for controlling the navigation of a towed linear acoustic antenna, in which one fixes on such an antenna (103) "birds" (100) intended to be subjected to a hydrodynamic force which is transmitted to the antenna to control its shape, its depth and its heading, characterised in that one transmits to the birds without electrical contact control signals to turn them freely around the axis of the antenna so as to orient the said hydrodynamic force in any determined direction around the longitudinal axis of the antenna."

DECISION

Section 36(1) enables a person to make an application that the nominated person is not an eligible person in relation to an invention disclosed in a specification filed in relation to a patent application but that some other person is an eligible person in relation to the invention. In this case SHL is claiming that it is an eligible person in relation to part only of the matter disclosed in the present application.

Section 36(1) indicates that the Commissioner must be satisfied that the nominated person is not an eligible person before declaring otherwise. The onus rests with the Section 36(1) applicant to clearly establish to the Commissioner’s satisfaction that the nominated person is not entitled to the invention and that some other person is entitled either solely or in part. In deciding the matter the Commissioner is entitled to act on any material which is "logically probative" and 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 Holding Ltd's Application (1979) RPC 523).

In Row Weeder Pty Ltd v Nielsen and Others 39 IPR 400 the delegate considered a number of earlier decisions of the Commissioner (including Harris v CSIRO 26 IPR 469 to which I was referred) 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).

The basic facts of the present matter appear from the evidence to be this:

1. Geco-Prakla (Geco) began considering the design of a new kind of streamer control device or bird in 1993 for use in the seismic operations of affiliate companies. At that time the bird used by those companies is said to be of the type disclosed in EP193215 which provided only depth control by using a bird weighted so that it remains horizontally aligned and permitting the streamer to rotate within it. Geco-Prakla is a subgroup of companies within SHL

1. Geco produced a Feasibility Report (Exhibit "E") in late 1993 which discussed the overall requirements for a new bird design giving horizontal steering. The report discusses design alternatives including freely rotating and non-rotating birds with two or four wings. Design Alternative 1 is a freely rotating four wing bird with wing pairs operated in parallel. Design Alternative 2 appears to be a two wing bird either rotating or non-rotating where the wing pitch angles are independently controlled. In both cases the birds are built into a modular bird section to be fitted between streamer lengths. The bird sections include along their length the bird body with detachable wings, hydrophones, depth and heading sensors, electronics packages and floats.

1. Geco produced a further document entitled NESSIE-4 Birds Feasibility Study dated 31 January 1995 (Exhibit "B"). This report describes a new bird design concept including horizontal control and integration of the bird into the streamer. It includes theoretical discussion and the results of model testing with the recommendation:

"that the two winged model is optimal and should be chosen for further development. The next stage will be to incorporate servo mechanisms for the wing angles and to develop a control system."

and

"A two winged implementation, non-rotating relative to the cable, probably have the best potential for cost efficiency with respect to mechanical reliability, storage, automatic handling and manufacturing".

Also included in this disclosure is the statement that:

"The simple mechanical solution described in this report is a two winged bird with independent control of each wing. The wings are fixed relative to the streamer and so both wings and streamer would be rotated together until the desired direction of lift is achieved. Then both wings work together to push the streamer in that direction."

Figure 2.2 on page 10 of the document depicts the principle of simultaneous vertical/horizontal steering for a two wing solution.

1. An internal document (Exhibit A) was produced around this time dated by Simon Bittleston and Knut Rasmussen on 17 February1995. Mr Stool says this was prepared for the IP law department of Geco Prakla and it appears to be a proposal for a patent application. It indicates that the prior art only implements vertical control and Claim 1 in this paper reads "A bird mechanism which provides the means to steer the streamer both horizontally and vertically." While referring to two, three or four wings, the two wing version is described in detail in similar terms to Exhibit B.

1. Several contractors were approached to determine the feasibility of engaging one of them for the development and manufacture of the birds. A confidentiality agreement said to cover the subsequent exchange of information was signed on 11 April 1995 between Thomson Sintra Activités Sous-Marines (TSASM) and Geco A.S. A clause of this agreement indicates that the parties do not have an obligation to each other in relation to information that the receiving party can prove, inter alia, has come into the public domain, is already known to the receiving party or is independently developed in good faith by the employees of the receiving party. TSASM was a subsidiary of Thomson CSF. In July 1996 TSASM became Thomson Marconi Sonar SAS.

1. The parties met on 4 May 1995 near Paris and the NESSIE-4 Feasibility Study was given to TSASM. Soon after TSASM produced a report dated 24 May 1995 of which Mr Moresco says:

"Our underwater system and streamer experience associated to our own technical analysis of the problem resulted into an original bird architecture different from the one recommended by Geco-Prakla."

Mr Moresco defines the main characteristics of TSASM's design as:

-no need to use specific streamer sections for the birds, which can be attached to the streamer connectors

-minimization of the number of electro-mechanical bird components located in the streamer

-improvement in the bird's frontal strength by adding a composite material

-possibility of rotating the bird around the streamer

-complete hydrodynamic optimization of the bird

-electronics and control servo-mechanisms located in the bird's body, accessible and detachable

While it is agreed that the Nessie 4 Feasibility Study was passed to TSASM at the May meeting there is disagreement about whether the Feasibility Report mentioned at paragraph 2 above was also communicated. In the absence of conclusive evidence I will proceed on the basis that the Report was not communicated to TSASM.

1. Further information was passed between the parties but no commercial agreement was reached. Subsequently each of the parties filed patent applications as indicated above.

Before further consideration of the facts in this matter I should point out while the confidentiality agreement said to apply between the parties and its possible breach may be highly relevant to the Section 24 issue, it is not directly relevant to the determination of the matter under Section 36. Hence Thomson's reliance on a number of prior art disclosures to counter SHL's claims were misguided in the current context. The authorities are quire clear that novelty and inventiveness are not relevant to a determination of the rights to an invention but rather, as in the words of the Deputy Commissioner in CSIRO v Gilbert 31 IPR 67, it involves "an objective assessment of the contribution simpliciter to the invention". As such "invention" in Section 36 includes an alleged invention.

In the present circumstances it is clear that the work produced by TSASM was done in response to inquiries made by Geco. There is no evidence that TSASM were working independently on the same problem and it is not at all clear what understanding Mr Moresco and others at TSASM had concerning streamer steering systems prior to the time they received the NESSIE-4 Feasibility Study. Consequently I can only find that the further work and development undertaken by TSASM was directly based on the preliminary tests and assessments made by Geco. This work was not as insubstantial as Thomson would like to suggest and included:

-       horizontal and vertical (depth) steering
-       two wing bird with independent control of each wing
-       bird powered from the streamer

-non-rotating bird integrated with streamer with detachable wings although as "possibilities" attached units and freely rotating birds are discussed.

Certainly, as Thomson's declarants indicate, TSASM amended and significantly added to the concept provided by Geco, particularly in specifying that the birds could be attached to the streamer's connectors. However what I read in the evidence such as TS.ASM 95/S/S/SCF/CC/159 - GM/J is that TSASM was involved in adapting and developing the general concept and requirements proposed by Gecko and, in fact, this was the service that Geco had been seeking from prospective sub-contractors. Consequently the situation appears to be similar to that found in Costa v GR & IE Daking Pty Ltd (1994) 29 IPR 241 where joint inventorship was found between the person who had a general idea of how to solve a particular problem, but could not give effect to those ideas, and the person who arrived at the particular solution.

There is no doubt in my mind then that Geco has made a material contribution to the invention described in the specification and this perhaps is most significantly represented in the adoption of the bird concept with two opposite and independently or separately controlled wings which is clearly described in the description at page 7. While suggesting improvements TSASM actually indicated in their response to Geco that "the two wing system seems indeed to be the best compromise".  Hence I cannot agree with Mr Jourdain who concludes in his declaration that the application "derives no inspiration, even in a general way, from this study".  I would add that there appears to be no indication in the evidence that the two wing independent control configuration was known at the time and I find the submission that this feature is disclosed in US 4912684 (Fowler) or US 3774570 (Pearson) to be quite incorrect.

As the chain of entitlement between SHL and Geco and its employees has not been challenged I consequently find that SHL is jointly entitled to the invention described in patent application 18832/97. I do not believe however that I can safely conclude to a reasonable level of satisfaction that SHL is entitled solely to the invention as defined in claim 1 of the application. While the possibility of a rotating bird is suggested in the NESSIE-4 Feasibility Study, this option seems to be rejected with the thrust of the document very much being a non-rotating bird (see particularly paragraph 1.2) and this is in fact the clear recommendation for further study at page 3. Hence I have some doubts that the invention as defined in claim 1 could have arisen without the contribution of TSASM who concluded that a freely rotating bird would in fact meet the requirements of the project.

In relation to Mr Nicholas's submissions on onus, I would say that once SHL established that the Feasibility Study had been handed to TSASM, and Thomson had agreed that this had occurred, it became incumbent on Thomson to show that the invention of 18832/97 was made independently of SHL's contribution. The closest that Thomson comes is in Mr Lardat's declaration where he says that TSASM "offered through different proposals an innovative technology already validated for military purposes". If the TSASM's bird concept existed before the approach from Geco I would think that fact would be relatively easy to demonstrate. However Thomson does not even provide a clear assertion of this and consequently I am satisfied that SHL shares entitlement in relation to the application.

Having reached this conclusion I will return to the remedy that may be available to SHL who is not so much interested in its entitlement to the present application but to establishing the validity of its own application 53305/98. It would seem that having filed its PCT application on 19 December 1997 designating Australia, SHL has filed a patent application that may satisfy the provisions of Section 24(1)(b) and Regulation 2.3(2). That is, it was an application for a standard patent filed within 12 months of the publication of the current application on 21 August 1997. Section 24 provides that any information made publicly available in those circumstance must be disregarded for deciding if an invention is novel or involves an inventive step if it was made available without the consent of the nominated person or patentee or predecessor in title. I have found, and the parties acknowledge, that the information contained in the Nessie 4 Feasibility Study was passed from Geco to TSASM. Thomson say this information was either not disclosed in its specification, is excluded from the confidentiality agreement because it was already in the public domain or, by implication, that it was excluded because it was already known to TSASM at the date of the agreement. However I have found that the feature of two independently controlled wings is disclosed in the specification and that there is no evidence to suggest that it was known publicly, or to TSASM, before 4 May 1995. Hence from my findings on the facts it may be possible to arrive at a conclusion, at least prima facie, that information was made available in the publication of the present application without the consent of Geco or SHL and in contravention of the confidentiality agreement.

However, as I have previously indicated, this is not a matter before me for determination and any conclusions must be left to the Commissioner in the examination of 53305/98. Nevertheless in that determination the Commissioner can, at the request of SHL, make reference to the evidence filed in this case and to my findings. The parties should note in this regard that the Commissioner's consideration or examination is ex parte but that in the event that 53305/98 is accepted, Thomson will have the opportunity to oppose the grant of a patent inter parte including, if relevant, on the grounds that the invention claimed was not novel and that Section 24(1)(b) did not apply. Such a forum would provide a far more appropriate opportunity to consider the issues sought to be raised in this matter than is available in a determination under Section 36.

CONCLUSION

I have found that SHL is jointly entitled to the invention disclosed in patent application 18832/97. In the unusual circumstances of this case and given that 18832/97 has lapsed it is unlikely that a declaration as to entitlement will serve any useful purpose. However to the extent Section 36(3) may be available to the parties, I allow SHL 60 days from the date of this decision in which to file, and serve on Thomson, proposed wording for a declaration consistent with this decision. If SHL files and serves a proposed declaration in this time, and in the absence of agreement between the parties, I will seek submissions from Thomson and indications whether or not the parties wish to be heard further on the matter.

COSTS

While the basis for SHL's case was unusual and was amended or clarified significantly at the hearing, Thomson have rigorously contested all SHL's claims. Consequently I believe an award of costs is appropriate and, since I have found SHL to be jointly entitled, I award costs against Thomson CSF.

Philip Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :   Spruson & Ferguson, Sydney

Patent attorneys for the Section 36 applicant   :   Griffith Hack & Co, Melbourne