Alcatel NV v The Comissioner of Patents

[1996] FCA 650

CATCHWORDS

PATENTS - novelty - whether 1990 Act has changed the concept of novelty - prior claiming - whether the 1990 Act has effectively introduced an expanded concept of prior claiming under the rubric of novelty.

STATUTORY INTERPRETATION - context requiring acceptance of illogical construction.

Patents Act 1990, ss. 7, 18, Sched. 1

Sunbeam Corporation v Morphy-Richards (Aust.) Pty. Ltd. (1961) 180 CLR 98
Otto v Steel [1886] 3 RPC 109
NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1993) 44 FCR 239
Busby v Chief Manager, Human Resources Department, Australian Telecommunications Commission (1988) 20 FCR 463

ALCATEL NV -V- THE COMMISSIONER OF PATENTS

NG 240 of 1995

Burchett J.
Sydney
16 July 1996

IN THE FEDERAL COURT OF AUSTRALIA )  
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 240 of 1995
  )
GENERAL DIVISION                 )

BETWEEN:ALCATEL NV

Applicant

AND:THE COMMISSIONER OF PATENTS

Respondent

CORAM:    Burchett J.
PLACE:    Sydney
DATE:     16 July 1996

MINUTE OF ORDER

THE COURT ORDERS THAT the application be dismissed with costs.

NOTE:     Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )  
  )
NEW SOUTH WALES DISTRICT REGISTRY )    NG 240 of 1995
  )
GENERAL DIVISION                 )

BETWEEN:ALCATEL NV

Applicant

AND:THE COMMISSIONER OF PATENTS

Respondent

CORAM:    Burchett J.
PLACE:    Sydney
DATE:     16 July 1996

REASONS FOR JUDGMENT

BURCHETT J.:

This is an appeal pursuant to s.51 of the Patents Act 1990 (the Act) from a decision of a Deputy Commissioner of Patents. The matter is wholly governed by the provisions of the Act.

The circumstances that give rise to the question debated in this court are easily stated.  After the priority date claimed in the applicant's patent application (2 October 1991), and after the date of the filing of the application (29 September 1992), there was published (on 3 December 1992) a prior patent application, which had been filed earlier and had an earlier priority date.  It had been filed on 25 May 1992, and its priority date was 31 May 1991.  The question thus raised relates to the material to which regard may

legitimately be had when the novelty of the invention claimed in the present application is examined.  Are disclosures made in the prior patent application to be taken into account, notwithstanding that its publication was delayed until after both the priority date and the date of filing of the application under consideration?

Section 18 of the Act contains the following provision:

"(1)Subject to subsection (2) [not presently relevant], a patentable invention is an invention that, so far as claimed in any claim:

(a)is a manner of manufacture within the meaning of section 6 of the Statute of Monopolies; and

(b)when compared with the prior art base as it existed before the priority date of that claim:

(i)is novel; ...".

Section 7 of the Act contains the following provision:

"(1)For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

...

(c)prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of 'prior art base' in Schedule 1."

Both of these sections make reference to "the prior art base", and section 7 also makes reference to "prior art information". Schedule 1 contains, subject to any contrary intention appearing, definitions of those expressions. "Prior art information" is defined to mean "for the purposes of subsection 7(1) - information that is part of the prior art base in relation to deciding whether an invention is or is not novel". "Prior art base" is similarly defined so as to include:

"(b)in relation to deciding whether an invention is or is not novel:

...

(ii)information contained in a published specification filed in respect of a complete specification where:

(A)if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and

(B)the specification was published after the priority date of the claim under consideration; and

(C)the information was contained in the specification on its filing date and when it was published".

Counsel for the applicant made the following submissions.  At the heart of the concept of novelty is the idea that the thing has not previously been disclosed to the public.  As Windeyer J., looking at the matter in historical terms, said in Sunbeam Corporation v Morphy-Richards (Aust.) Pty. Ltd. (1961) 180 CLR 98 at 111-112:

"When want of novelty was asserted, the thing or process claimed as an invention was assumed to be an invention that is the product of the inventive faculties; but it was said that it was not now at the date of the patent, having been earlier invented and disclosed to the public.  ...  Since the question was, 'is it new or has it been earlier disclosed?', it was immaterial whether or not it had become known to many people or to few people.  A description in an obscure publication would suffice to destroy novelty, provided that it was a publication, that is to say that the document whether or not it was read generally by the public, had been available to the public: and similar considerations applied to publication by user."

The distinction taken by Windeyer J., in the last part of the passage quoted, may be illustrated by reference to Otto v Steel [1886] 3 RPC 109, where Pearson J. held there was not a publication by virtue of the inclusion of a description of the invention in a French book held in the inner room of the library of the British Museum, a room to which the public did not normally have access. See Ricketson on the Law of Intellectual Property (1984) at 934. Basing her argument on this principle, counsel submitted that novelty as at the priority date could not possibly be destroyed by a document that was only published later. She drew attention to the statement in NV Philips Gloeilampenfabrieken v Mirabella International Pty Limited (1993) 44 FCR 239 at 253 that "the grounds of revocation under the 1990 Act ... , though in some cases ... expressed in different terms, are essentially the same as the grounds previously available under s100 of the 1952 Act", and submitted that the meaning of novelty must therefore be regarded as essentially unchanged. Counsel's argument fastened on the ungainly language of section 7. Read literally, the opening words of the section say that an invention shall be deemed novel ("is to be taken to be novel") unless not in fact novel ("unless it is not novel") in the light of the kinds of information specified in the section.

Counsel's argument is ingenious.  Certainly, and unfortunately, the section is not a model of the draftsman's art.  But although the logic of the construction may be defective, the meaning is reasonably plain.  In such a situation, mere logic must give way to the true legislative intent:  Busby v Chief Manager, Human Resources Department, Australian Telecommunications Commission (1988) 20 FCR 463 at 468. The interconnected language of section 7 and the definitions in Schedule 1 would make no sense unless the word "novel" in section 7 is to be read as referring to the modified concept of novelty that those provisions introduce. Applying paragraph (b) of the definition of "prior art base" to the question to which the definition itself purports to relate (it is a definition "in relation to deciding whether an invention is or is not novel"), the reader is required to take account of information of the kind specified in sub-paragraph (ii). Thus the existence of information of that kind may determine whether the invention is or is not novel.

It must be admitted that this conclusion involves the recognition of a small shift, effected by the Act, in the meaning of novelty.  But I do not think there is any conflict with the passage cited by counsel for the applicant from the decision in NV Philips.  That passage expressed a generalisation, and the court was not at all suggesting there were no changes of detail to be found in the Act in respect of the concept of novelty.

If, contrary to my opinion, the verbal and logical infelicity with which section 7 is constructed should be regarded as making the section ambiguous, then resort could be had to the 1984 report of the Industrial Property Advisory Committee on Patents, Innovation and Competition in Australia, on which the relevant provisions of the Act were based. That report makes plain the intention to subsume the doctrine of prior claiming, as understood under the 1952 legislation, within an expanded doctrine of novelty. See paragraph 7.3. The committee thought the "prior claiming approach has proved to be unsatisfactory in practice and, in our opinion, it is too narrow." It thought the law should be that a claim to an invention might be anticipated by "any disclosure contained in an earlier specification", that is a specification having an earlier priority date, "notwithstanding that at the priority date of the claim in question, the earlier specification was unpublished and its contents were not publicly available." This was to expand the notion of prior claiming, which was limited to the specific claims made in the earlier specification.

If the applicant's argument is correct, by virtue of the Act the doctrine of prior claiming has disappeared, but nothing has replaced it. This would be an extraordinary effect to give to provisions the object of which was to expand that doctrine, not to eliminate it. In my opinion, any ambiguity that there may be in section 7 is removed by a consideration of the report implemented by the Act, which confirms the construction I would otherwise have adopted.

The application is dismissed with costs.  Reference was made at the hearing to the possibility of the lapsing of the application for the patent under s.142(2)(e) of the Act.  But regulation 13.4(1)(h) seems to cover this question.  If any extension of time is required, I would be prepared to make an order under subregulation (4) of that regulation.

I certify that this and the preceding six (6) pages are a true copy of the Reasons for Judgment herein of his Honour Justice Burchett.

Associate:

Date: 16 July 1996.

Counsel for the Applicant:       Ms J. Baird

Solicitors for the Applicant:        Duffield & Duffield,      Solicitors as agents    for M.J. Berghouse,    Solicitor

Counsel for the Respondent:      Dr A.C. Bennett, SC and Mr S.C. Burley

Solicitors for the Respondent:    Australian Government Solicitor

Date of hearing:                 2 August 1995