Vincent Joseph Collins & Maryann Collins v William Robert McGilvray

[2002] APO 23

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Petty Patent  :          No. 723540 in the name of Vincent Joseph Collins & Maryann Collins

Title:          Extraction of Essential Oil from Cypress Pine

Action:          Application under section 69 for an extension of the term of the petty patent; a notice by William Robert McGilvray under section 28 regarding the petty patent; hearing.

Decision:          Issued           

Abstract

The invention concerns a method for producing a blue coloured oil by obtaining the oil from a mixture of the bark and wood of the particular species Callitris intratropica.

Mr McGilvray, in challenging the validity of the petty patent, relied on statements of his work and that of an associated company in producing oil from C. intratropica, and various documents including extracts from several text books.

A second declaration by Mr McGilvray was admitted into the proceedings on the basis that it could be viewed as submissions provided before the hearing given that he did not appear. Further material filed by McGilvray after the hearing was not seen as relevant to the validity questions and did not require the application of s.28(3) provisions.

The claimed invention was found to be novel and to involve an inventive step in the light of the material in evidence.

Mr McGilvray's evidence suggested a prior use of the method of the claimed invention by either himself or his company.  However, there was no corroborative evidence about such activity to confirm either the nature of any method used involving C. intratropica before the priority date, or whether any such use was such as to provide information made publicly available through doing an act anywhere in the patent area.   Other documents in evidence were found not to disclose the invention.

Costs were awarded against Mr McGilvray and in favour of the patentees.

As no ground of invalidity had been established to the petty patent, an extension of term of petty patent 723540 was granted.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No. 723540 by Vincent Joseph Collins & Maryann Collins, application under section 69 for an extension of the term of the petty patent and a notice by William Robert McGilvray under section 28 regarding the petty patent.

BACKGROUND

1. Petty patent 723540 arose as application 22609/00 filed in the names of Vincent Joseph Collins & Maryann Collins ("the patentees") on 24 March 2000 and being a divisional application based on standard patent application 75075/98 filed on 8 July 1998.  The petty patent was sealed on 31 August 2000 and numbered 723540.  The petty patent claims priority through patent application 75075/98 from a provisional application, namely PO7783 filed on 8 July 1997.  Thus the earliest priority date of the claims of the petty patent is 8 July 1997.  Application 75075/98 has been accepted and has been assigned number 742711.

2. The patentees applied for an extension of the term of the petty patent on 27 July 2001. On 31 July 2001 Robert McGilvray ("McGilvray") filed a notice under s.28 of the Patents Act 1990 ("the Act") with evidence. The patentees filed evidence in response in the matter on 7 December 2001. On 14 January 2002, McGilvray filed a letter and further evidence in the matter at the Patent Office.

3. On 7 December 2001 the patentees also filed a request to amend their patent specification under s.104 of the Act. A copy of the amendment proposal was given to McGilvray who was afforded an opportunity to make comments on the proposal by 12 January 2002. No comments were received on the amendment request. The amendment request was considered by an examiner and directed to advertisement (per reg. 10.5(2)). The advertisement appeared in the Official Journal on 7 February 2002.

4. A hearing for the s.28 matter was set for 15 January 2002 in Canberra. Mr B Nugent, patent attorney of Griffith Hack of Brisbane, appeared by telephone for the patentees. Mr McGilvray did not appear or provide written submissions as he was entitled to do. McGilvray did not indicate in his letter filed on 14 January 2002 whether or not the material he filed that day was to be considered as "written submissions".

5. Although the Patents Amendment (Innovation Patents) Act 2000 (No.140, 2000) repealed certain provisions in the Act relating to petty patents such as s.28 and s.69, by virtue of the application, saving and transitional provisions of Schedule 2 of the amending act, the "old law" continues to apply subject to some exceptions. The effect for present purposes is that the provisions of s.28 and the extension of term provisions of s.69 continue to apply.

   THE SPECIFICATION

6. The invention is entitled "Extraction of Essential Oil from Cypress Pine".  The following introductory portion from the specification explains the invention and its background.

   "Field of the Invention
   The invention relates to methods for producing an essential oil. The oils produced by the methods have been found to contain compounds of commercial worth, and the invention also relates to methods of producing those compounds.

   Background of the Invention
   Essential oils such as that of tee tree are known in the art and preparations containing them find use in perfumery and medicinal applications. Such oils are particularly useful in aroma therapy due to their desirable aromas and in the manufacture of cosmetic or body care products. Essential oils may also have anti-microbial properties as well as wood preservative uses.

   In recent years, there has been a trend away from synthetic products toward naturally derived substances. This has resulted in growth in the demand for essential oils as well as the demand for variety in such oils.

   Summary of the Invention
   The present invention provides a method of producing a blue, guaiazulene-containing oil comprising the step of obtaining the oil from a mixture of the bark and wood of Callitris intratropica.

   Callitris intratropica is a species of Cypress pine commonly grown in plantations located in warmer climates such as that of the Northern Territory, Australia.

   It has been found that by using the bark and wood of Callitris intratropica the oil obtained is coloured blue. A blue oil is not obtained when oil is obtained from the bark or the wood of Callitris intratropica alone.  [Emphasis added]

   The blue colour of the oil enhances the suitability of the oil for various applications, such as the use of the oil in aroma therapy, or in the manufacture of cosmetics and body care products.

   The oil will typically be obtained from the bark and wood by distillation and usually by a hydro-distillation or steam distillation method. Preferably, cohobation will be used during the distillation.

   In one embodiment, the oil is obtained from the bark and wood by hydro-distillation or steam distillation, and the miscible components of the oil present in the water collected during the distillation process (the condensate water) are extracted from the condensate water. Typically, the miscible components of the oil are extracted from the condensate water by solvent extraction using a suitable organic solvent.

   Guaiol is found in oil obtained from the wood of species of the genus Callitris. The oil obtained from the wood, or the bark and wood, of Callitris intratropica has a particularly high guaiol content. Guaiol finds use in perfumery compositions for its fixative properties. Guaiol is a precursor of guaiazulene and it is believed the blue colour in the oil produced in accordance with the second or third aspects of the present invention is due to the presence of guaiazulene or a derivative thereof in the oil. Guaiol and guaiazulene are both azulene compounds and more particularly bicyclic sesquiterpenes (Freiser, L.G. and M., Organic Chemistry, 3rd Ed., pp 915-948, Reinhold Pub. N.Y. 1956.).

   The fact that a blue coloured oil is not produced when oil is obtained from the bark or from the wood of Callitris intratropica alone, or when oil is obtained from the wood of other species of the genus Callitris alone, but is produced when oil is obtained from a mixture including the bark of Callitris intratropica and the wood of one or more species of the genus Callitris, indicates that the bark of Callitris intratropica provides a catalytic component which catalyses the conversion of guaiol to guaiazulene or alternatively, contributes in another way to the conversion such as by altering pH so that the conversion occurs during the oil extraction process."

7. The specification thus makes it clear that the invention concerns the production of a blue coloured oil from a mixture of the bark and wood of the particular species Callitris intratropica, which is more commonly called Northern Cypress Pine.

8. The claims of the granted petty patent are as follows:

   "1.       A method of producing a blue, guaiazulene-containing oil comprising the step of obtaining the oil from a mixture of the bark and wood of Callitris intratropica.

   2.        A method according to claim 1, wherein the oil is obtained from the bark and wood by steam distillation.

   3.        A method according to claim 2, wherein miscible components of the oil present in water condensed during the distillation are extracted from the water by solvent extraction."

9. The amendment proposed by the patentees would, if allowed, effectively restrict the claims to present claims 2 and 3.  For the purposes of this matter I will consider the current granted claims.

   SECTION 28 NOTICE AND EVIDENCE FILED

10. There is no document titled "Notice under s.28" but in his statutory declaration filed on 31 July 2001 McGilvray asserts in paragraph 25 that the claims do not comply with s.18(1)(b) of the Act. This refers to a relevant ground of invalidity available under s.28(1)(b), namely that a person asserts that the petty patent is invalid on the ground that "the invention is not a patentable invention because it does not comply with section 18 (1)(a) or (b)". Thus the McGilvray declaration inherently incorporates the required notice under s.28. Section 18(1)(b) refers to the particular requirements that a patentable invention is an invention that so far as claimed in any claim is novel and involves an inventive step.

    McGilvray evidence

11. The McGilvray declaration ("McGilvray's first declaration") included the following exhibits which I briefly identify:

WRM-1	McGilvray's Curriculum vitae
WRM-2	"Australian Blue Cypress Oil" sheet by 'The Australian Essential Oil Company Pty Ltd" (Undated (old company letterhead))
WRM-3	"A Research of the Pines of Australia" [1910],  pp 60 - 66
WRM-4	"The Essential Oils", Vol 4,  pp264, 276
WRM-5a	"The Essential Oils", Vol 4,  pp302, 314, 319
WRM-5b	Extract re "Camphor Oil"
WRM-6a	"The Essential Oils", Vol 2,  pp127 - 131 re "Azulenes"
WRM-6b	"The Essential Oils", Vol 2,  pp278, 279 re "Guaiol"
WRM-6c	"The Essential Oils", Vol 2,  pp134 - 137 re "Guaiazulene"
WRM-7	"Biology of Plants", 3rd ed,  pp641, 489, 490, 537 - 541

Patentees' reply evidence

1. The reply evidence comprises two declarations.  One is by Terry Christopher Knight dated 6 December 2001 ("Knight's first declaration").  Mr Knight, now a consultant, had supplied an earlier declaration in relation to the petty patent application during its prosecution prior to patent grant.  With his latest declaration he includes the following exhibits:

TCK4	Copy of Knight's earlier declaration dated 5 May 2000 (less exhibits)
TCK5	Copy of McGilvray's declaration of 7/12/01
TCK6	"The constitution of 'Callitrol' ", Trikojus and White (1932), pp 284 - 299

1. The second declaration is by Brendan John Nugent dated 7 December 2001 with the following exhibits:

BJN1	Copy of ASIC search re "Australian Cypress Oil Pty Limited"
BJN2	Copy of ASIC extract re "Australian Cypress Oil Co"
BJN3	Copy of ASIC search re "Australian Cypress" words

1. Regarding the Knight declaration dated 5 May 2000 it indicated the following exhibits:

TCK1	Copy of petty patent application 22609/00
TCK2	"Australian Blue Cypress Oil" sheet by (The) "Australian Essential Oil Company" (Pty Ltd)
TCK3	"A Research of the Pines of Australia"
TCK4	Copy of McGilvray's declaration filed under s.27 re application 75075/98

Further Evidence/Submissions from McGilvray

1. On 14 Jan 2002 McGilvray filed a two page covering letter and a further statutory declaration by himself ("McGilvray's second declaration") dated 10 Jan 2002 with the following exhibits:

WRM-1	Copy McGilvray letter to Mr Bodkin dated 6/12/01
WRM-2,3A & 3B	Copy fax Bodkin to McGilvray, etc dated 6/12/01
WRM-4	Copy letter IPAustralia to McGilvray dated 16/11/01
WRM-5	Copy letter by fax Griffith Hack to IPAustralia dated 8/11/01
WRM-6	Title page of "Traditional Bush Medicine" (1988)
WRM-7	Appendix I page of "Traditional Bush Medicine"
WRM-8	Appendix II page of "Traditional Bush Medicine"
WRM-9	Appendix III page of "Traditional Bush Medicine"
WRM-10	"Traditional Aboriginal Medicines in NT " (1993)
WRM-11	Company extract re "Blue Cypress Holdings Pty Ltd"
WRM-12	Extract re V Collins shares "Blue Cypress Holdings Pty Ltd"
WRM-13	NICNAS summary & report re NA/507.
WRM-14	Page 67 of "Traditional Bush Medicine"

1. Although the initial procedures for dealing with this matter did not extend any right to McGilvray to file further evidence, I indicated at the hearing that I would admit McGilvray's second declaration into the proceedings.  I did so on the basis that it could be viewed as submissions provided before the hearing by McGilvray and as allowed by the hearing notice, given that he was not appearing.  Save for the matter mentioned in the following paragraph, in the main the evidence did not appear to comprise material of which the patentees would not have been aware or unable to address at the hearing.

2. During the hearing I noted portions of McGilvray's second declaration filed on 14 January 2002 which prima facie caused the veracity of Mr Knight's evidence, or aspects of it, to be brought into question.  Without forming any conclusions on this issue or the evidence generally I indicated that I felt obliged, from a natural justice perspective, to allow the patentees an opportunity to respond to this material either by submissions and, if thought necessary, by responding evidence from Mr Knight or others.  Whilst submissions were made to it at the hearing I indicated I would still allow the patentees a short period to respond by way of evidence if they so decided.  This was confirmed to the parties by letter dated 15 January 2002.  I allowed the patentees 21 days to provide any evidence in response to paragraphs 6 to 12 of McGilvray's second declaration concerning Mr Knight.  A copy of any such evidence was to be given to Mr McGilvray.

   Further Evidence/Submissions from the patentees

3. On 31 January 2002 the attorneys for the patentees filed a statutory declaration by Terry Christopher Knight dated 30 January 2002 without exhibits ("Knight's second declaration").  A letter with brief submissions by Mr Nugent accompanied the declaration.

   THE EVIDENCE AND SUBMISSIONS REGARDING INVALIDITY

4. Given the nature of the evidence filed I believe it is appropriate to indicate in some detail the position advanced by McGilvray alleging invalidity grounds and the patentees' response.

   Summary of McGilvray's evidence and submissions

5. In his first declaration, McGilvray indicates that he is a director and chairman of the Australian Cypress Oil Pty Limited ("ACO").  His curriculum vitae lists as academic qualifications "Certs Ind. Chemistry, Metallurgy - Wollongong Technical College".  He states that in 1987 he "began research into the essential oils able to be produced from the various species of the Australian native pine Callitris, both from the leaves and the woody parts of the tree".  This work lead to negotiations commencing, in 1995, with parties to exploit plantations of Callitris intratropica in the Northern Territory.  He says that the essential oil known as Blue Cypress Oil is extracted from Callitris intratropica.  In paragraphs 4 to 6 he states:

   "4.  In 1995, ACO was formed to develop and commercialise Blue Cypress Oil as a result of my research and development since 1987. Commercial distribution of Australian Blue Cypress Oil by ACO began soon after pilot-scale production, in steam distillation vessels designed by me, began in about February 1995. Invariably, the Blue Cypress Oil produced during that period was steam-distilled from chipped and comminuted whole trunkwood of Callitris intratropica, comprising both wood and bark, as supplied to me from various plantation sources in the Northern Territory.

   5.  Samples of Blue Cypress oil were manufactured into aromatherapy/cosmetic products by Jurlique Pty Ltd … ("Jurlique") in South Australia, and I was informed by Dr. J. Klein, Managing Director of Jurlique that were [sic] made available by Jurlique to Olympic athletes and officials at the Atlanta Olympic Games in July/August, 1996.  Samples of one of those and several other products dated January 1997 are held by me. Samples of Blue Cypress Oil were distributed by The Australian Essential Oil Company to outlets in Australia, and to many parts of the world, commencing in early 1995 and continuing to this day.

   6.  Now exhibited to me and marked WRM-2 is a true copy of a document which I authored in 1995 entitled "Australian Blue Cypress Oil". The final version of this document was created by me on 25th September, 1995, and has been sent by mail, with and without samples, and by fax and email to many parts of the world, as well as widely circulated within Australia by The Australian Essential Oil Company. Allowing for company stationery updates, I am aware that this article is still in use today by The Australian Essential Oil Company Pty Ltd, a company of which I was Chairman until May 2001. Earlier versions of this document were circulated from early March 1995 to September 1995, but the descriptive wording within this document marked WRM-2 has not been changed since the version generated on 25th September, 1995."

6. I take it from these quoted paragraphs, there being no elaborating submissions from McGilvray, that he asserts that what he calls "Blue Cypress Oil" had been produced by ACO "from chipped and comminuted whole trunkwood of Callitris intratropica, comprising both wood and bark" by a steam-distillation process, and that products using this oil had been made and distributed well before the priority date of July 1997.

7. In paragraphs 7 to 23 of his first declaration McGilvray refers to portions of three textbooks and an excerpt from an internet website.  He discusses firstly issues about the terms "wood" and "timber" used in the so-called "Baker & Smith Article" of exhibit WRM-3, and secondly issues about the properties or components of various oil products.

8. Regarding the exhibit WRM-3, chapter XVI at page 60 is entitled "The Phenol, and the determination of the oil from Callitris timbers".  The text commences:

   "The characteristic odour of Callitris wood is due principally to the presence of a phenol which is retained in the oily portion of the distillate when the wood is steam distilled.  ….  The timber of C. glauca was taken for the purposes of this investigation, but the wood of most other species, such as C. calcarata, C. intratropica, &c., would have answered just as well, and have given the same results."

   There follows discussion of the distillate from various Callitris species but not C. intratropica.  Chapter XVII is entitled "The occurrence of Guaiol in the timbers of Callitris species".  In paragraph two on page 63 it states:

   "To obtain the volatile constituents, the ordinary methods of steam distillation were employed. The log was cut into planks, and these were then run through the planing machine, and the shavings thus obtained were utilised for the purpose."

   The chapter continues by discussing the investigation of oil from C. glauca  and C. Macleayana referring to the presence of Guaiol.  On page 66 it refers to C. intratropica thus:

   "When cut, the Guaiol was so pronounced a constituent that it crystallised upon the planed surface of the wood itself, and sufficient material was obtained to chemically identify it as Guaiol; so that it was not even necessary to steam-distil the wood." 

   Chapter XVIII on page 66 entitled "Bark" refers to the "bark of the Callitris in a general sense".

1. Regarding exhibit WRM-3 McGilvray says this in paragraphs 9 to 11:

   "9.  The terms "wood" and "timber" are used interchangeably in the Baker & Smith Article. I note the photograph of a transverse section of Callitris timber on page 65 of the Baker & Smith Article, which shows the wood and the bark, yet does not mention them as separate entities. When I read the terms "wood" and "timber" in relation to distillation of the woody material of plants, and there is no specific mention of the removal of the bark from the woody biomass prior to the comminution of that material in preparation for distillation, I understand the terms to mean that bark, sapwood, and heartwood are included in the biomass for distillation.

   10.  In my opinion other persons of ordinary skill in the distillation of essential oils would have the same understanding of the terms "wood' or "timber".

   11.  Furthermore, in my opinion, if an essential oil distiller is desirous of distilling other than the whole wood, he will specify either "debarked wood" or "heartwood only", or "bark only", or "free from compostable green matter", depending upon the manner of processing, the intended outcome, and the desired properties of the essential oil."

2. McGilvray concludes his first declaration with these paragraphs:

   "24.  Hence, when I read the pages cited in paragraphs 7 to 23 inclusive above, I understand that the processes leading to the formation of the various azulenes, including but not limited to guaiazulene, have been well researched, are well understood, and have been widely published for many years and since at least 1956. I further understand that the formation of "natural" azulenes and the formation of "synthetic" azulenes is effected by the same physical and chemical processes, either singly, in combination, or in sequence, and that the levels of "natural" azulenes dehydrogenated during steam distillation will be limited by the availability and/or intensity of naturally present reactants or catalysts.

   25.  When I read the Petty Patent in conjunction with the foregoing paragraphs and pages cited in those paragraphs, I assert that neither Claim 1 nor Claim 2 nor Claim 3 complies with paragraph 18(1)(b)(i) or 18(1)(b)(ii). Steam distillation and solvent extraction are processes well known for more than one hundred years and widely used for the recovery of essential oils from both wood and bark, either prepared together or separated and distilled individually, leaves, seeds, fruits and some flowers of species in all parts of the world."

   Summary of the patentees' reply evidence

3. In Knight's first declaration he exhibits as TCK4 a copy of a statutory declaration by him and dated 5 May 2000 filed during the examination of the petty patent application.  This earlier declaration was in answer to s.27 material filed by McGilvray to the parent application 75075/98.  In paragraphs 1 and 2 of the earlier declaration Knight states his qualifications and experience, namely qualifications as a "pharmaceutical chemist in Melbourne in 1962", and experience in that field in Victoria and, since 1971, the Northern Territory.  He indicates "specialised knowledge in plant chemistry and pharmacognosy especially in relation to aboriginal drug use" and that he "co-authored and had a lead role in the publication of 'Bush Medicine - an Aboriginal Pharmacopoeia' (Greenhouse, 1988)".  He indicates particular familiarity with Callitris intratropica.

4. Knight disputes McGilvray's position regarding the Baker & Smith Article and issues around the terms "wood" and "bark".  In his first declaration at paragraph 2 he states:

   " … Mr McGilvray also asserts that since there is no specific mention of the removal of the bark from the woody biomass, it must have been retained. To the contrary, it is such a common practice all explicit statement to this effect is not necessary and, in any event, the context of the words within the document as discussed in my previous Declaration suggest otherwise. A skilled practitioner in the art of distillation will ensure that the process used is optimal, and to do this material which would not be expected to contain quantities of the desired volatile substances is excluded from the still charge. Bark would normally be excluded from a charge since it is widely accepted that bark rarely contains significant quantities of volatile substances. This is common practice amongst distillations carried out to isolate natural products and, in particular, essential oils. Since this is so common, contrary to the view expressed by Mr McGilvray in paragraph 11 of his Declaration, I believe that the essential oil distiller would not specify "debarked wood" or any of the other alternative words used by Mr McGilvray."

5. In paragraph 3 Knight dismisses McGilvray's comments regarding the use of the bark as well as the wood of Camphor trees for oil distillation as of any significance to obtaining an essential oil from the genus Callitris.

6. In paragraph 4 Knight contrasts the disclosure in the Baker & Smith Article of obtaining oil with the present invention thus:

   "4.  Baker & Smith describe a steam distillation of wood from Callitris glauca in which a dark-coloured, somewhat thick viscous and heavy oil was obtained. This is described in the third paragraph on page 60 of the article, and is a much different oil to the blue oil described and claimed in the petty patent. It is said to contain a phenol, which is described in detail on pages 61 and 62, as well as guaiol, as indicated on page 64. A further distillation of the oil produced in the initial steam distillation, described in the paragraph bridging pages 60 and 61 at high temperature (255-265°C) produces a blue oil fraction. Likewise, heating the crystals which separate from the oil with zinc chloride at 170-180°C produces a blue oil - see page 64. These two results indicate that guaiol is present, as concluded in the final full paragraph on page 64. However, the requirement of an additional step of heating the oil to very high temperature or reacting it with zinc chloride means that the process is different to that described and claimed in the petty patent. That process derives a blue oil from a mixture of the bark and wood of C. intratropica when subjected to a steam distillation. In Baker and Smith a dark-coloured oil is obtained from the wood of the tree when it is steam distilled and, upon further treatment, a blue oil can be obtained. The difference in the process steps required to produce the blue oil underlines that the bark of the tree is not present in the process of Baker & Smith."

7. In paragraph 5, the final paragraph, Knight refers to his exhibit TCK6.  This exhibit refers to the earlier work of Baker & Smith and as Knight says, "Trikojis and Whyte took the chemical analytical work further, necessarily starting with the Baker & Smiths methods."  Knight notes that the more recent work refers to "[s]havings of logs of C. glauca" and in the method described on page 289 indicates that "The wood, after removal of the bark, was cut into shavings …", although Baker & Smith used the terminology "shavings of planks".

   Summary of McGilvray's further evidence and submissions

8. This evidence of McGilvray challenges two aspects of Knight's evidence.  Firstly, he draws attention to various pages of the text "Traditional Bush Medicine" noting that Knight is not listed in any research teams but only credited as "Principal Photographer".  Secondly, he notes that the summary report and pages of the full public report prepared by NICNAS in relation to an assessment certificate for Callitris intratropica Oil sought by Blue Cypress Holdings Pty Ltd (per exhibit WRM-13) uses expressions such as "… extracted from wood chips …" and "… steam distilled from the wood …" without any reference made to "bark".  Thus McGilvray says that "the terms Mr Collins and his former partners in Blue Cypress Holdings Pty Ltd use to describe the source of the essential oil [for the project] are the same terms as those used interchangeably by all persons skilled in the field distillation of essential oils".

9. In relation to exhibit WRM-13, I note that this is a report by the body NICNAS (National Industrial Chemicals Notification and Assessment Scheme) and thus the terms used may or may not reflect the descriptive language of Mr Collins.  Also there is nothing to clearly link the report to the oil produced by the specific method claimed in the petty patent.

   Summary of the patentees' further evidence

10. Mr Knight in his second declaration discusses in some detail the project leading to the publication "Traditional Bush Medicine - An Aboriginal Pharmacopoeia".  He indicates that as far as the materials described and intellectual property is concerned, the aboriginal communities of the Northern Territory are acknowledged as the authors.  The illustration content authors included himself.  He says the title page credits were not authorised by him.  He explains that his role "was difficult to describe succinctly other than perhaps as 'co-author' along with numerous other (uncredited) co-authors".

    Other material filed by McGilvray

11. On 21 January 2002 McGilvray filed a letter and copies of various documents, 27 pages in all. This material purports to respond to some issues in the summary case submissions provided to me on behalf of the patentees for the purposes of the hearing. Given that McGilvray chose not to appear at the hearing, he has no automatic right to comment on those issues, or for me to take them into account. However the provisions of s.28(3) provide an avenue by which the material, if it raises any matter that may affect the validity of the petty patent, can be considered. Having perused the material, it appears to relate solely to issues concerning matters of possible prior use or dealings with certain methods or products, or alternatively possible infringement issues. I do not see in the material anything that establishes a fact which may, of itself or with the other evidence from McGilvray, affect the validity of the petty patent. Thus it would not be material relevant to the validity questions I need to consider, and accordingly I do not need to apply s.28(3) requirements. I will make a brief reference to some portions of this material later in this decision.

    DECISION

    The relevant law

12. McGilvray asserts that the petty patent is not for a patentable invention because the invention does not comply with section 18 (1)(b) of the Act. That is, the invention as claimed does not satisfy the patentability requirements of being novel and involving an inventive step.

13. Section 7(1) of the Act indicates the conditions for an invention to be novel when compared with the prior art base. Sections 7(2) and (3) relate to the requirement for assessing the existence of an inventive step. These provisions are further to be understood given the definitions of "prior art base" and "prior art information" in Schedule 1 to the Act.

14. Section 69 and regulation 6.6 indicate the requirements for considering whether or not to grant an extension of term of a petty patent.

15. In determining this matter, the standard of proof required in proceedings before the Commissioner is the civil standard, ie. the balance of probabilities (see eg. Dunlop Holdings Ltd's Application [1979] RPC 523). The Commissioner, while functioning as a Tribunal, is not bound by the rules of evidence but nevertheless must reach a decision on rationally probative material, ie. material which tends rationally to show the existence or non-existence of facts relevant to decision. It is for the Commissioner to determine the weight to be given to material of probative value. A party alleging invalidity of a patent bears the onus of proof and any doubt on the validity of a patent should be accorded to the patentee.

16. Where a ground of invalidity is based on assertions of prior use, it is clear from decided cases that the proof of prior use must be very clear.  Thus this will normally require, in the absence of cross-examination, corroboration of statements by way of evidence of others or documents contemporary with the fact to be proved.  (See eg. Seiller's Application [1970] RPC 103.)

    Standing of the declarants

17. Mr Nugent submitted that there was no independent evidence to support the assertions advanced by McGilvray.  Further he noted some inconsistencies in different declarations provided by McGilvray regarding one exhibit, exhibit WRM-2.  Thus he submitted little or no weight should be given to the McGilvray evidence.  However I do not believe that the matters referred to by Mr Nugent are such that I should dismiss McGilvray's evidence altogether.  It is appropriate that I give it due consideration and if needed determine the weight I give it when discussing specific issues.

18. Mr Nugent also submitted that in the evidence filed by McGilvray there were assertions of a prior use process but that the evidence lacked corroborating evidence about such use.  He argued that little reliance should be placed on grounds of invalidity stemming from such assertions given the nature of the evidence.  I will discuss this issue later in relation to specific evidence and exhibits under the novelty heading.

19. Although McGilvray raised doubts as to Knight's expertise and evidence, I see no reason to consider Knight's evidence other than on its merits.  It is evident that Mr Knight has relevant qualifications and pertinent experience to comment on the subject matter of the present petty patent and the texts placed in evidence.

    Novelty

20. I will discuss those documents and matters on which McGilvray appears to me to allege that the claimed invention lacks novelty.

    Exhibit WRM-2

21. This exhibit is referred to at paragraph 6 of McGilvray's first declaration.  It is a document entitled "Australian Blue Cypress Oil" and describes briefly a process of obtaining a blue oil containing various constituents including guaiazulene from the "wood" of the Callitris intratropica tree.  The "wood" is said to be "distilled under certain conditions" to obtain the oil.  In another reference the document refers to the "bark resins" being used by the native Tiwi people of Northern Australia.  The last sentence on page 2 of the document refers to "… Blue Cypress Oil produced by the Australia Cypress Oil Co and sold by the Australian Essential Oil Company."  The top of page 1 bears the name "The Australian Essential Oil Company Pty Ltd".  The document bears no date indication that may otherwise suggest a preparation or publication date in Australia.  McGilvray says this document was authored by him in 1995 and copies circulated widely.  It appears that McGilvray believes this document constitutes a disclosure of the claimed invention thus depriving it of novelty.

22. The patentees contend that as there is no independent verification of the date of publication of this document it should not be treated as a publication.  They further submit that the disclosure of the document "is far short of that required to be an anticipation of the claimed invention."  In this latter respect they say the document provides

    ·    no discussion of the conditions used and therefore there is no way of establishing the method by which the essential oil of deep blue colour was produced, and

    ·    no suggestion of the possibility of using a mixture of bark and wood of C. intratropica.

23. As further argument concerning the uncertainty of the document's publication, and the weight I should give McGilvray's evidence about it, Mr Nugent noted that paragraph 6 of McGilvray's first declaration was similar to a paragraph in a declaration by McGilvray filed with his s.27 material to application 75075/98.  However he pointed out that present exhibit WRM-2 contained some notable differences in text wording compared to the corresponding exhibit of the earlier declaration.  In each declaration McGilvray states that the "final version of this document was created by me on 25 September 1995", and in his first declaration states that "… the descriptive wording within this document marked WRM-2 has not been changed since the version generated on 25th September, 1995".  However given the different texts between exhibits, there was some uncertainty regarding when the particular versions exhibited were created and some doubts generated regarding the reliability of McGilvray's evidence generally.

24. There is little material before me to corroborate the statements of McGilvray regarding the preparation and availability of the document of exhibit WRM-2.  The stated authoring date of 1995 does coincide with the period when some actions were undertaken to develop and commercialise "Blue Cypress Oil", according to McGilvray's other statements.  But there is no other independent evidence or supporting distribution documentation before me regarding this document and its public availability in Australia.  In my view it has not been clearly established that the document of exhibit WRM-2 was published in the patent law sense before the priority date of the present claims.

25. As to whether the document discloses the present invention, I note it refers to distilling "wood" of C. intratropica to obtain an essential oil.  The document uses the terms "tree", "wood" and "bark" ("bark resins") in describing various matters involving the species C. intratropica.  To me the term "tree" suggests the whole, with the "wood" and "bark" being distinct components of the tree.  The document refers to distilling "wood" and the "undistilled wood" in paragraph 3.  Given the distinction in terms used, the document does not suggest to me that "wood" in meaning includes the bark.  Given that meaning, I do not consider that the document provides a clear direction to do what the claimed invention does, that is to produce a blue oil from a mixture of the bark and wood of C. intratropica.  The fact that the document in rather general terms states that "the wood is distilled under certain conditions" and provides no further elaboration, leaves unknown the precise method employed.

26. Also, if the document is being relied upon as an indication of prior use of the method of the invention, the document of itself falls short of establishing any facts including matters such as when any specific use took place and details as to the precise method used.

27. In summary, I consider that the claimed invention is novel in the light of exhibit WRM-2.

    Exhibit WRM-3

28. This exhibit comprises portions of the text "A Research of the Pines of Australia".  It discusses obtaining distillate from Callitris timbers, particularly discussing distillate obtained from C. glauca and C. Macleayana in chapters XVI and XVII.  It appears that McGilvray believes this document constitutes a disclosure of the claimed invention.

29. Knight in evidence and the submissions for the patentees argue that this text does not disclose the method of the invention.  Knight states that a blue oil did not derive from the initial distillation of C. glauca but after a further distillation of that distillate.  He also raises the issue about a mixture of "bark and wood" being used in the present invention.

30. The exhibit in chapter XVI particularly discusses obtaining oil from C. glauca.  The timber of C. glauca was apparently steam distilled and then the "liquid portion of the distillate was removed from the Guaiol by squeezing it through linen" (paragraph 3 on page 60).  The oil was found to be "a somewhat thick, viscous and heavy oil" and "dark-coloured".  Paragraph 3 further mentions some other properties of this oil.  At the start of the next paragraph there is mention of still further properties, presumably of this same oil, and then the paragraph continues:

    "On distillation, the greater portion came over within a comparatively small range of temperature.  Nothing distilled below 248°C (cor.) except a little acid water; 60 per cent distilled between 248-255°C.  As the oil distilling at the latter temperature became blue, the receiver was changed, and 21 per cent of a bright blue oil was obtained, distilling between 255-265°C.  The third fraction, 10 per cent, distilling between 266-296°C, was a deep indigo-blue oil.  The first fraction was again distilled, … ; this was but little coloured …".

1. It is not directly clear what distillation stage is being described in the passage quoted, whether the original distillation of the timber or a distillation of the "liquid portion of the distillate" mentioned in the previous paragraph.  There is some support for Knight's view that it is a further distillation of the oil produced in the original steam distillation.  This comes from a reference on page 62 where, after discussing some colour effects of certain reaction processes involving "the separated oil" it states: "The marked colour reactions point to the origin of the indigo-blue oil obtained when redistilling the crude product."  Given the preceding discussion in this chapter, it seems to me that this sentence can only be a reference to oil so coloured as obtained by the distillation described in the above quoted passage.  At best the chapter discloses obtaining blue oil from distilling wood of C. glauca.  On page 62 it indicates that the "oily distillate from the timber of C. Macleayana, from which Guaiol had been removed, was of a deep red colour".  Whilst on page 60 there is mention that apart from C. glauca, which was taken for the purposes of investigation, "C. calcarata, C. intratropica, &c., would have answered just as well, and have given the same results", there is no information about oil or its manner of production from C. intratropica.

2. In chapter XVII of exhibit WRM-3 the authors indicate that the "crude semi-solid oily product" from distilling C. glauca was treated to obtain crystals, and that when these crystals were heated with zinc chloride, water added and the solution steam-distilled, a blue oil was eventually obtained (pages 63, 64). Although on page 66 there is mention that the timber of C. intratropica when cut displays a deposit of Guaiol upon the surface of the wood itself, there is no mention of oil or its manner of production from C. intratropica.

3. Given that the exhibit, in my view, does not clearly disclose a method of producing a blue oil from C. intratropica, any issue about whether the exhibit discloses a method of using a mixture of bark and wood of that species is of no moment.  However I note that the evidence as presented by the parties on this is conflicting, and in those circumstances I am not convinced that the exhibit would necessarily disclose to a skilled addressee that any reference to the distillation of Callitris timber involves a mixture of the bark and wood, the wood being the non-bark inner layers.

4. Knight in evidence introduced and referred to exhibit TCK6.  I do not see anything in this exhibit which places exhibit WRM-3 and its disclosure in a different light to that discussed above.  I note that the Trikojus and White text of exhibit TCK6 does not discuss obtaining oil from
   C. intratropica.

5. In summary, I consider that the claimed invention is novel in the light of exhibit WRM-3.

   Other McGilvray exhibits and material

6. Other exhibits referred to by McGilvray in his first declaration variously concern issues about the production of oil from timber species other than Callitris, technical aspects regarding tree components, or the formation and properties of certain chemical compounds such as azulenes and guaiazulene.  None of these exhibits bring into question the novelty of the claimed invention.

7. I note that in paragraph 24 of his first declaration McGilvray draws some concluding statements given his earlier evidence.  However these conclusions do not assist to establish that the claimed invention was published by way of any exhibit mentioned in his paragraphs 7 to 23.

8. Regarding the statements in paragraph 4 of McGilvray's first declaration, these can be understood to suggest a prior use of the method of the claimed invention by either McGilvray or his company ACO.  However, there is no corroborative evidence about such activity to confirm either the nature of any method used involving C. intratropica before the priority date, or whether any such use was such as to provide "information made publicly available through doing an act anywhere in the patent area" (see the definition (a)(ii) of "prior art base" of the "old law").  Whilst in paragraph 5 McGilvray refers to distributions of Blue Cypress Oil in 1995 and 1996, there is no clear link between these dealings and a public prior use of the method claimed.  There is thus insufficient material before me to clearly conclude that there was a prior use of the invention as the statements suggest.

9. Further, with regard to the material filed by McGilvray on 21 January 2002, which also seems to relate to purported instances of prior use, I make the following brief comments.  Firstly, a copy of an invoice dated 9 October 1996 was included indicating supply and sale by three shipments of "Oil of Callitris Intratropica" to Jurlique International Pty Ltd.  Whilst this is prima facie evidence of such sale, there is nothing to indicate the characteristics of the oil supplied or the method by which the oil was produced.  Secondly, a copy of a page of a "Laboratory Workbook" was included.  This page includes a date of "Tuesday 3-10-95" and some data of a distillation over, it appears, two days.  The page does not indicate what source material was being distilled.  Thirdly, there are included copies of two statutory declarations by Vincent Joseph Collins made in early 1997.  Whilst in one declaration there is the statement "Blue Cypress Holdings [Pty Ltd] has produced Callitris Intratropica Oil by a distillation from woodchips", there is nothing which indicates the colour of the oil produced or the nature of the "woodchips" used.  Thus in relation to the items mentioned, the material falls short of clear evidence to establish that the method of the present invention was made publicly available by way of a prior use before the priority date.

   Inventive step

10. From the material before me there is no clear basis put forward by McGilvray to support his allegation that the claimed invention does not involve an inventive step.  At best it seems that from paragraph 25 of his first declaration it may be inferred that because "Steam distillation and solvent extraction are processes well known for more than one hundred years", he is suggesting that to steam distil a mixture of bark and wood of C. intratropica would not be inventive.  However, even if it is accepted that a steam distillation process to obtain essential oils from timber species is well known in the art, central to such an adverse finding on inventiveness requires a conclusion that a person skilled in the art would inevitably have used a mixture of bark and wood of C. intratropica in order to produce a blue, guaiazulene-containing oil.  There is no evidence before me on this issue to establish that at the priority date such an action would have been the case.  Accordingly, there is insufficient material before me to conclude otherwise than that the claimed invention involves an inventive step.

    Costs

11. The usual practice is that costs should follow the event. As I have found no ground of invalidity established, costs should then go against the person filing the s.28 notice. I see no reason why this should not be the result in this case. Accordingly I award costs in this matter against Mr McGilvray and in favour of the patentees. The relevant costs awarded are in accordance with Schedule 8 of the Patents Regulations 1991. As this is a s.28 matter not an opposition, such costs do not include items in the schedule relating to an opposition or preparing and perusing evidence.

    CONCLUSION

12. I have admitted a second declaration by McGilvray into the proceedings on the basis that it could be viewed as submissions provided before the hearing given that he did not appear.  I afforded the patentees an opportunity to respond to certain aspects of that evidence after the hearing.

13. Further material filed by McGilvray after the hearing was not seen as relevant to the validity questions and did not require the application of s.28(3) provisions.

14. I have found the claimed invention to be novel and to involve an inventive step in the light of the material in evidence.

15. I have awarded costs against Mr McGilvray and in favour of the patentees.

16. Section 69(3) provides that the Commissioner must not grant an extension of term of a petty patent without giving the person who filed a notice under s.28 a reasonable opportunity to be heard. Mr McGilvray was afforded such an opportunity.

17. As no ground of invalidity has been established to the petty patent, I grant an extension of term of petty patent 723540.

    Trevor Bruhn
    Delegate of the Commissioner of Patents

    Patent attorneys for the patentees  :  Griffith Hack, Brisbane

    Address of Mr McGilvray   :  575 Myall Creek Road, Coraki.  NSW   2471