Wayne Alan Pursell, Terrence William Butler, Darren Van Der Ley and Wayne Alan Pursell v Christopher Lyle Masters, Terrence William Butler and Darren Van Der Ley - [2003] APO 43

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Applications : No. PR0077 in the name of Wayne Alan Pursell, Terrence William Butler and Darren Van der Ley, and No. 69990/01 and 91474/01 in the name of Wayne Alan Pursell

Titles: Drinking vessel (PR0077)
Edible drinking vessel (69990/01 and 91474/01)

Actions: Requests under section 32 of the Patents Act by Christopher Lyle Masters, Terrence William Butler and Darren Van der Ley

Decision: Issued 30 September 2003.
Abstract

The yoghurt container type packaging was developed by Mr Masters. Consequently, he is an inventor with respect to this form of the invention, and is also an applicant.
Messrs Butler and Van der Ley have not assigned their rights to Mr Pursell, so they remain applicants.
Applications PR0077 and 91474/01 have lapsed, so no directions were made with respect to these applications.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. PR0077 by Wayne Alan Pursell, Terrence William Butler and Darren Van der Ley, and Patent Applications No. 69990/01 and 91474/01 by Wayne Alan Pursell, and requests under section 32 by Christopher Lyle Masters, Terrence William Butler and Darren Van der Ley.

BACKGROUND

Provisional patent application PR0077 was filed on 12 September 2000 by Wayne Alan Pursell, Terrence William Butler and Darren Van der Ley. The patent request filed in relation to this application lists the three applicants as inventors.
On 11 September 2001 Mr Pursell filed patent application number 69990/01 in his own name. The patent request specifies that the inventors are Pursell, Butler and Van der Ley, and the application is associated with provisional application PR0077.
On 11 September 2001 Mr Pursell also filed an international application number PCT/AU01/01156 in his own name. The application specifies that the inventors are Pursell, Butler and Van der Ley, and the application claims priority from provisional application PR0077. This application has designated Australia, and been assigned the application number 91474/01. The application has not entered the national phase within the time prescribed, and consequently has lapsed.
A number of requests under section 32 of the Patents Act have been filed in relation to these applications.
a) On 11 September 2001 Christopher Lyle Masters filed a request under section 32 in relation to the provisional application, for a determination that he “be named as co-inventor and co-applicant”. Mr Masters and Mr Pursell subsequently filed evidence.
b) On 14 May 2002 Mr Masters filed a request under section 32 in relation to patent application 69990/01. The same evidence is relied on in relation to this matter.
c) On 31 May 2002 Mr Butler filed a request under section 32 in relation to the provisional application and patent application 69990/01, for a determination that he be “named as the inventor in the above applications”. The Commissioner has interpreted this as a request to be named as an applicant rather than an inventor. Mr Butler provided no evidence. Mr Butler has not requested that the section 32 action also include patent application 91474/01.
d) On 5 July 2002 Mr Masters requested that the section 32 action also include patent application 91474/01. The same evidence is relied on in relation to this matter.
THE HEARING OF THE MATTERS
All of the section 32 matters were set for hearing in Canberra on 23 May 2003. Mr Pursell was represented by Mr Douglas Knaggs, a solicitor. Mr Wayne Pursell and several members of his family attended the hearing. Mr Masters chose not to appear or to file any submissions. Mr Butler indicated he would appear, but was unable to attend as he was in hospital. Mr Van der Ley appeared at the hearing and stated that he should also be a party.
It is apparent from the evidence on file in this case that Mr Van der Ley was involved with Mr Butler in the creation of the invention, and it seems likely that whatever conclusion I come to in relation to Mr Butler will also apply to Mr Van der Ley. I specified that I would allow Mr Van der Ley to complete a formal request under section 32, and I would hear him as part of the hearing.
At the hearing, Mr Van der Ley submitted unsigned statements by himself and Mr Butler. Mr Van der Ley briefly explained the significant parts of his evidence. As Mr Pursell had not had the opportunity to consider these statements I agreed to adjourn the hearing so that he could have time to consider them and make written submissions. As Mr Butler was unavoidably prevented from attending the hearing at the last minute, I allowed him time to provide written submissions.
Mr Knaggs requested that I also adjourn the hearing in relation to the action brought by Mr Masters. Mr Knaggs suggested that the evidence presented by Messrs Butler and Van der Ley could influence the case in relation to Mr Masters. Upon questioning by me, Mr Knaggs could not indicate any area where his submissions could depend upon the matters in the actions of Messrs Butler and Van der Ley. I allowed the adjournment, but stated that it was not justified. Mr Knaggs did not subsequently provide written submissions.
On 16 June 2003 Mr Butler filed written submissions. Mr Pursell filed further evidence on 16 July 2003. Mr Pursell did not provide written submissions in relation to the actions by Messrs Butler and Van der Ley.
THE SPECIFICATIONS
In substance, the three specifications are the same. The specification of the provisional application relates to drinking vessels made from edible substances. Specifically, small liqueur glasses (known as shot glasses) are envisaged. The edible substance is preferably chocolate or ice. Methods of preparing the shot glasses are also discussed. The specification ends with 5 figures that illustrate the vessels and moulds for their preparation.
The specification accompanying application 69990/01 (hereafter referred to as complete specification 1) is virtually identical. The description is the same, except that 13 lines of text have been added towards the end. The specification also contains six claims, an abstract, and five figures. The figures are the same as those in the provisional application with the exception of figure 5, which is slightly different.
The specification accompanying the international application (hereafter referred to as complete specification 2) is identical to that in specification 1. The figures have been more neatly prepared in order to meet the formality requirements of the PCT, but are otherwise the same.
THE EVIDENCE
In relation to the action brought by Mr Masters, there is a considerable amount of evidence. Mr Masters provided evidence in the form of declarations by Christopher Lyle Masters, Brenda Lee Masters and Joseph Charles Simencic. Mr Pursell provided evidence in the form of a declaration by Wayne Alan Pursell.
In relation to the actions brought by Messrs Butler and Van der Ley, there is a separate body of evidence. Messrs Butler and Van der Ley provided separate statements in relation to their actions. Mr Pursell subsequently provided evidence in the form of declarations by Wayne Alan Pursell, Rebecca Pursell and Bruce Alan Pursell.
SECTION 32
Section 32 of the Patents Act states:
If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.
The term "interested party" is defined in Schedule 1 of the Act:
"interested party", in relation to a patent application, means the applicant or a joint applicant, or a person who claims to be entitled to the grant of a patent on the application, either alone or jointly with another person
It is clear that Messrs Masters, Butler and Van der Ley are interested parties, as they claim to be entitled to be named as co-applicants (and co-inventor, in the case of Mr Masters). Mr Masters' claim to be named as a co-applicant is based on the assertion that he is also an inventor. In the case of Messrs Butler and Van der Ley, they are already named as inventors, so the question is whether they have transferred their rights to apply for a patent. The two matters are quite separate.
DECISION - MR MASTERS
To determine whether a person should be regarded as a co-inventor, I am guided by the views of the Administrative Appeals Tribunal in Re Upham and Commissioner of Patents [1998] AATA 852 (see [20]):
* Primarily, there must be an objective assessment of the person's contribution simpliciter to the invention.
* In assessing the weight to be given to that contribution, one should ask firstly whether their contribution beneficially affected the final concept of the claimed invention and secondly, whether that final conception would have been less efficient without their contribution.
* It is also legitimate to ask whether the invention would have occurred without the person's involvement.
* Evidence of collaboration is useful in assessing objectively whether there has been a relevant contribution.
Assuming that a person is an inventor, a second question arises as to whether their rights have been transferred by virtue of the relationship between the parties. If there is a contract between the parties, the contract may determine the ownership of any intellectual property. Where the contract is one of employment, this raises the distinction between contracts of service and contracts for services. What is significant is that these relationships are based on contract.
What is the invention?
The invention described in all three specifications is the same: drinking vessels made from edible substances. The methods of making the vessels is also the same in all three specifications: single vessels can be prepared by pouring the edible substance into the base of a two part mould, or by pouring the edible substance into the top of a multi-unit mould. It is the second method that is represented in Figure 5 of the specification, and is the subject of this action. Figure 5 of the provisional specification is annexed to this decision.
I note that examination has not yet taken place on either of the complete specifications. Consequently, the claims of any patent that is ultimately granted may be significantly different to those that are presently in the specifications. In considering the invention, I have had regard to both the claims and the description of the specifications.
The provisional specification describes the multi-unit moulding as follows:
"Drinking vessels may be cast by filling the cavities 53 of the lower section 51 with the required amount of edible product and then fitting the top section 52 onto the bottom section 51 with the projections 54 projecting into the cavities.
When the edible product has set to the point where the drinking vessels can sustain their own shape, the top section can be removed and replaced with a tear away film covering that hygienically seals the vessel in their moulds until they are required.
Thus the drinking vessel mould becomes the packaging container for the drinking vessel. Frangible joints between individual moulds allow the drinking vessels to be removed and dispensed one by one to the end users. In this way only the end consumer of the product need handle the edible product."
Complete specification 1 differs from the provisional specification in that Figure 5 now has clearly marked frangible joints between the individual moulds. The description that explains Figure 5 is almost identical to that in the provisional specification, except that it includes two additional reference numbers from the drawing: the cavities are referenced as feature 53 in the last line of the first paragraph, and the frangible joints are referenced as feature 55 in the second sentence of the third paragraph. Complete specification 2 has the same Figure 5 and description as complete specification 1. I do not believe that the explicit inclusion of the frangible joints in Figure 5 of specifications 1 and 2 represents any change to the form of the invention from that represented in the provisional specification.
How did the invention come into existence
The basic facts are quite straightforward. Messrs Butler, Van der Ley and Pursell (the contribution of each is not material to the present action) conceived the idea of edible drinking vessels. On 16 August 2000 Mr Butler approached a company called Finishing Touches about producing a moulded product. Finishing Touches is owned by Mr and Mrs Masters. On 17 August 2000 a confidentiality agreement was signed between the Masters and Messrs Butler and Van der Ley. Subsequently Mr Masters worked on ways to produce a moulded ice product of the type required by Butler and Van der Ley. On 3 September 2000 Finishing Touches submitted a quote for the production of moulded ice shot glasses. On 6 September 2000 Mr Butler requested, and was provided with, a drawing of the moulding that Finishing Touches proposed using. The provisional application was filed on 12 September 2000, with a diagram of the moulding included as Figure 5. On 11 October 2000 Mr Pursell informed the Masters that they were not going to be involved in commercialising the product.
The key to this matter is the yoghurt container form of the invention, which is illustrated in Figure 5. By Mr Masters' own admission, this was his contribution to the invention. The significance of Mr Masters' contribution to the invention depends on whether this form of the invention was already contemplated before Mr Masters became involved.
What was the invention before Butler and Van der Ley contacted Masters?
Neither Mr Butler nor Mr Van der Ley has provided evidence in this matter. However, the declaration of Mr Pursell dated 25 February 2002 addresses this point (paragraph 3):
"The 'idea' was disclosed to the parties approached in the form of Annexure B."
Annexure B is a hand-written document that runs as follows:
"The idea
1) A drinking vessel edible
2) for small volume drinks such as a shot
3) (That is edible) made from edible material such as
           1. chocolate
           2. ice
4) The flavours are endless
5) packaging is by way of a yoghurt type container with a pull away lid with the vessel able to be ejected out without touching
6) e.g. port + chocolate
           lemon flavoured shooter for Tequila
           lick, sip, suck
7) will be able to have product out and about in 8 weeks"
This is a clear assertion that on 17 August 2000 only one form of packaging was envisaged (for both ice and chocolate vessels) - a yoghurt type container. This is in contrast to the provisional specification filed on 12 September 2000, where the yoghurt type container is not the only packaging form.
On the other hand, Mr Masters evidence suggests that the yoghurt type container was not part of the original idea. Rather, he indicates that the original idea involved a different sort of packaging:
"Butler wanted to sell ice shot glasses to pubs, hotels and the like. He thought that the shot glasses could be packaged in bulk similar to normal ice blocks in paper or plastic bags. This however proved impractical as the shot glasses would come into contact with a person's fingers, such as when being used to serve liquor. Further, melting of the ice shot glass would leave an undesirable pool of water."
[paragraph 6]
According to Mr Masters, he came up with the idea of a yoghurt type container in order to solve these problems.
In order to resolve this conflict, I note the following points. Mr Masters provided a detailed explanation of how and why he came to the yoghurt container design. This is very credible evidence. Mr Pursell's assertion that the yoghurt container aspect was the only packaging envisaged in the original idea is supported by the annexed document. However, it is not clear whether the annexed document was created at the time that Mr Butler first spoke to Mr Masters, or whether it was created at a later time. Additionally, the only representation of a yoghurt type container in the provisional specification is that produced by Mr Masters. On balance, I believe that Mr Masters' full and frank explanation of his work should be preferred in relation to the idea that was disclosed to him, i.e. the idea originally did not include a yoghurt container type packaging.
What did Masters do with the idea?
Messrs Butler and Van der Ley had the idea of making a drinking vessel out of ice, but did not have the expertise to carry this out (at least on a commercial scale). Mr Masters was approached to carry out the production of ice glasses. It appears that Mr Masters determined that ice glasses had previously been prepared by a time consuming process that was not suitable for production in the volumes required.
"BM told Butler that the idea was not new and that Finishing Touches could manufacture ice shot glasses using a mould. However the mould could only manufacture small numbers (50 units per day) … The freezing liquid is visually monitored and when the base and outer walls of the liquid are frozen, the remaining unfrozen liquid at the centre is tipped out of the cup to leave an ice shot glass."
[paragraph 5]
Masters also describes other prior art methods of manufacture which do not appear to be suitable for high volume manufacture (paragraphs 7-9). I note in passing that if this evidence is correct, then certain aspects of the invention are lacking in novelty. Masters declares that he then investigated alternative methods of moulding ice vessels. His solution is a yoghurt container style system (paragraph 15). This method of manufacture made it economically viable to manufacture the vessels in the quantities required. Mr Masters had drawings prepared for a mould to produce the yoghurt container product. It is accepted that this drawing was included in the provisional application as Figure 5 (see paragraph 8 of the declaration of Mr Pursell dated 25 February 2002).
Did this beneficially affect the final conception of the claimed invention?
The invention as described and claimed is not limited to manufacture by means of a yoghurt type container. However, the invention includes the possibility of such containers, and this form of the invention is specifically covered by Figure 5 of each of the specifications. The yoghurt container form of manufacture has advantages in that it permits the vessels to be maintained in a hygienic form until use, and it is amenable to large-scale production. I conclude that the invention as described and claimed benefited from the contribution of Mr Masters.
Would the invention as described have occurred without Masters?
It is clear that the invention as embodied in Figure 5 would not have come into existence without the input of Mr Masters. It seems unlikely that the yoghurt container form of the invention would have been developed in the month between August and September 2000 without the involvement of Mr Masters. The other aspects of the invention do not seem to have been directly influenced by Mr Masters.
Is there evidence of collaboration?
The declaration of Mr Masters dated 19 November 2001 indicates that there was a relationship akin to a collaboration:
"I informed Butler that there was no commercially available machine or system that produce ice shot glasses in the volume desired. I advised him that it would be necessary to devise a new moulding and packaging system to avoid the disadvantages of existing methods. He asked me to proceed and mentioned that all moulding and packaging systems developed by myself would remain my property. He mentioned that Finishing Touches would be the manufacturer and that he and his business partners Van Der Ley and Pursell were only interested in selling the final product."
[paragraph 11]

Mr Pursell declares differently in his declaration of 25 February 2002:
"I deny that Christopher Lyle Masters was in any way entitled to any rights, entitlements or interests to the pending patent or to the manufacturing processes or mouldings."
[paragraph 8]
It appears that there was some communication between Masters and Butler in order for Mr Masters to develop a process on which he could base his quotation. However, it would not be fair to say that Masters and Butler worked together on the process.
Conclusion on inventorship
The evidence suggests that Mr Masters undertook investigations to find a way to produce ice vessels, that was different to that previously envisaged by Butler or Van der Ley. The form of the invention embodied in Figure 5 was the result of the investigation carried out by Mr Masters, and would not have occurred without Mr Masters involvement. I conclude that Mr Masters was an inventor with regard to the yoghurt container form of the invention.
Was there a relationship which transferred the rights of Mr Masters?
The relationship between Mr Masters and Messrs Butler and Van der Ley is easily analysed according to traditional legal principles. Messrs Butler and Van der Ley requested Mr Masters to provide a quote for the supply of ice vessels. This represents a request for quotation for the supply of a product. In order for Mr Masters to provide a quote, he had to investigate how he would manufacture the ice vessels, as this would determine whether he would be able to supply the product, and the pricing in his quote. The quote that Mr Masters provided represents an offer. A contract would come into existence if the offer was accepted and there was consideration. As it turns out, the offer was never accepted, so a contract did not come into existence. To my mind, there was no contractual relationship between the parties. The only contract-like document that I have in evidence is the confidentiality agreement between Messrs Masters, Butler and Van der Ley. The confidentiality agreement does not make any explicit reference to what Mr Masters was to do with the idea. It is impossible to construe this document as a contract of, or for, services. I conclude that there was no legal relationship which transferred the rights of Mr Masters.
Mr Pursell refers to Mr Masters being contracted (in paragraph 11 of his declaration dated 25 February 2002): "Finishing Touches were only contracted … to supply a quote for the supply and manufacture as per the brief given to them". As already noted, the initial approach was a request for quotation rather than a contract, and it appears that Mr Pursell is using the term "contracted" in a lay sense, and not in a legal sense. The quotation provided by Mr Masters appears as Annexure D to the declaration of Mr Pursell dated 25 February 2002. The quote is in the form of an email sent by Masters to Messrs Pursell and Butler. Costs for the supply of ice vessels are given, and the message ends with the following sentence:
"Please note the manufacturing and handling process remains the property of Finishing Touches in Ice."
It is clear from all of the circumstances that Mr Masters retained possession of the intellectual property in the manufacturing process.
Conclusion
I conclude that Mr Masters invented the yoghurt container form of the invention, and that the intellectual property in this work is retained by him. There is no suggestion of the assignment of any rights by Mr Masters. Consequently he is an inventor and entitled to be an applicant.
Costs
Mr Masters chose not to appear at the hearing, where he would have had an opportunity to make submissions on costs. In a letter dated 23 May 2003 I encouraged the parties to deal with all issues, including costs, by way of written submissions. In my opinion, the parties have had an opportunity to make submissions on costs, but have waived that right. In actions before the Commissioner, costs normally follow the event. This means that the costs incurred by Mr Masters would be able to be recovered from Mr Pursell. The costs that are recoverable are only those in Schedule 8 of the Patents Regulations. I can see no circumstances that would warrant departing from the normal situation.
Mr Masters should send a claim for costs to the legal representative of Mr Pursell identifying the costs that he claims. If the parties cannot agree on costs, then Mr Masters should write to the Commissioner specifying his claim for costs, and requesting taxation of costs by the Commissioner.
DECISION - MESSRS BUTLER AND VAN DER LEY
There is a large amount of evidence relating to the relationship between Messrs Pursell, Butler and Van der Ley. It is clear that all three had some part to play in the development of the invention that is the subject of the present applications. However, the personal and business relationship between these people deteriorated over time. Whoever may have been at fault in these developments is immaterial to the question of whether Messrs Butler and Van der Ley are applicants.
It is clear from the patent request forms and other documents on file that Pursell, Butler and Van der Ley are all inventors of the subject matter covered by the relevant applications, and this does not seem to be in dispute. The question of whether an inventor has transferred their right to apply for a patent is assessed according to the general law of property. If there has been a valid transfer of rights, then they are not entitled to be recorded as an applicant. If there has been no such transfer, then they retain the right to be recorded as an applicant.
What is the evidence of a transfer of rights in the present case? There are two critical documents in evidence. The first is a deed dated 21 August 2000. This document appears as Annexure B to the declaration of Wayne Alan Pursell dated 17 June 2003, and as Annexure A to the declaration of Bruce Alan Pursell dated 17 June 2003. This document states:
"We, Wayne Pursell, Darren Van Der Ley and Terry Butler, do hereby agree that we had formed an agreement to jointly own all rights, title and entitlements to a concept - Patent No Pending (an Ice and Chocolate Shooter Glass) presently in the name of Terry Butler and Darren Van Der Ley, and do hereby agree to enter an Agreement or some such vehicle, legally enforceable, to be formulated in haste, which will secure all parties interests equally." [The hand written annotation “33 1/3 SHARES” appears at this point.]
A further deed was executed on 29 August 2000. This document appears as Annexure D to the declaration of Wayne Alan Pursell dated 17 June 2003. This deed acknowledges that a patent application that had already been lodged in the name of Van der Ley and Butler should also include Pursell, and that all three are entitled to an equal share of the patent. The number of the patent application in question does not appear in the deed (from the declaration of Wayne Alan Pursell dated 17 June 2003 it appears that this was a petty patent application that subsequently lapsed). However, it is clear that the patent application is not any of those that are the subject of the present section 32 action, as none of these applications were filed prior to 29 August 2000. The deed goes on to state:
"Pursell, Van Der Ley and Butler each agree that they hold a one third (1/3) share of any Patent granted in respect of chocolate and ice shooter glasses."
Details not relevant to the present matter are also specified. All three persons apparently signed the deed. It seems clear that there was an intention that any future patent that issued on the concept of a chocolate or ice shooter would be owned equally by all three. The present applications appear to be future applications that embody the concept of an ice or chocolate shooter.
These documents confirm that Pursell, Butler and Van der Ley each had equal rights to the invention on 29 August 2000. Provisional application PR0077 was prepared and filed on 12 September 2000. At this point all three were listed as both applicants and inventors. The advantage of filing a provisional application is that the applicant can claim priority if they file a complete application within a period of 12 months. During this 12 month period things seem to have gone bad for the applicants. The partnership between Pursell, Butler and Van der Ley came to an end on or about 9 October 2000. It seems that Butler experienced financial difficulties, and Pursell decided to proceed with patent applications on his own in order to claim priority from the provisional application. In his declaration he states:
"I proceeded to develop the Patent by myself. …
I decided to lodge a Standard Application and an International Application when the Provisional Application lapsed, as I wanted to protect my rights and the original Provisional date.
I believed that because Van der Ley and Butler had dissolved the Partnership and failed to complete the Petty Application, that they were not interested in the Patent or they would have lodged a standard application, had altered any agreements we had, while trying to disinherit me again by lodging the Petty Patent."
This seems to confirm that there was never a formal transfer of the rights of Messrs Butler and Van der Ley. Mr Pursell suggests that they implicitly waived their rights by not taking action to file a complete application. I do not believe that the actions are clear enough to draw such a conclusion - there is no evidence that there was an agreement to file a complete application within 12 months of the provisional, and there does not appear to have been any attempt to confirm that Butler and Van der Ley no longer had any interest in obtaining patent protection for the invention.
The evidence satisfies me that Butler and Van der Ley had not explicitly or implicitly assigned their rights to Pursell. While I can understand Mr Pursell’s desire to file applications that could claim priority from the provisional application, this cannot be done by abrogating the legitimate rights of other parties. I conclude that Messrs Butler and Van der Ley are entitled to be applicants.
Costs
In a letter dated 23 May 2003 I encouraged the parties to deal with all issues, including costs, by way of written submissions. In my opinion, the parties have had an opportunity to make submissions on costs, but have waived that right. In actions before the Commissioner, costs normally follow the event. This means that the costs incurred by Messrs Butler and Van der Ley would be able to be recovered from Mr Pursell. The costs that are recoverable are only those in Schedule 8 of the Patents Regulations. I can see no circumstances that would warrant departing from the normal situation.
Messrs Butler and Van der Ley should send a claim for costs to the legal representative of Mr Pursell identifying the costs that they claim. If the parties cannot agree on costs, then Messrs Butler and Van der Ley should write to the Commissioner specifying their claims for costs, and requesting taxation of costs by the Commissioner.
DIRECTIONS, AND CONSEQUENCES FOR THE FURTHER PROSECUTION OF THE PATENT APPLICATIONS
I have found that all of Pursell, Butler, Van der Ley and Masters are entitled to be recorded as inventors and applicants in relation to all of the applications. As a consequence, I make the following directions.

a) In relation to the provisional application, due to the fact that it has lapsed there is no appropriate direction that I can give concerning how that application is to proceed.

b) In relation to the application number 69990/01, I direct that the application is to proceed jointly in the name of Pursell, Butler, Van der Ley and Masters.

c) In relation to the application number 91474/01, this application has also lapsed so there is no direction that I can give concerning how that application is to proceed. If the application is restored, then at the request of the parties I will make a direction. However, given that the specification is identical to that of 69990/01, it is hard to see why the parties would seek to have this application restored (as it would presumably be subject to an objection under section 64(2)).
In order to progress the application, the Commissioner requires a single address for legal service, and a single address for correspondence for the application (which may be the same address). All correspondence from the Commissioner will be sent to the address for correspondence only. Consequently, the applicants must jointly advise the Commissioner of a single address for service and address for correspondence within 2 months of the date of this decision.
Clearly the applicants will need to co-operate in order to progress the application. If some of the applicants no longer wish to be involved with the application, they should consider whether they would be better served by entering into an agreement to transfer their rights to someone else. If the applicants be unable or unwilling to co-operate, they can request the Commissioner to issue further directions under section 32. As a last resort, the Commissioner has the power to direct that a single person has carriage of the application, and even to exclude an unco-operative applicant.
I further note that there is no certainty that a patent will issue in relation to the application. The international search report attached to application number 91474/01 refers to nine documents that are stated to render the claims not novel or lacking in inventive step. The evidence of Mr Masters contains reference to further information that indicates that the basic idea was well known in the art. The applicants may wish to consult an appropriate professional for advice on whether it is worth proceeding with the application.
Dr S.D.Barker
Delegate of the Commissioner of Patents
30 September 2003
Solicitor for the Wayne Allen Pursell : Douglas Knaggs
Patent attorneys for Christopher Lyle Masters : Spruson & Ferguson
ANNEX: Figure 5 of the provisional application (PR 0077)