22 September 2005

Latching Device Lacks Novely

On 8 September 2005, the Delegate of the Commissioner of Patents handed down William King v KMJ Corporation Pty Ltd [2005] APO 37.

Background

King filed patent application no. 754492 on 4 December 2000. After some initial confusion, it was established that the patent application had a priority date of 4 January 1999. The application was duly accepted and advertised for opposition purposes. KMJ opposed the application on a number of grounds, including lack of novelty and inventive step.

The Invention

The broadest claim (claim 1) of the patent application read: "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."

Disclosure in Meetings

Initially, KMJ attempted to show that there had been disclosure of the invention in certain meetings before the priority date. The Delegate accepted that these meetings had taken place, but could find no corroborating evidence for what had transpired at those meetings. The importance of adequate and corroborating evidence was emphasised. The Delegate referred to Paul Andrew Cronk v The Sunnyfield Association 2003 APO 27, where it was held that in order to be invalidating, the prior use must be "informative" in the sense that all the essential features of the invention are made available to the public. In Windsurfing International Inc v Borsimex Pty Ltd, (1984) AIPC 90, Waddell J set out that 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 Delegate was not presented with any corroborating evidence supporting statements made by KMJ. Accordingly, the Delegate held that the onus on KMJ to present such evidence had not been discharged, and that the claims of the application did not lack novelty as a result of disclosures made during the meetings.

Drawings

Unfortunately for King, KMJ produced drawings which (supported by King's assertions) were handed to KMJ before the priority date of the patent application. The drawings were very similar to the drawings of the patent application. Furthermore, one of King's assertions was that he approached KMJ with a fully developed latching system. The drawings were dated before the priority date and had no markings indicating that they were to be regarded as confidential. In this regard, the Delegate referred to Stanway Oyster Cylinders v Marks (1996) AIPC 91 in which it was held that information which is publicly available includes that information disclosed to a person such that the person is free in law and equity to make use of the information. The Delegate held that the drawing sheets were disclosed "without inhibiting fetter" and that there was "no inkling" in the evidence that confidentiality existed in the disclosure of King to KMJ.

Conclusion

The case illustrates two important points: Firstly, it is extremely difficult to show that novelty is destroyed by mere verbal disclosure. Secondly, it would appear that the bar for what can be regarded as confidential information is rather low. By default, inventors should mark all drawings as confidential, especially before a patent application is filed.

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