Anchor Wall Systems Inc v Keystone Retaining Wall Systems Inc

[1996] APO 33

official notice

decision of a delegate of the commissioner of patents

Petty patent  :          No. 650230 in the name of ANCHOR WALL SYSTEMS, INC

Title:          Composite masonry block

Action:          Application under s.69 for an extension of term of the petty patent;  notice by KEYSTONE RETAINING WALL SYSTEMS, INC under s.28(1);  hearing.

Decision:          Issued

Abstract:The invention relates to a masonry block for use in building retaining walls.

The claimed invention did not lack novelty based on material identified in the s.28(1) notice.

Material filed after the time for filing notices under s.28(1) did not establish that a prior public use of a block having the features claimed existed before the priority date. Given that conclusion, no action was taken under s.28(3).

The priority date of the claims was considered and found to originate from AU application 72631/91.  Application 72631/91 found to be a Convention application under the act with US application 534831 being the basic application. 
US 534831 indicated that it was a continuation-in-part of
US applications 413400 & 413050.  US applications 413400 & 413050 sought protection for “the new and original design” for a block, ie. they were equivalent to design applications in Australia.   US applications 413400 & 413050 found not to meet the requirements of a “basic application” in the terms of the act.  Accordingly the claims of the petty patent found to have a priority date of 7 June 1990, the filing date of US application 534831.

Extension of term granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Petty Patent No. 650230 by ANCHOR WALL SYSTEMS, INC,  application under s.69 for an extension of term of the petty patent;  and a notice by KEYSTONE RETAINING WALL SYSTEMS, INC under s.28(1) regarding the petty patent.

background

The Petty Patent

Petty patent 650230 was sealed on 9 June 1994. The petty patent was granted on an application (numbered 59473/94) which was filed on 14 April 1994 as a divisional application from standard patent application 35420/93 pursuant to s.39 of the Patents Act 1990. Application 35420/93, which was filed on 24 March 1993, was itself a divisional application from application 72631/91 originally filed on 6 March 1991. Application 35420/93 has lapsed and application 72631/91 matured into a standard patent (numbered 638554). The patentee ANCHOR WALL SYSTEMS, INC (hereafter referred to as “Anchor”) applied under s.69 for an extension of term of the petty patent on 2 May 1995.

On 9 May 1995, KEYSTONE RETAINING WALL SYSTEMS, INC  (hereafter referred to as “Keystone”) notified the Commissioner of Patents of matters pursuant to s.28(1) of the act.  The Commissioner gave a copy of the notice to Anchor and, in line with his practice in these matters, allowed Anchor a period of 3 months in which to lodge any evidence in response to the notice.  Anchor filed material in response on 16 August 1995, a copy of that material was provided to Keystone and the parties were advised that the matter would be set for hearing. 

The hearing was held in Canberra on 20 December 1995.  Anchor was represented by Mr B J Hess of counsel and Mr G Munt, patent attorney, with Mr P Fisher, patent attorney, also in attendance representing the interests of the exclusive licensee of the petty patent Besser Pioneer Pty Ltd.  Keystone was represented by Mr D Yates of counsel and Mr B Munday, patent attorney.

Infringement actions

By letters dated 8 March and 28 April 1995 solicitors Phillips Fox advised the Commissioner of infringement actions commenced in the Federal Court of Australia in relation to Petty patent 650230 against several companies (actions QG29 of 1995 and QG60 of 1995).  Action QG60 of 1995 was the subject of consent orders made on 19 May 1995.  I understand that action QG29 of 1995 is still pending.

THE specification

The specification describes as the invention a “Composite Masonry Block” which may be used in landscaping situations such as for building soil retaining walls.  Some prior art blocks and their shortcomings are discussed in the specification.  The blocks of the present invention are intended to be used without mortar in the construction of retaining walls and have a construction which enable a particular “setback” of the blocks from a course of blocks to the course of blocks laid immediately below.  The blocks also have a shape which allows curved or serpentine shaped walls to be formed.

The claims of the specification are as follows:

1.        A composite masonry block comprising:

(a)       a block body, said block body comprising a front surface and a back surface separated by a distance comprising the depth of the block, an upper surface and a lower surface separated by the distance comprising the height of the block, and first and second sidewall surfaces adjoining said block upper and lower surfaces, both said first and second sidewall surfaces each comprising a first and second part, said sidewall first part surfaces extending from said block front surface at an angle of less than 90 degrees in relation to said block front surface, and said sidewall second part surfaces adjoining and lying between said sidewall first parts and said block back surface and converging towards said block back surface; and

(b)       a flange affixed in the block adjacent said rear surface and extending downwardly from said block body, said flange comprising a locking surface adapted in use in the construction of a retaining wall from a plurality of the blocks to nest with blocks in a lower course of the blocks, said locking surface extending downwardly from the plane of said block lower surface, and said flange further comprising a setback surface extending between said block back surface and said locking surface, said setback surface having a width ranging from 0.5 inch to 2 inches.

2.        The block of claim 1, wherein said block body comprises at least one core.

3.        The block defined in claim 1 substantially as hereinbefore described with reference to Figures 4 to 6.

the s.28(1) notice and response material

The s.28(1) Notice

The s.28(1) notice referred to, and included copies of, various documents.  The documents were:

1. US Patent No. 2313363 (Schmitt)

1. US Patent No. 4229123 (Heinzmann)

1. US Design Patent 298463 (Forsberg)

1. Swiss Patent No. 657172 (Tobag) and certified translation thereof

1. European Patent No. 215991 (Rossi) and certified translation thereof

1. European Patent No. 362110 (Rossi) and certified translation thereof

1. Statutory Declaration of Fiona Margaret Bathgate with Annexures "A" and "B", those annexures being extracts from the Journal, "Landscape Architecture" of August 1990

1. Letter from the Patent Office dated 26 April 1995 providing OPI dates for specifications US 4229123, US 2313363, CH657172, EP215991 and EP362110

1. Statutory Declaration of Brian Marsden Munday re the availability in Australia of the abstract of US Design Patent 298463.

In submissions which accompanied the notice, Keystone asserted that the claimed invention either lacked novelty or an inventive step given disclosures in the documents mentioned.  Keystone also submitted that the earliest valid priority date of the claims of Petty patent 650230 was the filing date of application 72631/91, namely 6 March 1991, and not an earlier date of 7 June 1990 which may arise from convention priority for application 72631/91.

Response Material

In its response material, Anchor provided submissions contesting the claim that the invention lacked an inventive step, pointing out that there was no evidence presented of common general knowledge in the art.  The lack of novelty claims by Keystone in its notice were also contested.  Furthermore the issue of the priority date of the petty patent claims being at earliest 6 March 1991 was contested.  In support of the latter issue, a copy of The International Convention for the Protection of Industrial Property (the “Paris Convention”) and an affidavit dated 11 August 1995 by R Carl Moy was presented.

Submissions at the Hearing

Each party provided submissions at the hearing elaborating on their respective positions concerning the validity of the claims of the petty patent.  I will refer to relevant points where necessary later in my decision.

other material filed

On 5 December 1995 patent attorneys Spruson & Ferguson, apparently on behalf of Keystone, filed with the Commissioner a letter and copies of various affidavits.  The text of the letter is as follows:

“We refer to S. 28(3) of the Patents Act 1990, and wish to make the Commissioner aware of the following documents that we consider affect the validity of petty patent No. 650230.

As is apparent from the cover of each document, all are Affidavits filed in the Federal Court of Australia, Queensland District Registry, General Division in proceedings No. QG29 of 1995.

1.        Affidavit of Wayne Evans dated 10 July 1995 together with Exhibits WE-1, WE-2, WE-3, WE-4, WE-6, WE-7 and WE-8.  Please note that Exhibits WE-5 and WE-9 are physical blocks that may be inspected by arrangement at the offices of Sprusons:Solicitors, Level 32, St Martins Tower, 31 Market Street, Sydney, NSW, 2000.  This Affidavit was filed in the Federal Court of Australia on 19 September 1995.

2.        Affidavit of Wayne Evans dated 18 July 1995, filed in the Federal Court of Australia on 19 September 1995.

3.        Affidavit of Wayne Evans dated 31 October 1995 and Exhibits WE-10, WE-11 and WE-12, filed in the Federal Court of Australia on 2 November 1995.

4.        Affidavit of Kathleen May Evans dated 12 September 1995, filed in the Federal Court of Australia on 19 September 1995.

5.        Affidavit of Simon Dudley Williams dated 30 October 1995 together with Exhibits SDW-1, SDW-2, SDW-4, SDW-5, SDW-6, SDW-7, SDW-8, SDW-9, SDW-10, SDW-11, SDW-12, SDW-13 and SDW-14.  Please note that Exhibit SDW-3 is identical to Exhibit WE-5, referred to above.  Mr William's Affidavit was filed in the Federal Court on 2 November 1995.

We are providing the attorneys for the patentee with a copy of this letter and all the above documents including Exhibits.”

As indicated in the letter, the affidavits in this material were filed in relation to the pending court action concerning Petty patent 650230 (action No. QG29 of 1995).  The general nature of this material is to the effect that Wayne Evans’ company, Modalworth Pty Ltd, manufactured and offered for sale in Queensland a building block having features of, or similar to, the claimed block of Petty patent 650230 in late December 1989/early January 1990.  A small retaining wall at the company’s premises is said to be made of these particular blocks and is said to be have been built in January 1990.  It is further said that the wall and blocks for sale were available to be viewed by customers visiting the premises. 

Action QG60 of 1995, previously mentioned, was against Modalworth for infringement of Petty patent 650230 and, according to Evans, Modalworth decided to consent to orders and settle that action.  Evans says that at the time he was not aware that the blocks he says his company made in December 1989 could affect the validity of Petty patent 650230.  Mr Williams says in his affidavit that on 23 May 1995 he first became aware that Modalworth may have made a block similar to that claimed in Petty patent 650230.  Mr Williams, a solicitor, acts for Keystone and did not act for Modalworth in its court action brought by the petty patentee.
The above material was filed outside the time period permitted under the act for a person to file a notice under s.28(1). No doubt this is why the letter draws attention to the provisions of s.28(3) and at the hearing Mr Yates conceded that it properly needs to be considered under s.28(3). This subsection provides as follows:

“If the Commissioner becomes aware, otherwise than by a notification under subsection (1), of any matter that may affect the validity of a petty patent on one or more of the grounds mentioned in that subsection, the Commissioner must inform the patentee in writing of the matter.”

Reg. 6.6(1) makes it clear that the Commissioner must consider any matter provided to the patentee under s.28(3) in deciding the application for extension of term. However the Commissioner has followed a practice whereby a party who has filed a s.28(1) notice is only entitled to be heard on material filed within the time period prescribed for filing such a notice (see Re Applications by Yamazaki Mazak Corporation concerning petty patents 601140 & 601669, decision issued 21 January 1993, unreported, page 18).  Thus, as the other material was filed after this period, the party filing the material would, in line with practice, not be entitled to be heard on it.

At the hearing Mr Hess submitted that it was not appropriate for submissions to be advanced regarding this other material at that time.  He said the evidence in the material provided was one-sided and Anchor would seek to challenge some of Mr Evans’ evidence, but it was not yet in a position to do so since its own affidavits for the court action were still to be prepared and filed.  He suggested the Commissioner could defer consideration of this material to a later time when Mr Evans could be cross-examined and submissions made, or, given that this material will be highly contested by Anchor, the Commissioner could consider leaving the material to be fully examined and dealt with in the court proceedings.

Mr Yates submitted that Keystone would like to be heard by the Commissioner on the evidence constituting the other material.  Moreover if Anchor wished to challenge the evidence, then it was difficult to see how Keystone could not be present or participate in proceedings which involved cross-examination.

At the hearing I reserved my decision on how to deal with the other material filed.  However at the hearing I permitted Mr Yates to make some general submissions regarding the other material.

decision

The other material filed

Various issues and questions arise concerning the other material filed on 5 December 1995 by Spruson & Ferguson.  In particular:

• Is there matter in it which “may” affect the validity of Petty patent 650230?

• If yes, is that matter uncontrovertible or open to possible challenge?

• Should the Commissioner inform Anchor under s.28(3)?

• If Anchor answers any s.28(3) notice with evidence and/or a challenge to the evidence in the other material, what procedure should the Commissioner adopt?

• Should Keystone be heard on the other material or be party to any hearing where cross-examination of declarants Evans, Evans and Williams could occur?

The material filed with the Commissioner on 5 December 1995 goes to the issue of lack of novelty of the petty patent in suit.  In general the evidence asserts that Mr Evans’ company, Modalworth, manufactured and made available to the public a particular block which had features of, or similar to, the claimed block of Petty patent 650230.  Thus a possible prior use situation is inferred prior to the priority date of the claims to thus render the claims not novel and the petty patent invalid.  The earliest possible priority date is 7 June 1990 and the alleged prior use is said to have arisen by January 1990.

Generally speaking, this material may affect the validity of Petty patent 650230.  A prior public use of a composite block having features as claimed in the petty patent would render the patent invalid.  However the prior use must have been in public and have involved a block having features of the invention claimed.  It is well accepted in patent law that “proof of prior user in opposition cases should be very clear” (see Seiller's Application [1970] RPC 103 @ 106), and in my view no lesser standard should be applicable to considerations under s.69. In Seiller's Application it was said:

“In my judgment 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.”

Photographs said to be of a block available in January 1990 are exhibited to Mr Evans’ declaration, and in my view these show a block having all the features of the claimed block.  At the hearing Mr Hess said Anchor would, if required, contest Mr Evans’ declaration as a matter of fact and said his evidence should not be trusted.  I have decided not to invite submissions from Anchor about this other material because I consider that the evidence by Mr Evans and Mrs Evans is somewhat less than “very clear” to satisfy me of a prior use of a block having features in accord with the claimed invention. 

Mr Evans’ statements about the block he says he produced in December 1989/ January 1990 are essentially uncorroborated - I consider Mrs Evans’ declaration to be of little weight in this regard.  On the one hand I have some doubts that Mrs Evans’ evidence is truly independent since she states in para 2,  “I recall from my discussions with my husband ....”.   On the other hand whilst Mrs Evans states she is “generally aware of the day to day activities” of her husband and makes statements based on “my observations as to his activities at the relevant time”, she is as imprecise as Mr Evans about the time these blocks were said to have been produced and displayed for sale (“in late December 1989 or early January 1990”).  As to Mr Evans’ evidence, he links the production of blocks to the building of a retaining wall (said to have been in January 1990) for a ramp for a new materials bin at his plant, but there is no evidence to even establish that such a bin was installed at that time.  Also, Mr Evans says that “in about early to mid 1990” he showed a Mr Molar samples of the particular blocks and other statements by him in the evidence imply other persons may have seen the blocks at the plant and supply yard.  However there is no evidence before me other than from Mr and Mrs Evans to unequivocally establish that these blocks were produced when stated and were known and available to the public from early 1990.

Consequently, on the basis of this other material before me, I am not satisfied that a prior public use of a block having the features claimed existed before the priority date. Given my conclusion, I would not be in a position to find that the patent offends against s.18(1)(b) due to a prior use. In the circumstances of this extension of term matter, I do not believe that action under s.28(3) is needed regarding the other material since the material will not affect my decision under s.69(2) on the extension of term, and I decide not to take action under s.28(3).

Given my decision not to inform Anchor under s.28(3) regarding the other material, several issues and questions raised earlier do not now require resolution. However I venture to observe that action under s.28(3) is ex parte between the Commissioner and the patentee and thus I see no right of involvement of a third party in testing or analysing the matter being the subject of a s.28(3) notice or of material provided by a patentee in response. Furthermore if a patentee files response material to such a notice, then the Commissioner would need to set a procedure appropriate to the circumstances to enable the patentee its right to be heard on the matter before a decision is made.

The invention claimed

At the hearing there was little analysis of the claims in terms of the precise scope of the invention claimed.  There are however several matters which require consideration due to their potential impact on novelty and inventive step issues.

Firstly, claim 1 ends with a definition of the “setback surface” of the block “flange”, namely:

“said flange further comprising a setback surface extending between said block back surface and said locking surface, said setback surface having a width ranging from 0.5 inch to 2 inches”.

From this I construe the setback surface for a block to have a uniform width within the range mentioned rather than a width that varies across the block.  A uniform width of the setback surface permits uniform setback of like blocks.  As to the actual range defined, as no dimensions of the block are specified, the importance to the invention of the range specified is not immediately evident.  However the claim defines the flange with reference to its “in use” requirement and thus the flange and its setback surface need to permit suitable setback for a particular block size being used.  The range specified can be taken to indicate the maximum and minimum width of setback.  Without linkage to block size, there is no particular significance for specific values within the range.  In my view, the specific range defined is not an essential feature of the invention.

Secondly, claim 1 in para (a), in defining the block body defines:

“said sidewall first part surfaces extending from said block front surface at an angle of less than 90 degrees in relation to said block front surface”.

There was no discussion of this definition at the hearing, the parties seemingly taking the view that the requirement was for the first part surfaces of the sidewalls to be angled relative to the front surface generally as illustrated in Figure 5.  In Figure 5, the first part surfaces of the sidewalls are shown diverging toward the back surface.

Normally where something is at an angle of less than 90 degrees to something else, there results an acute included angle between the two things.  Where an object is under consideration, such as a box, a side wall would usually be said to be at an angle X to another side (or end) wall, ie. there is an included angle X between those sides.  However, in the case of a block for example, it is not immediately clear what is meant by a side surface extending at an angle to another (adjoining) side or end surface.  It suggests, and I believe it is reasonable to interpret it as, an angle between the surfaces measured external of the block.  In the present definition under consideration, the sidewall first part surface is defined extending at an angle “in relation to” said block front surface, suggesting an angle external of the block.  If the reference “in relation to” is equated to “to”, and if the angle is less than 90 degrees, an absurd construction would arise - the front surface and the two first part sidewall surfaces would have to be facing each other, an impossible structure given the remaining requirements of the block definition.  Thus is there another interpretation for the reference “in relation to”?  There is here an uncertainty in the definition and I believe it is appropriate to resort to the rest of the specification to resolve the uncertainty.

Firstly, on page 7 of the description, after a reference to Figures 2 and 5, there is a general reference to the sidewall first part surface extending “at an angle of no greater than ninety degrees in relationship to the block front surface”.  Secondly, on page 9 at line 3, there is reference to the first parts extending “from the block front surface at an angle, alpha, of approximately ninety degrees towards the block back surface, Fig. 2.”  In Figure 2, which is a plan view of a block, the angle alpha is shown between the first part surface and a line being a projection of the front surface.  At line 15 of page 9 the description states:

“The angle, beta, of the sidewall second (sic) preferably ranges in magnitude from about 30 degrees to about 60 degrees in relation to the block back surface, Fig. 2.”

This sentence is clearly referring to the sidewall second part surface.  In Figure 2, the angle beta is shown between the second part surface and a line being a projection of the back surface.  Thirdly, also on page 9 at line 30, there is this description:

“Alternatively, the first part of the sidewall surfaces may have an angle, alpha, which is less than ninety degrees, Figs. 4-6.”

Figure 5 is a plan view of a block of different shape to that in Figure 2.  The angle alpha shown in Figure 5 is between the sidewall first part surface and a line being a projection of the front surface.

It is clear from these references that the angular relationships discussed are with reference to the block’s front or back surfaces by way of a projection thereof.  The reference “in relationship to” is used on page 7 referring to the block front surface.  The reference “in relation to” as used in the claim is only used specifically in the description in describing the second part surface angled to the block back surface, in reality to a projection of the back surface.  I believe it is appropriate to apply an equivalent meaning to its use in the claim referring to the block front surface.  With that meaning the claim defines a block structure where the first part surfaces of the sidewalls are so disposed as to relate to the block front surface in the manner as depicted in Figure 5.  With that construction I note that the omnibus claim 3, by including reference to claim 1 and Figures 4 to 6, is capable of clear meaning being restricted to a block having the essential features defined in the form described with reference to those figures.  Thus while claim 1 on interpretation, after having to resort to the body of the specification, defines a monopoly in general accord with the embodiment of Figures 4-6, as the parties appeared to acknowledge at the hearing, I am in no doubt that the claim could have been better drafted to avoid any uncertainty of its meaning and scope.

Novelty

The law
Both parties in their submissions referred to the law on anticipation or want of novelty.  Whilst their submissions were essentially in agreement, there were some differences mainly concerning the treatment of features which may not be essential of the claimed invention.

The law regarding novelty has been extensively reviewed in judgements by the Federal Court of Australia in recent years.  These judgements indicate that the generally accepted test is the “reverse infringement” test (see eg. R D Werner & Co Inc v Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679 and Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513). In Yamazaki Mazak v Interact Machine Tools 22 IPR 79, Justice Gummow summarised the law thus (at p91):

"Where the patent under challenge claims a combination and the alleged anticipation does not incorporate the integers of the combination claim, so that the alleged anticipation would not constitute an infringement, there is no anticipation: Meyers Taylor Pty Ltd v. Vicarr Industries Ltd ( 1977) 137 CLR 228 at 235, per Aickin J. Where the alleged anticipation is a prior patent specification, there may be fertile ground for debate in a comparison with the specification in suit as to whether the prior disclosure sufficiently reveals the essential integers. The alleged anticipation is to be treated as read by a skilled addressee. The disclosure will fall short of an anticipation of the combination claimed, if what is required of the skilled addressee is the exercise of inventive ingenuity or the taking of an inventive step, or if an essential integer is missing, or if what has been substituted for an integer is more than the substitution of a "mechanical equivalent" for an inessential integer: see Nicaro Holdings Pty Ltd v. Martin Engineering Co supra, at 527-531.”

It is also clear that the alleged anticipation must provide a disclosure of all features in clear, unequivocal and unmistakable terms (see Nicaro case at 517).

Prior art
Of the material filed in the s.28(1) notice, at the hearing Keystone particularly relied upon US Patent 2313363 (Schmitt) and the extracts from a publication entitled “Landscape Architecture” annexed to the declaration of Bathgate to argue lack of novelty of the block claimed.

(a) US 2313363
This patent specification was first available at the Patent Office Library, Canberra in 1943.  It is discussed in the petty patent specification under ‘Background to the Invention’.  It discloses blocks for use in building retaining walls.  The blocks are prefabricated by molding, and preferably are made of concrete.  The blocks are formed with a “tongue” at the bottom of the block adjacent the rear face (ie. a feature which is equivalent to what is defined as a flange in claim 1 of the petty patent).  The blocks can be laid in superimposed rows wherein the blocks of one row are setback compared to the blocks in the row immediately below by a distance equal to the width of the tongue or flange.  Specific dimensions for the width of the tongue are not given but it is said to be “comparatively narrow but it is sufficiently strong to resist the shearing stress to which it may be subjected by the bank of earth.”  As to the general shape of the block disclosed, the specification states:

“The block 15 may be made in various designs and suitable shapes.  For instance the block 15 can be made longitudinally straight which is most frequently required for straight retaining walls.  Longitudinally angular or curved blocks would be used for curved walls, turns or corners.”

The drawings only show one general shape of block which, given its depiction as rectangular, seems to equate with the “longitudinally straight” reference in the description.

Mr Yates submitted that the reference to “longitudinally angular” included blocks having angular sidewall surfaces as the petty patent claims.  Further he submitted that the US specification disclosed retaining wall blocks which could be of any shape depending on the particular use, eg. building straight, curved or angled walls.  In reply Mr Hess submitted that the US specification did not contain clear and unmistakable directions leading to a disclosure of the block claimed.  In particular he argued there was no disclosure of first and second sidewalls having the characteristics as required by the claim in para (a), there being no description of what  “longitudinally angular” meant and no drawings to illustrate its possible meaning.

On this issue I agree with Mr Hess.  I am unable, and have no good reason, to conclude that the US specification by referring to “longitudinally angular” blocks, meant blocks having the two part sidewall surfaces arranged as claimed.  The expression itself suggests to me that the front face and rear face are angled to each other rather than being parallel as for the “longitudinally straight” blocks of the drawings.  I therefore conclude that the petty patent claims do not lack novelty in view of US patent 2313363.

(b) “Landscape Architecture”
Keystone filed a declaration by Fiona Bathgate with annexures of copies of pages from the August 1990 edition of “Landscape Architecture”.  Ms Bathgate, who is a Senior Librarian in the University of New South Wales Library, states that this edition was received by the library on 25 September 1990 and “would have been available to any person using the Library from the date of receipt”.  She says that “Landscape Architecture” is published by the American Society of Landscape Architects based in Washington DC, USA.

Two of the annexed sheets, which are colour copied, include 9 pictures of different retaining walls built from concrete bricks or blocks.  One picture has the caption “Block Systems Inc. Retaining Walls”.  Another sheet annexed is of page 123 which shows 8 advertisements for different products from different suppliers.  One advertisement relates to the “Diamond Retaining Wall System” distributed by Block Systems Incorporated.  Two figures are included in the advertisement adjacent text reading “Diamond blocks are available in two unique and attractive designs - straight and beveled.”  The figures, which are line drawings with some shading, are small (about 1 cm square) and are perspective views of blocks.  The figures show an apparent projecting element adjacent the back surface and underneath the blocks.  Another sheet annexed is an enlargement of this advertisement which I will ignore for the purposes of considering what the advertisement as published disclosed.  (The patentee Anchor was previously named Block Systems Inc.)

There are two issues concerning this material.  Firstly, the disclosures of this edition of “Landscape Architecture” can only be relevant as anticipatory material if the priority date of the claims is later than September 1990.  The patentee asserts that the priority date is 7 June 1990 whereas Keystone submits that it is 6 March 1991.  The second issue goes to whether there is a disclosure of the claimed invention.  I will deal with the second issue first.

Mr Yates submitted that the advertisement regarding the “Diamond Retaining Wall System” disclosed the claimed invention given the lower figure of the two appearing in this advertisement.  He also linked the advertisement with the colour picture on another sheet having the caption “Block Systems Inc. Retaining Walls”, and suggested the size and intended use of the block shown in the advertisement could be gauged from the colour picture.  In answer Mr Hess submitted that there was no evidence and no basis by which to conclude that the retaining wall of the colour picture used blocks of the type as depicted in the advertisement.  Furthermore he submitted that all features of the claim were essential features and that the advertisement simply did not clearly disclose features claimed - in particular he submitted that the flange feature, ie. all of para (b) of claim 1, plus at least the characterisation “said sidewall second part surfaces adjoining and lying between said sidewall first parts and said block back surface and converging towards said block back surface” were not clearly disclosed.

In considering whether an earlier publication discloses a claimed invention, the “earlier publication must, for this purpose, be interpreted as at the date of its publication, having regard to the surrounding circumstances which then existed, and without regard to subsequent events” (see General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1972) RPC 457 at 485). It is also relevant that the earlier publication must be construed as if by a reader skilled in the art. In this case there is no evidence by a person skilled in the art as to what the advertisement in “Landscape Architecture” would have disclosed to that person at its publication date.

Whilst there is some descriptive wording in the advertisement, in my view there is insufficient detail given to identify from that wording the features of the so-called “Diamond blocks”.  The figures included in the advertisement to me represent the two designs of “Diamond blocks” briefly described rather than being figures merely to catch the eye of a reader of the advertisement page or a logo associated with the company presenting the advertising.  To me the upper figure indicates a block having straight side surfaces which converge towards the back surface.  Regarding the lower figure, this to me indicates a block having what can be described as two-part side surfaces with the first parts joining the front surface and diverging towards the back surface and the second parts then converging towards the back surface.  Thus in my view it discloses a block with the sidewall surfaces arranged as claimed in the petty patent.  However I do not consider that the figures in the advertisement clearly discloses a flange as the present claims require.  The figures are partially indistinct in the region where there appears the apparent projecting element, but aside from that there is insufficient detail apparent from the figure for me to conclude that this element is a flange element.  Thus, in the absence of evidence to assist in construing the publication, I am unable to conclude that the advertisement in “Landscape Architecture” discloses the claimed invention.
Given my conclusion, consideration of the first issue relevant to anticipation arising from the “Landscape Architecture” publication is strictly not required.  However given the unique grounds on which the priority date of the claimed invention was argued and the fact that the issue may arise in the pending court action involving this petty patent, I believe it is appropriate for me to give a concluded view on the matter.  I will address this under the heading “Priority Date”.

(c) Other specifications in the s.28(1) notice
None of the patent specifications in the s.28(1) notice other than the Schmitt patent already discussed were advanced as individually providing a disclosure of the claimed invention.  In my assessment they do not cause the claimed invention to lack novelty. 

Obviousness

Keystone did not provide submissions on the separate ground of invalidity concerning whether the claimed invention lacked an inventive step, ie. was obvious.  In fact there is no evidence before me on which to make a finding on this issue.  Section 7 makes it clear that the question of whether an invention involves an inventive step must be considered in the light of the common general knowledge in the art, but no such evidence is before me.

Priority date

(a) Background
Petty patent 650230 was granted on an application filed as a s.39 divisional to standard patent application 35420/93. Under the provisions of reg 3.12(1)(c), if a claim of the petty patent is fairly based on matter disclosed in application 35420/93, then its priority date is determined to be the date it would have had if included in application 35420/93. There is no dispute that the claims of the petty patent are fairly based on matter disclosed in application 35420/93. Consequently the relevant priority date is either the date of filing of application 35420/93 or an earlier date if such arises for application 35420/93.

Application 35420/93 was itself filed as a s.39 divisional to standard patent application 72631/91. For similar reasons as mentioned for the petty patent, claims of application 35420/93 would have priority dates determined as if applicable to application 72631/91. Thus the overall situation is that the priority date of claims of Petty patent 650230 is either the date of filing of application 72631/91 or an earlier date if such arises for application 72631/91, for example due to convention priority. Keystone submits that the priority date is 6 March 1991, the filing date of application 72631/91.

S.94 provides that a “Convention applicant in relation to a basic application may make a Convention application ..... within the prescribed period”.  Application 72631/91 when filed identified on the patent request details of a basic application, namely US Patent application 534831 filed on 7 June 1990.  There is no question that the disclosures in the specification of application 72631/91 and US 534831 are essentially identical.  Thus, prima facie, under reg 3.12(1)(b), a claim of application 72631/91, if fairly based on the disclosures in US 534831 would be entitled to a priority date being the date of filing of US 534831.  Anchor submits that the claims of Petty patent 650230 are, via application 72631/91, entitled to a priority date of 7 June 1990.

(b) The issues and submissions
The difference of views by the parties centre on whether application 72631/91 was, under the Patents Act 1990, rightfully a Convention application and entitled to priority from 7 June 1990. Central to Mr Yates’ submission for Keystone was the view that US 534831 was not the “first application made in a Convention country in respect of the invention”, a requirement arising from reg 8.5(2). He pointed to the fact that US 534831 stated that it was “a Continuation-In-Part of US Patent Application Serial Nos. 07/413400 and 07/413050 both filed September 28, 1989”. He argued that these last mentioned applications fulfilled the definition of a “basic application” under the act and thus US 534831 did not qualify as the first application made in the convention country. He submitted that it was irrelevant what happened to US 413400 & 413050 in the United States Patent and Trademark Office (USPTO) and that they may provide design rights - they were applications in respect of an invention. Consequently he submitted that application 72631/91 did not satisfy the requirements for a Convention application and accordingly priority benefits earlier than the date of filing of application 72631/91 could not arise.

Mr Hess drew attention to the fact that US 413400 & 413050 sought protection “for the new and original design for “Mortarless Retaining Wall Block Design set forth in the following specification”.  Thus whilst they were termed “Patent Applications” and included expressions like “invented” and “block of the present invention”, they were in effect equivalent to applications for design protection as is known under the Designs Act in Australia.  He submitted they were not applications for, and could not initiate protection for, an invention as distinct from a design.  In terms of The International Convention for the Protection of Industrial Property (the “Paris Convention”), they were applications for “industrial designs” rather than for “patents”.  He submitted that the reference to “continuation-in-part” on US 534831 was merely to indicate a link with an earlier rights application by the inventor if issues concerning first to invent arose in the USA in respect of the invention contained in US 534831.  Mr Hess referred to the declaration of Mr Moy, who discussed issues of law and practice before the USPTO, to support aspects of his submission.  Mr Yates, whilst questioning aspects of the evidence of Mr Moy, submitted that the practice in the USPTO was irrelevant to whether application 72631/91 met the requirements of a Convention application under Australian patent law.

(c) Decision
It is relevant to first set out several provisions of the Patents Act 1990 and the regulations. I have already referred to s.94 under heading (a).

Reg 8.5(2) provides:

“For the purposes of section 94 of the Act ("Convention applicants may make Convention applications"), the period of 12 months from the day on which a basic application is first made in a Convention country in respect of the invention is prescribed.”

From Schedule 1 of the act:

““basic application” means an application for protection in respect of an invention, being an application made in a Convention country”,

and

““invention” means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention”.

Keystone argues that US 413400 & 413050 were each “an application for protection in respect of an invention” within the terms of the expression “basic application”.  In making this submission it was clear that Keystone took the view that the nature of protection sought in the Convention country was irrelevant. 

Section 6 of the Statute of Monopolies forms the foundation of modern patent law. As derived from that statute it is well established that manufactures, for example processes and devices, involving only functional features and not aesthetic features, are available for protection under Australian patent law. Such manufactures form “the proper subject of letters patent according to the principles that have been developed for the application of s.6 of the Statute of Monopolies” under the Patents Act 1990 (see eg. NV Philips Gloeilampenfabriken v Mirabella International Pty Ltd 32 IPR 449 @ 456). Thus the meaning of the term “invention” as used and defined in the act must be understood in this context. It follows that when used in the definition of basic application, invention must be understood in this same context, ie. something available for protection by a patent as against other possible protections such as a design or trademark.

In assessing Keystone’s argument, I believe it follows from the context and definitions mentioned that the expression “an application for protection in respect of an invention” in the definition of “basic application” means an application which seeks to protect the invention under patent protection, like an application for a patent does under Australian patent law.  Thus an application to protect the invention or creation of a new or ornamental design involving features of external and aesthetic appearance, in my view, is not encompassed by the expression, and accordingly a Convention application in Australia can not be based on an application for design protection in a Convention country.

S. 94 of the act and related provisions enact in the legislation Australia’s obligations as a signatory to the Paris Convention.  My conclusion above is, I believe, consistent with Articles of the Paris Convention where rights of priority derive from earlier specific applications filed in a Convention country for either a patent, the registration of a utility model, an industrial design, or a trademark.  The Paris Convention clearly distinguishes applications for patents from applications for industrial designs.  Different periods of priority apply to patents as compared to industrial designs and trademarks under the Paris Convention.

Mr Hess referred to the judgement in Agfa-Gevaert AG’s Application (1982) RPC 441 in support of his submissions. That case, under the UK Patents Act 1977, considered the issue of whether a German design application fulfilled the requirement of a “relevant application” in s.5(5) of that act, ie. whether it was “an application in or for a Convention country . . . for protection in respect of an invention . . .”. The court found that the design application did not meet the requirement so that the UK patent application could not proceed as a Convention application based on the German design application. The issue was essentially the same as arises in this case and, although there are some differences in legislation, I believe the discussion in the Agfa case is supportive of the conclusion I have reached in the present matter. 

It follows from my conclusions that US applications 413400 & 413050 do not meet the requirements of a “basic application” in terms of the Patents Act 1990. However US application 534831 is a “basic application” in terms of the act. Australian application 72631/91 was filed within 12 months from the filing date of US 534831 and so meets the requirements of s.94 and reg 8.5(2), ie. a Convention application under the act. It follows that claims of application 72631/91 would have as their earliest priority date the date of 7 June 1990. It further follows that the claims of Petty patent 650230 are entitled to a priority date of 7 June 1990.

CONCLUSION

I have found that the claimed invention does not lack novelty and is not obvious based on material identified in the s.28(1) notice filed by Keystone. 

I have considered the question of the priority date of the claims of Petty patent 650230. In so doing I have concluded that US applications 413400 & 413050 did not meet the requirements of a “basic application” in terms of the Patents Act 1990. I further concluded that Australian application 72631/91 was a Convention application under the act with US application 534831 being the basic application. Accordingly I found that the claims of Petty patent 650230 are entitled to a priority date of 7 June 1990.

I have also considered other material filed after the time for filing notices under s.28(1). On the basis of that material I was not satisfied that a prior public use of a block having the features claimed existed before the priority date. Given that conclusion, I decided not to take action under s.28(3).

In relation to Petty patent 650230, I am satisfied that no ground mentioned in s.28(1) has been made out.  Pursuant to s.69(2) and reg 6.6(3), I grant an extension of the term of Petty patent 650230.  I direct that the Register of Patents be noted accordingly forthwith.

On the question of costs, Section 210 gives the Commissioner power to award costs against a party to proceedings before the Commissioner.  Action under section 69 which involves a person who gives a notice to the Commissioner under section 28 is, in my view, one such proceeding before the Commissioner.  The general principle is that costs follow the event and as Anchor has been successful in its extension of term action it should be entitled to its costs.  Accordingly I award costs against Keystone Retaining Wall Systems, Inc.

Trevor Bruhn
Delegate of the Commissioner of Patents

Patent Attorneys for the patentee:     Griffith Hack & Co, Melbourne

Patent Attorneys for the informant:   Spruson & Ferguson, Sydney