William King v KMJ Corporation Pty Ltd - [2005] APO 37

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 754492 in the name of WILLIAM KING

Title: Latching Device

Action: Opposition Under S.59 of the Patents Act by KMJ CORPORATION PTY LTD

Decision: Issued 8 September 2005.
Abstract

Opposition is successful on the grounds of lack of novelty and lack of inventive step.
The disclosure of the invention by the applicant to the opponent via drawings before the priority date of the application was done without any explicit or implicit confidentiality. The statements by the applicant that the invention was fully developed before he approached the opponent further support this disclosure, notwithstanding that none of the drawings show a fully assembled hose reel. Since the disclosure presents a full solution to the problems of the prior art, the claims lack an inventive step.
Due to the nature of this disclosure, there was no subject matter in the specification that could be added to the claims that was not disclosed before the priority date of the application.
Application refused.
Costs awarded against the applicant.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 754492 by William King and Opposition thereto under S.59 of the Patents Act by KMJ Corporation Pty Ltd.

BACKGROUND

Patent application 754492 (10015/00) was originally filed as a non-convention application by William King (“King”) on 4 January 2000. It originally claimed no priority. The application was advertised accepted on 21 November 2002, and KMJ Corporation Pty Ltd (“KMJ”) filed a notice of opposition on 19 February 2003.
Evidence in support was finalised on 9 December 2003 following two extensions of time. Evidence in answer was due by 9 March 2004. However, no evidence was served within that time by King. In addition, on 23 March 2004, advice was received from the Patent Attorney firm Sandercock & Cowie, who had previously been acting for King, that they no longer represented him in this matter. Henceforth King was representing himself. A hearing (the “original hearing”) was set for 10 May 2004 in Melbourne, and held on that date. At the original hearing, KMJ was represented by Norman Morcom, patent attorney, of Morcom Pernat. Mark Juzva and Shane Harris, both of KMJ also attended. King did not make an appearance.
On 29 April 2004, shortly before the hearing, King filed a letter (dated 14 April 2004) which responded to the evidence in support that had been field by KMJ. While it seemed that this letter was in the form of submissions, it also included attachments setting out some correspondence between King and KMJ as well as King and Sandercock & Cowie, what is apparently a cover page of a marketing proposal to King and KMJ, a payment schedule showing payments being made to King and a receipt for sales of various hose reels (which form part of the invention).
It became obvious at the hearing that King had not sent a copy of this letter to KMJ. Of great relevance in this letter was the following paragraph:
“Of reply to claims submitted by Gamsee/K.M.J. re their opposition to W. King’s submission of Provisional patent claims already lodged with the Australian Patent office and allocated No PP 8007 on 4^th January 1999”
This indicated a belief by King that he had a priority date of 4 January 1999. This was in conflict with the filed documents which showed that no priority claim had been made. This difference in priority dates was critical at that point as the evidence that KMJ had filed up until that time only showed one possible disclosure of the invention that was earlier than 4 January 1999. It was a meeting that had apparently occurred on 10 December 1998. At the hearing I questioned Mr Morcom about that lack of detail in the evidence of what transpired at this meeting. Subsequently, Mr Morcom indicated that KMJ would not be relying on that evidence. They would rely on the sale of a particular hose reel that included the latching device of the invention. The problem was that these sales only occurred on and after February 1999. That is, they were after the apparent priority date of 4 January 1999. In spite of this, I allowed KMJ to make submissions on the evidence as it then stood. I also supplied them with a copy of King’s letter and allowed them to make submissions on its contents.
Subsequent to the hearing, and given the importance of settling the issue with the priority date before continuing, I wrote a letter to both parties in which I proposed to allow King the opportunity to amend his patent request to include an association to the earlier provisional King had referred to. If an amendment was filed, I indicated that the usual amendment process would follow. Upon allowance of the amendment (if any), I indicated that KMJ would then have one month to file submissions and/or evidence which challenged the priority date and/or provided further detail on the meeting of 10 December 1998. King would have another month to respond.
To add further complications, on 18 May 2004, after the hearing, King filed a letter (dated 30 April 2004) in which he advised that a hearing on 10 May 2004 was unacceptable. While King had not made an appearance at the hearing, and this matched our and KMJ’s expectation, the letter suggested that King had wanted to be heard, just not on 10 May 2004. As a result a letter was written to both parties indicating that, whether or not an amendment to the patent request was filed or not, the hearing would be reconvened.
An amended patent request was filed, and leave to amend was advertised on 12 August 2004. The opposition period for the amendments therefore ended on 12 November 2004.
On 16 August 2004, the US Free Trade Implementation Act came into effect. This allowed opponents in oppositions to amend their Statement of Grounds and Particulars to include grounds related to secret use, and file new evidence on this ground. KMJ subsequently amended their Statement to include this ground. They also requested permission to file new evidence for the new ground and, given the state of the opposition, asked that they be allowed to delay filing their new evidence on secret use to the time they were to file further evidence as a result of the priority date change. KMJ was allowed until 7 January 2005 to file their new and their further evidence.
A copy of the new and further evidence was served on King on 7 January 2005. King was given until 14 February 2005 to file evidence in response. On 11 February 2005, King filed a letter with attachments, which I treated as his response to KMJ’s further evidence.
A new date of 5 April 2005 for the reconvened hearing was set for Canberra and KMJ indicated that they wished to appear by telephone. King indicated that he would not appear. On 16 March 2005, KMJ filed an application to serve further evidence. As King was to be given 1 month to respond, the reconvened hearing was deferred. King filed a response to the further evidence on 5 April 2005. At this point, KMJ indicated that they would not be appearing at any reconvened hearing but would be filing submissions. No submissions were filed. Consequently, the matter came for decision.
GROUNDS OF OPPOSITION
The grounds for opposition submitted by the opponent were that the invention is not a patentable invention because it does not comply with paragraph 18(1)(a) or (b), specifically that the invention as claimed is not for a manner of new manufacture, lacks novelty and an inventive step. It was also alleged that the specification filed in respect of the complete application does not comply with subsection 40(2) or 40(3), and in particular the specification does not provide a full description of the invention. In addition, the opponent alleges that the invention does not comply with paragraph 18(1)(d) in that it was secretly used in Australia.
EVIDENCE
Evidence of KMJ
The evidence-in-support filed by KMJ consists of Declarations by:
(a)Mark Juzva, dated 6 November 2003. Mr Juzva declares that he is a director of KMJ and sets out his involvement with William and Edward King after they had approached KMJ to discuss development of a retractable hose reel device they had invented. The declaration includes Annexures A-D. Annex A was a copy of an agreement that King had prepared in a negotiation with another party. It does not include any reference to KMJ and is not signed. Annexures B-D are letters between King and KMJ discussing royalty payments.
(b)Shane Cameron Harris, dated 8 December 2003. Mr Harris declares that he was operations manager of KMJ, and discusses his involvement with William and Edward King who attended the premises of KMJ during development of their invention. The declaration includes Annexures A-D. Annex A is a series of photocopies of drawings of a hose reel, as well as photographs of the hose reel’s latching mechanism which apparently embodied the invention. Annex B is an order from Jamec-Pem (“Jamec”) a company which sells hose reels. The order was apparently placed on 15 December 1998. Annex C is a print out of a table showing sales of the hose reel that allegedly embodies the invention. The table also shows apparent royalty payments to WEK Project Engineers, which is King’s company. Annex D is minutes of a meeting on 19 April 1999 indicating that King and his brother attended meetings with KMJ.
(c)Norman Bruce Morcom, dated 9 December 2003. Mr Morcom declares that he is a patent attorney and was present when photographs exhibited in Shane Harris’s declaration were taken of a hose reel. The declaration includes Annexures A-E. These annexures are identical to the photographs exhibited in Shane Harris’s declaration.
At the original hearing on 10 May 2004, KMJ brought along a hose reel said to be the one which the photographs were allegedly taken from. When Mr Morcom attempted to discuss the hose reel, I made the observation that, as the hose reel had not been placed in evidence, I felt uncomfortable in discussing it, notwithstanding the photographs that had apparently been taken of it. I also stated that, while some features declared by Mr Morcom to be present in the hose reel were visible in the photographs, other features were not. I advanced the view that, for a photograph (or photographs) to validly anticipate an invention, all the features of the claims had to be found in the photograph(s). That being the case, I stated that I was prepared to admit the hose reel as further evidence since I thought that its presence would be helpful. KMJ agreed to this.
Further evidence filed by KMJ consists of Declarations by:
(d)Shane Cameron Harris, dated 29 September 2004. In this second declaration Mr Harris gives further details of the meeting that occurred on 10 December 1998 between KMJ and Jamec.
(e)Mark Juzva, dated 7 January 2005. In this second declaration Mr Juzva also gives further details of the meeting of 10 December 1998, as well as expanding on the relationship between KMJ and King. The declaration includes Annexures MJ-E, MJ-F, MJ-G and MJ-H. Annexures MJ-E and MJ-F are copies of invoices from Norvill Tooling for work they apparently did on producing components of the hose reel that allegedly embodies the invention, as well as purchase orders from KMJ to Norvill Tooling for this work. They are dated May and June 1998. Annexures MJ-G and MJ-H are engineering drawings produced by W & E King Project Engineers which allegedly show the components of a hose reel embodying the invention. The drawings have various dates between August 1993 and September 1998.
Additional further evidence filed by KMJ consists of a Declaration by:
(f)Mark Juzva, dated 13 March 2005. In this third declaration Mr Juzva disputes a point made by King in his letter of 8 January 2005. The declaration includes Annex MJ-I which are copies of monthly invoices from W & E King Project Engineers for “consulting fees and engineering services” for the months from February 1998 to June 1998.
Evidence of King
The evidence provided by King was, by and large, not in declaratory form, as is normally required. It generally takes the form of letters rebutting various points made in various declarations filed by KMJ. It was also obvious that King was not sending copies of his “evidence” to KMJ, as is also required. Given that King was representing himself, it is not unusual that the evidence is not, strictly speaking, correct. While at the original hearing KMJ did not believe what had been received at that time was evidence as such, was more in the form of submissions, and they objected to it being treated as evidence, they did not raise any issue with King’s evidence that he filed from the time of the original hearing until the rounds of further evidence had been completed. KMJ has been accommodating of the alternative layout presented by Mr King. I am grateful for this forbearance. I will also take KMJ’s tolerance as an implicit acceptance of King’s later evidence (which, towards the end, did include some declarations) as relevant, and that they have no objection to its inclusion.
As to the ground covered by King in his evidence and the annexures provided, it generally goes to the assertion that, while King did talk to KMJ (or Gamsee Industries Pty Ltd which is apparently the company King originally approached and which then formed KMJ), the hose reel produced by them did not have the feature that King considered to be his invention.
THE SPECIFICATION
The present invention relates to an adjustable latching device for use in self-rewinding reel assemblies. Such assemblies generally have a length of hose or the like (e.g. garden hoses, air hoses, electrical cords, etc) stored on a drum wheel located within an outer housing. The hose is unwound off the drum wheel to a desired length by pulling on the free end of the hose which protrudes from an opening in the outer housing. When the free end of the hose is released, springs attached to the drum wheel cause it to rotate to wind the hose around itself again. To allow the hose to remain at the desired length during its use (e.g. watering the garden, pumping air into car tyres, etc), it is known to provide a latching mechanism which stops the drum wheel winding the hose back in. The latching mechanism usually catches once the user has stopped unwinding the hose. To rewind the hose, the user must pull a slight amount of hose length out of the housing to overcome the latch and then allow the hose to rewind at a fast enough speed to prevent the latch from catching again. If the user wants to shorten the amount of unwound hose, they simply slow the rate of rewinding when the desired length is reached, the latch will catch again. A problem with this prior art was that, as different types of hoses or the like (e.g. hoses, cables, ropes, etc) require different rewinding rates, there was a need for a latching device that will operate correctly at different rewinding rates. The invention sought to provide this option. That is, the latch was to be adjustable so that the speed required to prevent the latch catching could be slower than usual. The invention also aimed to provide a latch that could be disabled by the user so that it would not latch regardless of the rewinding speed.
The invention achieved this by providing a slot (into which a latching pawl falls when the latch catches) which has an adjustable length. By adjusting the length of the slot, the ease with which the pawl falls into it varies. This means that, for a smaller slot, the pawl has to travel a lot slower over it to catch. If the pawl travelled too fast over the smaller slot, it would have passed across it before the pawl fell (under the action of gravity) into the slot.
The claims defining the present invention are as follows:
1.An adjustable latching device for use with a spring actuated self-recoiling reeling assembly, said latching device including:-
a rotatable reeler drum;
a reeler casing located adjacent said rotatable reeler drum, with said rotatable reeler drum being rotatable relative to the reeler casing;
a slotted cam plate supported by said reeler casing, which cam plate:-
provides at least one latching slot, with the length of said at least one latching slot being selectively variable, and
at least one latching pawl, which is pivotally mounted to the reeler drum and which is adapted to enter into the latching slot in the cam plate and thereby arrest rotatable movement of the reeler drum relative to the reeler disk,
wherein the length of the slot can be selectively varied to determine the ease with which the latching pawl can arrest rotatable movement of the reeler drum relative to the reeler disk.
2.The adjustable latching device as claimed in Claim 1, in which the latching pawl is pivotally mounted at a recess in the reeler drum so that centrifugal force generated by rotation of the reeler drum holds the latching pawl clear of the surface of the cam plate.
3.The adjustable latching device as claimed in Claim 1, in which the slotted cam plate is circular.
4.The adjustable latching device as claimed in Claim 3, in which the slotted cam plate is provided with two latching slots, which are displaced from each other along the circumference of the cam plate by substantially 90⁰.
5.The adjustable latching device as claimed in Claim l, wherein said cam plate includes two plate members which can move relative to each other to vary the length of said at least one slot in the slotted cam plate.
6.The adjustable latching device as claimed in Claim 1, in which the slotted cam plate includes two plate members, one fixed relative to the casing and the other moveable relative to the casing to be positioned prior to any reeling or unreeling action for selectively varying the length of the slot.
7.The adjustable latching device as claimed in Claim 6, in which the plate members are moveable relative to one another during any reeling or unreeling action.
8.The adjustable latching device as claimed in Claim 1, in which the slotted cam plate comprises a stationary slotted plate member, and a sliding plate member being relatively moveable to sufficiently reduce the length of at least one latching slot to over-ride the latching function.
9.The adjustable latching device as claimed in Claim 1, in which the slotted cam plate comprises two plate members that are moved relative to one another by movement of an actuator, which is external to the reeling assembly.
10.The adjustable latching device as claimed in Claim 9, in which the actuator is a thumb press button.
11.The adjustable latching device as claimed in Claim 1, in which the slotted cam plate and the reeling casing each carry a series of interlocking serrations.
12.The adjustable latching device as claimed in Claim 1, in which at least one latching pawl is provided with a counter balance configuration beyond a pivot point from that portion of the latching pawl that enters into the latching slot.
13.The adjustable latching device as claimed in Claim 12, in which a balance of said at least one latching pawl can be varied by adding slugged weight.
14.The adjustable latching device as claimed in Claim 1, wherein parts thereof are constructed as engineering grade moulded plastic parts.
DECISION
Preliminary Issues
Decisions on lapsed applications
Generally, for standard applications, continuation/renewal fees are payable from the 5^th anniversary of filing. Subsequent fees are payable on following anniversaries. Generally, non-payment on or before the anniversary date is not fatal for the application however, and the applicant has a further six months “grace period” in which to pay the renewal fee plus any extra fee for each month, or part thereof, to revive the application. Once the six-month grace period has expired, the application is advertised as having lapsed. Application 754492 was filed on 4 January 2000. As such, the first continuation fee became due on the 5^th anniversary of filing, which was 4 January 2005. The final date for payment (following the grace period) was 4 July 2005. No fee was paid. Therefore, the present application has lapsed.

In light of this, it could be argued that no decision on the opposition needs to be issued since there is no viable application and a decision for or against the applicant will not change this (and a decision is a waste of resources). However, such an argument would be compelling only if it was true that the applicant had no interest in maintaining the patent. If the failure to pay the continuation/renewal fee was the result of an error or omission, then the applicant may wish to restore the application using the provisions of section 223. In that circumstance, having a decision already issued on the opposition before any restoration occurred would be an advantage.
In the present circumstances, I have no evidence that King has lost interest in his application. The very fact that he continued to respond to evidence filed by KMJ seems to indicate that he is interested in the fate of his application. In this regard I note the decision in GS Technology Pty Limited v Commissioner of Patents [2004] FCA 1017. As such, I will issue a decision.
Relationship between KMJ and Gamsee Industries Pty Ltd
Throughout his evidence, King maintains that he and his brother never approached KMJ. He states that all his dealings had been with a company called Gamsee Industries Pty Ltd (“Gamsee”). The owner of Gamsee was Steve Juzva, who is apparently the father of Mark Juzva. Mark Juzva, in his first declaration states (at paragraph 2) that:
“In late 1997, William (“Bill”) and Edward (“Ted”) King approached KMJ to discuss development of a retractable hose reel device that had invented.”
However, he corrects this in his last declaration when he states:
“it has been brought to my attention that the references to KMJ Corporation Pty Ltd (“KMJ”) in that paragraph should in fact have been references to Gamsee Industries Pty Ltd (CAN 005 966 307)(“Gamsee”).”
It would appear that KMJ was set up (with Mark Juzva as the director) to produce the hose reels that incorporated King’s new latching mechanism. I note that King consistently refers to “Gamsee/KMJ” in his evidence as well as in alleged copies of letters he sent to them, which he has attached to his evidence. King was obviously aware that KMJ was involved in some way in the manufacture of the hose reels. Indeed in his letter filed 29 April 2004 King states:
“I am enclosing copies of information relating to this application of correspondence and discussions that took place with “Gamsee Industries” from late 1997 with Mr. Steve Juzva then M.D. of Gamsee Industries and later with also K.M.J. Corporation a subsidiary named after his two sons (Kris & Mark Juzva) who were later to operate a make & sell operation for hose reelers associated with My patent application.”
Therefore, through King’s association with Gamsee/KMJ, I think it is safe to proceed on the assumption that when King was dealing with one company regarding his invention, he was dealing with the other company as well, and he was aware of this. While in this decision I occasionally make reference to either Gamsee, KMJ or Gamsee/KMJ, I take the stance that, as far as this invention is concerned, they are the same company.
The Opposition
Grounds of Opposition
As noted above, the grounds of opposition were that the claimed invention:
(a)did not comply with subsection 40(2) or 40(3),
(b)was not for a manner of new manufacture,
(c)lacked an novelty, and
(d)lacked an inventive step.
I will deal with each of these grounds separately.
Section 40
KMJ alleged in the Statement of Grounds and Particulars that the specification did not comply with subsection 40(2) in that it did not fully describe the invention. In the particulars they alleged that there was not enough information “for a skilled person to understand the invention or be able to satisfactorily put it into practice”.
No submissions were made by KMJ on this point at the original hearing, and they filed no further submissions on it when given the chance after the priority date changed.
Looking at the specification, I see no basis to uphold this allegation. In my opinion, the specification is clear and fully describes the invention.
In addition, one of the grounds of opposition raised by KMJ was that the application did not comply with subsection 40(3). While the particulars for this ground were directed to subsection 40(2), I assume that this was a mistyping, and that the particulars meant to point out where KMJ thought the claims were unclear and/or lacked fair basis. In any event this mistyping does not cause any problems for me as, in my opinion, the claims are clear and fairly based. No submissions were received from KMJ to change my decision on this matter.
Manner of Manufacture
As with the grounds dealing with section 40, no submissions were received from KMJ on this ground. KMJ states in their particulars that the claimed invention is not a manner of manufacture because the application does not disclose an inventive step having regard to the disclosure of the application, the prior art for novelty considerations and the common general knowledge.
In my opinion, the invention claimed clearly passes the “threshold of inventiveness test” as set out in the following passage in Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 46 IPR 553:
“Philips stands for the proposition (as a matter of construction of the 1990 Act) that if, on the basis of what was known, as revealed on the face of the specification, the invention claimed was obvious or did not involve an inventive step - that is, would be obvious to the hypothetical non- inventive and unimaginative skilled worker in the field (Minnesota at CLR 260 per Barwick CJ) - then the threshold requirement of inventiveness is not met.”
No inkling of what the common general knowledge is was advanced by KMJ, and nothing in the specification hints at what was common general knowledge. I cannot say that the difference between what is claimed and what is acknowledged as prior art is common general knowledge. Therefore, I cannot find that the threshold of inventiveness has not been passed. This ground is not made out.
Novelty
From the Statement of Grounds and Particulars KMJ asserted that the invention was not novel based on:
(a)sales of reels during the meeting of 10 December 1998 between Jamec and KMJ,
(b)construction of the assembly line to produce reels allegedly embodying King’s invention,
(c)the manufacture of reels on this line,
(d)further sales to other users from December 1998 and
(e)the disclosure by King of latches and latch designs to KMJ.
Hence, it is clear that KMJ is asserting lack of novelty as a result of prior public use.
KMJ also asserted that the invention was not patentable because it was secretly used prior to the priority date. They based this assertion on items (a) – (d) above.
I will firstly deal with items (a) – (e) to determine if there is a lack of novelty by prior public use.
Meeting between KMJ and Jamec-Pem and Sales at That Meeting
To support the ground of lack of novelty, KMJ submitted that a hose reel of the type defined in King’s application was ready for manufacture at the end of 1998. However, they had not been sold at that stage. At a meeting on 10 December 1998, the hose reel was allegedly shown to Jamec-Pem (“Jamec”), a potential customer. As a result of that meeting, Jamec placed an order on 15 December 1998. The order was filled in February 1999. Sales of the hose reel continued in 1999.
As a result of the change in priority date, the sales that occurred in 1999 are not part of the prior art base for considerations of novelty. Therefore, it is only for me to consider the meeting that occurred on 10 December 1998.
It would appear that KMJ is alleging lack of novelty due to prior use of the invention. In such a case, paragraph (a)(ii) in the definition of the prior art base in Schedule 1 of the Patents Act requires that the relevant information has been made publicly available through doing an act in the patent area.
In Paul Andrew Cronk v The Sunnyfield Association [2003] APO 27, the delegate noted:
“Adequate proof is essential where prior use is relied on. In order to be invalidating under the Patents Act, prior use must be "informative" in the sense that the necessary information (disclosing all of the essential features) is made available to the public. See Hope v Heggies Bulkhaul Ltd ( 1996) 34 IPR 584.”
The standard of proof required to establish prior use was discussed in Seiller's Application [1970] RPC 103. At page 106 Graham J. of the UK Appeal Tribunal stated:
“In my judgement it is necessary that proof of prior user in opposition cases should be very clear. Normally in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts, and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case.”
The UK Court of Appeal approved these comments in Dunlop Holdings Limited's Application [1979] RPC 523 at 548. A similar approach is evident in Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90-135. Towards the end of section 8.38 Waddell J. states:
“It is essential that an allegation of prior public use should be strictly proved. Evidence which is uncorroborated is undoubtedly suspect and should be scrutinised with particular care. The Court must be satisfied that the proof is sufficient in the circumstances, having regard to the gravity of the allegation.”
In the evidence in support, the only mention of the meeting was in the first declaration of Shane Harris. In it he stated:
“By December 1998, the reel was ready for commercial production and a meeting was held at KMJ’s premises on 10^th December 1998 with Mark Juzva and I present from KMJ and John Snape, Peter Nicholson, Peter Vann and Robert Stewart all present from Jamec-Pem. Jamec-Pem had been requested to assist with distribution of the industrial range of hose reels, which we called “Easy Reels”. Both Bill and Ted King attended this meeting, at least in part, were introduced to the Jamec-Pem representatives, and were well aware of the purpose of the meeting.”
Apart from noting that the reel seen by the Jamec representatives was identical to the reel which was photographed (which apparently was the reel I admitted as further evidence at the first hearing), there was nothing else in the evidence in support about this meeting.
I noted during the original hearing that there was little detail of what actually happened at the 10 December 1998 meeting with Jamec. There was no disclosure of what the Jamec representatives saw. While at that time Mr Morcom responded saying, effectively, that KMJ would not rely on it, and would instead rely on the sales of the hose reel from 1999 onwards, as noted above, I gave KMJ further opportunity to file evidence of this meeting when the priority date changed.
In the further evidence filed, Mr Harris expands on what allegedly occurred at this meeting. He states that:
“the meeting included discussion of how the latching mechanism in the Easy Reel worked. This included discussion of how the latch/free-run slider control worked and what advantages it provided over reels already on the market. In the course of the meeting a sample Easy Reel was shown to the Jamec-Pem representatives.”
Mr Harris then declares that after the meeting the Jamec representative were taken on a tour of the Easy Reel assembly line where the “components were in clear view and provided an additional opportunity for the Jamec-Pem representatives to examine the components.”
Also in the further evidence, Mr Juzva expands further on what occurred at the meeting. He indicates that a “particular feature of the Easy Reels was the latching mechanism and a sample reel was demonstrated at the meeting.” He then goes on to say:
“Following the meeting, the same Easy Reel demonstrated at the meeting was partially dismantled in front of one of the Jamec-Pem officers in my presence. The reeler disc was removed so that the latching pawls and the mechanism on the inside of the reeler disc were visible to at least the extent shown in the seven photographs which were attached to the Shane Harris’ Statutory Declaration date 8 December 2003. The Jamec-Pem officer was interested in the mechanism, and handled it and examined it closely.”
I note that Mr Harris’s evidence contains no definitive statement that the whole mechanism was shown to the Jamec representatives. He only indicates that there was a “discussion of how the latch/free-run slider control worked”, but not what was in the mechanism itself. He also says that there was “an additional opportunity” for the Jamec representatives to look at the components, but no evidence whether they actually availed themselves of this opportunity.
Mr Juzva’s evidence is that the mechanism was removed and components were visible “at least the extent shown in the seven photographs which were attached to the Shane Harris’ Statutory Declaration date 8 December 2003”. These photographs would appear to show the invention. On this point I note that the reel admitted as further evidence does have a latching slot which is variable in length.
KMJ submitted that King was present at the meeting and knew what it was all about. King’s evidence is that he “was not invited to attend this meeting”. Nevertheless, he appears to agree that such a meeting did take place. However, throughout his letters King consistently states that what was made by KMJ did not include what he refers to as his “Patent novelty”. By this I assume he means the variability of the latching slot. Therefore, King reasons that it follows that what was shown to the Jamec representatives did not include the variable latching mechanism.
From the evidence it is clear that no sale was made on 10 December 1998. Rather, it would seem that a hose reel was shown to Jamec on 10 December 1998 and a Purchase Order for the reel was placed on 15 December 1998. The Purchase Order clearly states that delivery of the reels was “Required for February 1999”. This is after the priority date of the application. There is no evidence that Jamec had them before then.
Another point to note is that all through their evidence KMJ asserts that King’s latching mechanism was present in a product they called the “Easy Reel”. However, nothing on the order apparently placed by Jamec on 15 December 1998 is labelled as the “Easy Reel”. The order, which appears, for example, as Annex B to the declaration of Mr Harris, includes orders for 100 “10mm Air Reel”, 30 “Garden Reel”, 12 “Cold Wash Reel” and 12 “Hot Wash Reel”. No mention of “Easy Reel” is made. Consequently, I have no evidence that the reel admitted as further evidence is in fact identical to the one viewed by the Jamec representatives, beyond the “mere statement as to recollection” in the declarations. Indeed, the evidence seems to suggest that no “Easy Reel” was shown. Hence, given that I only have the uncorroborated statements by Harris and Juzva, there is some doubt as to what was shown.
Given the need that “an allegation of prior public use should be strictly proved”, and given the differences between the evidence of King and KMJ, the onus falls to KMJ to supply other, corroborating evidence. Corroborating evidence could have been supplied by evidence from the Jamec representatives present at the meeting as to what they discussed, saw and whether it was the “Easy Reel” that was displayed. However, none has been filed. Therefore, I do not believe that KMJ has discharged its onus of proving its case that the invention was disclosed at the meeting.
Based on the evidence before me, I cannot find that the claims lack novelty by way of prior use either at the meeting or in sales.
Construction of the Assembly Line and Manufacture of Reels on This Line
This is another situation where it appears that KMJ is arguing prior use. As such, the same standard of evidence applies as set out above.
The only evidence I have before me that may relate to the construction of the assembly and manufacture of hose reels is the photographs attached to Mr Harris’s and Mr Morcom’s declarations, as well as the actual hose reel used in the photographs that was placed in evidence at the original hearing. There are also copies of invoices from a company called Norvill Tooling Pty Ltd to Gamsee for work on “Hose Reel dies”, “Latching Cam and Pawl Tool” and “Cam & Pawl Die”. Even though KMJ was apparently set up to handle the manufacture and sale of the “Easy Reel”, and these invoices for work on tools and dies have been sent to Gamsee, as I noted above I will assume that what Gamsee knew was also known by KMJ.
From this evidence it would appear that KMJ is arguing that, since the hose reel in the photographs and further evidence shows the invention, it follows that the assembly line (which, I assume, used the tools and dies made by Norvill Tooling Pty Ltd) producing it must disclose the invention, as does every hose reel that comes off the assembly line.
It was freely admitted by KMJ at the original hearing that the hose reel put into evidence was not the one shown to Jamec. It was one which had been manufactured in early 1999. It follows that the photographs are not of the reel shown to Jamec. As I noted above, this reel has a latching slot which is variable in length. As I also noted above in my discussion on the meeting between KMJ and Jamec, I have no evidence that this reel is in fact identical to the one viewed by the Jamec representatives, beyond the “mere statement as to recollection” in the declarations of Harris and Juzva. Similarly, the invoices for work by Norvill Tooling Pty Ltd are not definitively stated to be for the “Easy Reel”. While I do not deny that work has been done on something, there is doubt as to whether that something is the “Easy Reel”. Therefore, the opponent has not established that the claims lack novelty in light of items (a) and (b) listed above.
Further Sales to Other Users from December 1998
This ground alleges sales of the hose reel to end users and retail establishments occurred from December 1998. I take “end users and retail establishments” to mean users and establishments other than Jamec, since Jamec is specially mentioned in a previous ground. However, there is no evidence of any exhibiting for, demonstrating to, or orders placed from, other companies in December 1998. Only a purchase order from Jamec has been exhibited.
The only evidence relating to possible sales of the reel to other companies is the table shown in Annex C to Mr Harris’s declaration. This table is headed “WEK Project Engineering Easy Reel Royalty Sheet” and, as such, appears to detail sales of the “Easy Reel” which allegedly embodies King’s invention. Clearly shown on this table is a column titled “Unit Sales”. Under this heading is listed the number of “units” (which I take to mean reels) sold per month from January 1999 to June 2003. As is clearly shown in the table, there were no sales of reels in January 1999. Given that the priority date of the application is 4 January 1999, the sales from February 1999 to June 2003 are not relevant to determining lack of novelty. Ignoring them leaves no sales prior to the priority date of the present application.
Consequently, as there is no evidence of any sales to other companies prior to January 1999, I cannot find that these sales deprive the claims of novelty.
Disclosure of the Latch Design by King to KMJ
King consistently maintained throughout his evidence that the hose reel produced by KMJ did not incorporate his novel latching feature. Nevertheless, it is quite clear from the “evidence” of King that he (and his brother) approached either Gamsee or KMJ well before the priority date of 4 January 1999 with a fully developed hose reel design. King clearly admits that he supplied drawings to Gamsee/KMJ. These drawings were exhibited by Mr Juzva in his second declaration. Furthermore, Mr Juzva stated in his last declaration that he considered:
“that the supply of drawings to Gamsee in 1997/1998 and the other aspects of the consultancy provided by Bill and Ted King to Gamsee and KMJ during 1998 amounted to a non-confidential disclosure of the alleged invention by both Bill King and Ted King.”

King responded to this stating:
“To my knowledge Mark Juzva was not involved in any discussions or terms relating to Gamsee Industries’ decision to proceed with the hose reel project and his reference to non-confidential disclosure is incorrect, as there is not anything disclosed in the drawings that would enable anyone to relate them to the novelty in the latching functions as described in my Patentable Claim.”
However, this is inconsistent with King’s assertions (which are supported by the dates on the drawings sheets) that he developed the latching mechanism well before he approached Gamsee/KMJ. For example, King states in his declaration dated 9 February 2005:
“the reeler product was fully developed by Kings for a considerable period before they offered a make and sell proposal” (my emphasis)
If the drawings do not embody the latching mechanism that King maintains confers novelty on his patent, it would have been developed after King approached Gamsee/KMJ, which would contradict his assertions. Looking at the drawings it is clear that there is no drawing that shows the hose reel completely assembled However, what is shown are latching cams, pawls and slots which closely (if not exactly) match what is shown in the figures of the present application. Given this very close similarity between what is described in the application and what is shown in the drawings and King’s continued assertion that he approached Gamsee with a fully developed latching system, it follows that the latching mechanism shown in the drawings do embody King’s novel latching mechanism. Therefore, I infer that the drawings set out King’s invention.
King states on more than one occasion that there was no agreement to assign his invention to KMJ, and that KMJ were well aware of his intention to file a patent application. Nevertheless, I note that while King appears to have supplied KMJ with an example of a license agreement, there was no evidence of any explicit confidentiality agreement or statement actually being made between King and Gamsee or KMJ.
It might be argued that there was an implied confidentiality agreement between King and KMJ, and that the drawings were not publicly available.
It was stated by Drummond J. in Stanway Oyster Cylinders v Marks (1996) AIPC 91-255 that:
"The concept of information being " publicly available" involves, in addition to its being accessible to the public, that a person to whom the information is disclosed in that person's capacity as a member of the public is free, in law and equity, to make use of the information."
In Coco v A N Clark (Engineers) Ltd (1969) RPC 41 Megarry J applied a "reasonable man" test on the confidentiality issue. He said:
"It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence."
Also I note that the delegate of the Commissioner in Bevan James Riekie and Arthur Simpfendorfer v M J McGrath Pty Ltd and Calsil Limited [1985] APO 31 stated:
"It seems clear on the authorities that a duty of confidence does not have to be specified in order to be existent. Furthermore, the existence of an implied duty of confidence does not have to be comprehended by the individual who incurs that duty, although if this be the case it may strongly suggest that such a duty did not exist." (my emphasis)
There is nothing on the drawings to indicate that their contents are to be kept confidential. There is no mark of “In Confidence” or something similar. In my opinion, this lack of marking would not lead KMJ to realise that what was being disclosed to them by King was to be kept confidential.
It could be argued (although no party put it forward) that since King informed KMJ that he was seeking a license agreement with them that may have implied confidentiality. This argument can be rejected. As noted above, KMJ were presented with an example of a license agreement. This, and King’s desire to achieve a license, would imply that KMJ were being offered advantageous access to intellectual property that was not available to other parties or the general public. The natural inference is that, in offering a license, King had already attended to the protection of his intellectual property. Under these circumstances, and in the absence of any explicit confidentiality clauses or agreements from King, I cannot see how KMJ would be expected to infer that any confidentiality was attached to King’s offer.
In my opinion the drawing sheets were disclosed, without inhibiting fetter. There is no inkling in the evidence that confidentiality existed in the disclosure of King to KMJ. Following Bristol Myers' Appln [1969] RPC 146, this is enough to render the sheets publicly available. Given that these drawings were supplied by King, and given that King clearly states that he approached either Gamsee or KMJ to help, not with development, but with production of his invention, I am of the opinion that the drawings show King’s invention and were disclosed to another party before the priority date of the application.
Therefore, it would follow that King disclosed his invention before the priority date of 754492. As such, the invention as defined in the claims is not novel.
Secret Use with Items (a) – (d)
I am of the opinion that the ground of secret use cannot be made out. It is clear to me that items (a)–(d) are all directed to disclosure of the invention by prior public use. The equivalence of items that show prior public use or secret use cannot be used for both. If the items are meant to show prior public use, they cannot show secret use. Similarly, if the items show secret use they cannot be used to show prior public use. It follows from all this that the ground of secret use cannot be made out. The evidence does not establish it.
Inventive Step
As with section 40 and manner of manufacture, KMJ made no submissions on this ground. The particulars state that the claimed invention lacks an inventive step in view of what was known in Australia from the prior art for novelty considerations, standard encyclopaedias, handbooks and catalogues and the common general knowledge of the person skilled in the art.
No encyclopaedias, handbooks and catalogues were supplied and no evidence of the common general knowledge of persons skilled in the art was given.
However, King’s disclosure to KMJ presents a total solution to the problem that is identified in the specification. As such, the invention cannot be considered to have an inventive step. This ground is made out as a result of the disclosure by King of his invention to KMJ.
CONCLUSION
I find that the invention defined in the claims is not novel and lacks an inventive step by way of the disclosure made by King to KMJ before the priority date of the application. The nature of this disclosure is such that I cannot see how the claims could be amended to include subject matter that was not disclosed before the priority date. I am left with no alternative but to refuse the application
COSTS
It is normal practice in oppositions that costs follow the event. In this case KMJ has been successful in their opposition. I see no reason why the normal practice should be varied. I award costs against King.
GREG POWELL
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Applicant represented himself
Patent attorneys for the opponent : Morcom Pernat, Melbourne