Austming Trade Pty Ltd v MindsInSync, Inc - [2013] APO 47

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Austming Trade Pty Ltd v MindsInSync, Inc. [2013] APO 47

Patent:2011101252

Title:Cushioned absorbent mat

Patentee:  MindsInSync, Inc.
Opponent:  Austming Trade Pty Ltd
Delegate:  Dr S.D. Barker
Decision Date:  14 August 2013
Hearing Date:  Written submissions completed on 30 May 2013
Catchwords:  PATENTS – opposition to an amendment of the Register under regulation 10.7 – whether amendment for the purposes of correcting a clerical error or obvious mistake – clerical error established – consideration of amendment under section 191A – opposition unsuccessful – costs awarded against the opponent

Representation: Patentee: Davies Collison Cave
Opponent:Lord & Co

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2011101252

Title:Cushioned absorbent mat

Patentee: MindsInSync, Inc.
Date of Decision: 14 August 2013
DECISION
The opposition is unsuccessful. The Register is to be amended to show that the innovation patent is a divisional of 2010325781. Costs according to Schedule 8 are awarded against Austming Trade Pty Ltd.
REASONS FOR DECISION

Innovation patent 2011101252 was filed by MindsInSync, Inc. (MindsInSync) on 29 September 2011. The patent request form makes no reference to any priority claim. The patent was granted on 13 October 2011. The patent was examined and a certificate issued on 15 December 2011.
On 10 January 2012 the patentee filed a request to amend the Register entry for the patent. The request specifies the amendment as:
“To correct a clearly apparent clerical error/obvious mistake, as a result of which the official records do not show that the application for the patent is a divisional of application no. 2010325781, which is indicated in the subject heading of our letter to the Commissioner of Patents dated 29 September 2011.”
A delegate of the Commissioner advised the patent attorney for the patentee by telephone on 10 January 2012 that the request did not provide sufficient evidence of a clerical error. On 11 January 2012 the patentee filed a declaration by Michael Robert Finn in support of the request. On 12 January 2012 the delegate directed that the request be advertised in the Official Journal of Patents, and that advertisement appeared on 2 February 2012. On 2 May 2012 a notice of opposition to the amendment of the Register was filed by Austming Trade Pty Ltd (Austming). A statement of grounds and particulars was served on the patentee on 2 August 2012.
On 7 August 2012 the patentee requested that the opposition be dismissed, and following a hearing I declined to dismiss the opposition. On 7 May 2013 I wrote to the parties to advise them of a change in the law relating to amendment of the Register:
“On 15 April 2013 amendments to the Act and Regulations came into effect. One change was the inclusion of a new sec 191A, which allows for the amendment of the Register. The amendments that can be made are no longer restricted to the correction of clerical errors and obvious mistakes. The new sec 191A is discussed in the Manual at 3.10.3 (and the subsequent parts).
The previous reg 10.7 remains in place for the purpose of this opposition, and the opposition will proceed on that basis. However, if the opponent is successful the patentee will be able to make a new application under sec 191A. Consequently, I believe it is in the interests of efficiency for the hearing to include a consideration of whether the amendment would be allowable under sec 191A as well as whether it is allowable under reg 10.7. The evidence already on file is relevant to both provisions. I hope that by doing this the Commissioner will be able to assist the parties to understand the available courses of action if the opposition is successful.
Unless there is an objection (within seven days) the hearing will consider the allowability of the amendment under both sec 191A and reg 10.7.”
As no objection was received, I am considering this amendment under both regulation 10.7 and section 191A.
The statement of grounds and particulars
The present matter relates to an amendment of the Register under regulation 10.7, which permits the Commissioner to amend the Register for the purpose of correcting a clerical error or an obvious mistake. Sub-regulation 10.7(4) says that a person may oppose an amendment, but does not specify the grounds of opposition. In line with HRC Project Design Pty Ltd v Orford Pty Ltd [1997] APO 12, 38 IPR 121, the grounds must relate to the basis for allowing the amendment, i.e. the existence of a clerical error or an obvious mistake.
The statement of grounds and particulars identifies the ground of opposition as follows:
“That the request dated 10 January 2012 to amend the patent 2011101252 and the register should not be allowed as the applicant has failed to identify the type or manner of the clerical error or obvious mistake that has occurred. Further, the Applicant has failed to establish that the Register or the Patent contains a clerical error or obvious mistake.”
It is apparent that the opponent is arguing that the amendment does not relate to a clerical error or obvious mistake. I accept that this is a ground of opposition available to the opponent.
Regulation 10.7
The amendment was made under regulation 10.7 as it stood prior to 15 April 2013. Sub‑regulation (1) states:
The Commissioner may, on a request being made in the approved form, amend:
(a) an entry in the Register for the purposes of:
(i)correcting a clerical error or an obvious mistake; or
(ii)if a name or an address entered in the Register has been changed – changing the name or address; or
(b) a patent for the purpose of correcting a clerical error or an obvious mistake.
It is possible to use regulation 10.7 to correct an error that appears as a direct result of a clerical error elsewhere, e.g. a clerical error in the preparation of the patent request (see Behringwerke Aktiengesellschaft [1986] APO 5; 7 IPR 59).
Evidence
The key evidence is a declaration by Michael Robert Finn dated 11 January 2012. Mr Finn is a patent attorney with responsibility for filing the innovation patent application in relation to the present patent. Mr Finn declares:
“My firm had responsibility for the preparation and filing of an innovation patent application in the name of MindsInSync, Inc., under instructions from the firm of Pillsbury Winthrop Shaw Pittman LLP (“Pillsbury”) in the United States of America, the innovation patent application being a divisional of Australian patent application no. 2010325781.
On the basis of the instructions, I prepared and filed an innovation patent application. Exhibit “MRF-1” annexed hereto is a copy of a letter to Pillsbury in which I report the preparation and filing of the innovation patent application. Both the subject heading and body of the letter refer to the application as a divisional application.”
Mr Finn further states:
“It has been brought to my attention that the official particulars in respect of the innovation patent do not indicate the innovation patent application is a divisional of application no. 2010325781. I have, accordingly, inspected my firm’s file records, and I see that, although a reference to the innovation patent application being a divisional of application no. 2010325781 appears in the subject heading of my firm’s covering letter dated 29 September 2011, which forms part of the original application documentation, such a reference is omitted from the Patent Request filed as part of the innovation patent application. It is apparent to me that the omission from the Patent Request results from an error made during transcription of data in the preparation of the Patent Request.”
Austming submits that the declaration made by Mr Finn, and its accompanying exhibits, fail to demonstrate that a clerical error occurred, or the manner in which the error occurred. In evidence in support, a declaration was made by Kelvin Ernest Lord on 12 October 2012. Mr Lord is a patent attorney representing Austming. Mr Lord states:
“I have reviewed the Patent Request as filed on 29 September 2011 and can identify no clearly apparent clerical error or obvious mistake on the face of the document. The Patent Request as filed appears to contain all the information necessary for the grant of an innovation patent in accordance with the regulation 3.2B.
The covering letter accompanying the patent specification and request is at the time of filing not a prescribed document for the filing of a patent application and any information contained therein is not relevant to the official record of the patent application.
The Patentee’s assertion that the clerical error is clearly apparent is not well founded. For a clerical error or obvious mistake to be established the reader of the document would need to appreciate that there was an error and further it would need to be apparent to that reader what correction would be required.
The Patentee filed on 11 January 2012, a statutory declaration by Michael Robert Finn (the Finn declaration) regarding the request to amend a Patent and/or an Entry on the Register. In the Finn declaration it is asserted that after reviewing his firm’s records it became apparent to Mr Finn that the omission from the Patent Request resulted from an error made during the transcription of data in the preparation of the Patent Request. However, Mr Finn does not explain how the error or mistake occurred.”
Relevant law
The nature of a “clerical error” was considered by the High Court in R v Commissioner of Patents; Ex parte Martin [1953] HCA 67; (1953) 89 CLR 381. Fullagar J stated:
“But the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing.”
Similarly, Williams ACJ expressed the view that:
“A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different.”
Was there a clerical error?
Mr Finn states that the omission to indicate that the innovation patent application was a divisional of application 2010325781 arose from an error made during transcription of data in the preparation of the patent request.
The inadvertent omission by Mr Finn to include the divisional details in the patent request is consistent with the definition of a clerical error given by Williams ACJ in Ex parte Martin.
The fact that the covering letter filed with patent request, and the letter sent to the instructing firm Pillsbury Winthrop Shaw Pittman LLP following filing of the innovation patent application, both refer to "divisional of Australian Patent Application No. 2010325781" supports the contention that there was an intention to file a divisional application.
Mr Lord in his declaration submitted that in order for a clerical error or obvious mistake to be established, the reader of the document would need to appreciate that there was an error and further it would need to be apparent to that reader what correction would be required.
However, these requirements are only relevant in establishing an obvious mistake. As stated by Graham J in General Tire & Rubber Company (Frost’s) Patent [1972] RPC 259, an obvious mistake is one:
“that the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction.”
In the present case, the amendment to the entry in the Register clearly cannot be regarded as the correction of an obvious mistake. It is in the nature of a clerical error that it will normally not be apparent on the face of the document, and its existence only established by evidence. In the present case there is such evidence.
I am therefore satisfied that the amendment of the entry in the Register is for the purpose of correcting a clerical error. Consequently, the amendment is allowable under regulation 10.7.
Section 191A
I will only briefly consider whether the amendment would be allowable under section 191A.
The provisions of section 191A were introduced on 15 April 2013 with the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Sub-section (1) states:
The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:
(a)    the omission of an entry from the Register;
(b)   an entry made in the Register without sufficient cause;
(c)    an entry wrongly existing in the Register;
(d)   an error or defect in an entry in the Register.
The provisions of section 191A apply on and after 15 April 2013 in relation to patents granted before, on or after that date.
The power conferred by section 191A is discretionary, so it will be relevant to consider whether there is an error or omission in the Register, how the error or omission arose, whether there has been any delay in rectifying the error or omission and the consequences of making the rectification. In the present case it is clear that there is an omission that arose unintentionally and the correction was initiated quickly. I believe the amendment would be allowable under section 191A.
Conclusion
I have come to the conclusion that the amendment of the entry in the Register is for the purpose of correcting a clerical error and is therefore allowable under both regulation 10.7 as it stood prior to 15 April 2013 and section 191A.
COSTS
Austming has been unsuccessful in its opposition. I see no reason to vary the usual practice that costs follow the event. I therefore award costs according to Schedule 8 against Austming.
Dr S.D. Barker
Delegate of the Commissioner of Patents