Bartlem Pty Ltd v Peter Cameron Fisher

official notice

decision of a delegate of the commissioner of patents

Patent: No. 664820 in the name of BARTLEM PTY LTD

Title: Improved drive mechanisms

Action: Application for an extension of term to petty patent 664820 and section 28 notification by Peter Cameron FISHER

Decision: Issued .
Abstract
Priority date of petty patent claims considered. Discussion on relevance of case law dealing with fair basing on provisional applications to fair basing on complete application. Claims 1 and 2 found to be entitled to earlier priority date but claim 3 found to be entitled only to the date of filing of the amendments which introduced it.
Longest possible term of petty patent found to have expired before the date of the hearing. Commissioner is nevertheless bound to determine the application for extension of term.
Novelty and inventive step grounds successfully established by notifier.
Discussion of whether or not the Commissioner is able to allow the patentee an opportunity to file amendments after the petty patent has ceased. Opportunity to file amendments given.

patents act 1990

decision of a delegate of the commissioner of patents

Re:An application for an extension of term to petty patent 664820 in the name of BARTLEM PTY LTD, and a section 28 notice by Peter Cameron FISHER

background

Petty patent 664820 was filed on 21 August 1995 by Bartlem Pty Ltd (hereinafter Bartlem) as application number 30156/95. The application relates to a differential arrangement for a ride-on lawn mower. It was filed as a further application to patent application 27144/95. Patent application 27144/95 was filed as a further application to patent application 78532/91 which was filed as a PCT application which sought priority from 6 provisional patent applications, the earliest of which was filed on 1 May 1990.

Petty patent 664820 was sealed on 30 November 1995. Bartlem filed an application to extend the term of the petty patent on 25 October 1996. On 28 October 1996, Peter Cameron Fisher (hereinafter Mr Fisher) filed a notice under section 28 of the Patents Act 1990 asserting that the petty patent is invalid on a number of grounds. The section 28 notice was accompanied by a number of statutory declarations in support. Bartlem filed evidence in response to the matters raised in the section 28 notice.

The matter was heard in Brisbane on 19 May 1997. The patentee was represented by Ms Deborah Mullins of counsel, assisted by Mr Kenneth Philp, solicitor of Bennet & Philp, and Mr John Pizzey, patent attorney of Pizzeys, Brisbane. Mr Theodore Reinhold, the inventor of the invention which is the subject of the present petty patent, also attended. Mr Fisher, patent attorney of Fisher Adams Kelly, Brisbane, represented himself. He was assisted by Mr Hamish Fraser, solicitor of McCullough Robertson.

I note that there is a separate action running in parallel to this present matter in the Federal Court involving the present petty patentee and a number of respondents in relation to infringement of the claims of petty patent 664820. This action has been adjourned pending my decision on the present matter.

SECTION 28 NOTICE

The section 28 notice asserts that petty patent 664820 is invalid on the following grounds:

“1. That the invention is not a patentable invention because it does not comply with paragraph 18(1)(b) of the Patents Act 1990.

2. That the specification does not comply with subsection 40(3) of the Patents Act, 1990.”

The notice contains a number of pages of submissions by Mr Fisher in relation to the entitlement of the petty patent claims to certain priority dates. Mr Fisher asserts that claims 1 and 2 are entitled to a priority date of 21 August 1995 (the filing date of the petty patent application) and claim 3 is entitled to a priority date of 1 March 1996, the date on which claim 3 was filed in relation to section 104 amendments.

I will refer to various parts of Mr Fisher’s submissions as necessary in the body of this decision.

EVIDENCE

Mr Fisher filed a number of statutory declarations with his section 28 notice. However, the two most important declarations are made by:

Michael Ashley Norman, who indicates that he has specialised in servicing and repair of motor vehicles including earthworking machinery and off-road vehicles. This declaration deals with the prior use of a turf aerating vehicle (the OMC Greensaire MKII) before the earliest possible priority dates of the present claims.

Leslie Edward Hooper, who states that he is a diesel mechanic by trade. Mr Hooper indicates that a company in which he was employed manufactured ride-on mowers. The Cox Mark 1 and Cox Mark 2 mowers included differentials that are the same as the claimed differential arrangements. The Cox differentials were produced in or before 1993 which is before the priority dates to which the present claims are entitled according to the assertions made by Mr Fisher in the section 28 notice.

The patentee filed two statutory declarations made by:

Theodore William Reinhold, who is the inventor of the subject matter of the petty patent in suit.

Arthur William Chaseling, who states that he is a consulting engineer specialising in design and development of equipment for the coal mining industry.

At the hearing, both parties provided me with the opportunity to inspect relevant exhibits. Bartlem demonstrated a working model of the invention which allegedly is the subject of the present claims. At the request of Bartlem, Mr Fisher produced what I understand to be the actual axle and differential arrangement referred to in the Norman declaration.

SUBMISSIONS

Both parties provided oral submissions at the hearing. Ms Mullins also provided me with a written summary of her submissions.

Mr Pizzey also provided initial written submissions soon after the filing of the section 28 notice.

I will refer to these submissions where appropriate in my decision.

THE TERM OF THE PETTY PATENT

At the conclusion to the hearing, Mr Fisher queried when the term of the present petty patent expires. He proposed that, as the petty patent is a divisional of earlier patent applications, the term of the petty patent would start from the date of filing of the earliest complete application on which the petty patent is based.

As I advised both parties subsequent to the hearing, section 68(b) indicates that the petty patent term ends at the end of 6 years after the date of the patent. Regulation 6.3(f) indicates that the date of the patent is the date of filing of the complete specification in which the invention that is the subject of the application was first disclosed. In the present case, the earliest complete specification from which the petty patent can possibly derive its priority is that accompanying patent application 78532/91. The filing date of this specification is 1 May 1991. Therefore, if the claims of the petty patent define an invention which is the subject of patent application 78532/91, then the longest possible term of the petty patent expired on 1 May 1997. If this is the case, the Commissioner is nevertheless bound to determine whether or not the term of the petty patent should be extended from 30 November 1996 to 1 May 1997.

Also, if the claims are not entitled to the earlier priority date then the date of the patent would be the date of filing of the complete specification of the present petty patent i.e. 21 August 1995. The term of the petty patent could then theoretically be extended to 21 August 2001.

THE PETTY PATENT SPECIFICATION

The specification commences by stating that the invention relates to improvements to drive mechanisms. It then indicates that the invention has particular application to ride-on mowers and the like vehicles but aspects of the invention may be utilised in other forms of vehicles such as golf buggies and small vehicles.

There is a general discussion of ride-on mowers which have a transverse drive axle chain-driven to a sprocket mounted on the axle and the axle has the two rear wheels fixed to it so that they rotate in unison when the axle is rotated.

According to the specification, as the width of mowers and other vehicles is increased to increase stability and provide better traction, poor steering control becomes more noticeable. This poor steering control can be overcome by the provision of a differential in the drive train to the rear wheels. However differentials to date have not suited the simple drive trains which use a common axle. Additionally the available differentials have not had the ability to be selectively utilised or locked.

The specification then states:

“The present invention aims to alleviate at least one of the abovementioned disadvantages and to provide improvements to drive mechanisms which will be reliable and efficient in use.”

Then follows a statement of the invention which is the same as the wording of claim 1.

The specification indicates a preferred arrangement as follows:

“Preferably there is provided selectively engageable differential locking means for preventing differential rotation between the wheels. The differential may be locked in known manner by locking together any of the components which can otherwise rotate differentially, such as by locking means engageable between the sun gear associated with one driven wheel with the gear case or planetary gears.”

The specification then includes a further preferred form of the locking means which is the same as that defined in claim 3. This is followed by a description of another variation of the locking means. This particular variation in the form of a dog clutch is not claimed.

Then the specification states:

“The differential may be of a conventional form and be provided with a differential case and axle housing. Suitably however the differential is adapted to be so arranged that it is substantially concealed within the adjacent wheel and is exposed when the adjacent wheel is removed from the wheel hub for servicing or the like.”

There follows a detailed description of the preferred form of the invention with references to the three pages of drawings.

The specification ends in three claims which are as follows:

“1. A drive axle assembly of the type having a chain driven transverse axle supporting respective wheel hubs at opposite ends thereof and supported for rotation by spaced chassis mountings intermediate said wheel hubs and through which the transverse axle is attached to a chassis, characterised in that:-
the driven axle sprocket is attached to a gear casing rotatably supported on the transverse axle;
the gear casing supports a pair of opposed planetary gears for orbital motion about the transverse axle;

opposed sun gears are supported in axially spaced relationship on the transverse axle adjacent one wheel hub and are differentially driven by the opposed planetary gears;
the gear case encloses the sun gears and planetary gears;
said one wheel hub is rotatable about the transverse axle;

the sun gear nearest said one wheel hub is rotatable about the transverse axle and is drivingly connected to said one wheel hub, and
the other sun gear and the other wheel hub are locked for rotation with the transverse axle.

2. A drive axle assembly as claimed in claim 1 and including selectively engageable differential locking means for preventing differential rotation between the wheel hubs.

3. A drive axle assembly as claimed in claim 2, wherein the differential locking means is provided externally of the gear case and includes a locking member which is supported by said one wheel hub offset from said transverse axle and which may be selectively engaged for movement with an adjacent portion of the drive axle assembly which rotates relative to said one wheel hub during differential rotation, whereby the differential action is prevented.”

DECISION

The Patent Regulations 1991 set out the requirements of the Commissioner in deciding on an application for an extension of term of a petty patent. Sub-regulation 6.6 states:

6.6   (1) For the purposes of subsection 69 (2) of the Act (" extension of term of petty patent"), in deciding an application for an extension of the term of a petty patent, the Commissioner must consider:
     (a)           any notice under subsection 28 (1) of the Act ("notice of matters affecting validity   of petty patents") in relation to the petty patent; and
     (b)           any matter of which the Commissioner has informed the patentee under subsection              28 (3) of the Act.
(2)   If the Commissioner is satisfied that a ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner may refuse to grant an extension of the term of the petty patent.
(3)   If the Commissioner is satisfied that no ground mentioned in subsection 28 (1) of the Act is made out, the Commissioner must grant the extension of the term of the petty patent.

Therefore, I need to satisfy myself whether or not any of the grounds in the section 28(1) notice have been made out.

THE CHASELING DECLARATION

Before I consider the grounds set out in the section 28 notice, I will deal with the relevance of the Chaseling declaration.

At the hearing Mr Fisher made certain submissions about the weight I should give to Mr Chaseling’s declaration by questioning Mr Chaseling’s independence as an expert witness. Subsequent to the hearing, Mr Pizzey filed further submissions on the matter of Mr Chaseling’s independence as a witness. In a subsequent letter, Mr Fisher asked me to consider these further submissions as further evidence and to disregard them.

It seems to me that the matter was first raised by Mr Fisher at the hearing and that the patentee is entitled to reply to Mr Fisher’s allegations if I am to take Mr Fisher’s arguments into account in deciding what weight to give to the Chaseling declaration. Therefore I should take both sets of submissions into account or neither. The result is the same in the present case because I have found the Chaseling declaration of little value in assisting me to reach a decision on the grounds set out in the section 28 notice. This is because, as I indicate below, the Chaseling declaration provides a number of comments on the preferred form of the invention particularly in relation to features which do not appear in the claims.

In the light of this, I need make no decision on what weight I should give to the Chaseling declaration in relation to whether or not Mr Chaseling is an independent witness.

PRIORITY DATE(S) OF THE PETTY PATENT CLAIMS

One of the crucial issues in this case is whether or not the petty patent claims are entitled to any earlier priority date as a result of the petty patent being filed as a further application based on a number of previous applications.

It seems to be common ground that if the petty patent claims are fairly based on the disclosures in patent application 78532/91 then those claims will also be fairly based on the disclosures in patent application 27144/95 and earlier provisional applications PJ9911, PK0378, PK2057, PK2972, PK4136 and PK5028. If the petty patent claims are not fairly based on patent application 78532/91 then the claims 1 and 2 at least will have an earliest priority date of 21 August 1995, the date of filing of the present petty patent.

Therefore the critical question is whether or not the petty patent claims are fairly based on the matter disclosed in the complete specification accompanying patent application 78532/91.

Before I consider the facts of this particular case, I find it useful to consider the relevant law concerning fair basing and in particular the law relating to the fair basing of claims on an earlier complete specification.

The law on fair basing

Both parties referred me to a number of recent (as well as older) decisions relating to fair basing. Some of these decisions relate to the question of fair basing of claims in relation to earlier provisional specifications. I questioned both parties as to whether they considered such decisions appropriate in the present circumstances where the issue involves fair basing on an earlier complete specification. Ms Mullins submitted that the same principles of fair basing should apply. Mr Fisher referred me to Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd 11 IPR 20 where a provisional or earlier document was referred to. He submitted that this was a more appropriate summary of fair basing on an earlier complete specification than decisions such as CCOM Pty Ltd v Jiejing Pty Ltd 28 IPR 481 and Leonardis v Sartas (No. 1) 35 IPR 23 which dealt with fair basing on a provisional specification. In passing, I note that the Coopers case also dealt with provisional specifications. Both parties also referred me to the commentary on fair basing in Lahore Patents, Trade Marks & Related Rights, Vol 1, Butterworths (1996).

It seems to me that although the issues may be largely the same between fair basing on a provisional and fair basing on a previous complete specification, it is worth noting the purpose of a provisional specification aptly summarised by Lockhart J in Anaesthetic Supplies Pty Ltd v Rescare Ltd 28 IPR 383 at 401:

“All that the provisional specification needs to do is to describe generally and fairly the nature of the invention, and not to enter into the minute details as to the manner in which the invention is to be carried out. It is a mode of protecting the inventor until the time of filing the final specification. It is not intended to be a complete description of the invention, but simply to disclose the invention fairly, though in rough state. The interval of time between the provisional and the final is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional”

Lockhart J also referred to the fifth edition of Blanco White’s Patents for Inventions, 1983, at para 2-209:

“It should be noted that the question of “fair basing” upon a provisional specification is not altogether analogous to that of “fair basing” upon a complete specification....It has always been considered legitimate to develop an invention to some extent after filing a provisional specification, and the expression “fairly based” in the present context allows for such development.”

In the same case, when discussing the question of fair basing on a provisional specification, Sheppard J said:

“It is sufficient to say that a degree of latitude is afforded to the construction of provisional specifications which is not available when a complete specification is being construed.”

The commentary in Lahore’s Patents Trade Marks & Related Rights (supra) suggests that the recent decisions on fair basing have adopted an “overly meticulous verbal analysis”. Lahore, however, suggests that in Leonardis v Sartas (No. 1) (supra) there may have been a move from “the extreme emphasis on language and precise manner of expression exhibited in recent Australian court decisions”.

Whether or not this commentary on recent decisions has any real weight in its suggestion that a more meticulous approach than perhaps necessary in relation to provisional specifications has been adopted, it seems to me that, in considering the issue of fair basing on a complete specification, I believe that I should not adopt any less meticulous an approach.

Mr Fisher encouraged me to consider the well-known rules set out originally by Morton J. in Mond Nickel Co Ltd’s Application [1956] RPC 189. I note that this case also dealt with fair basing on a provisional specification. The rules were subsequently adopted in F. Hoffman-La Roche & Co AG v Commissioner of Patents [1973] RPC 34 in relation to a basic application (and its accompanying complete specification) as follows:

1)Is the alleged invention as claimed broadly described in the basic application?

2) Is there anything in the basic application which is inconsistent with the alleged invention as claimed?
3) Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?

In CCOM v Jiejing (supra), the court considered the above rules and in particular the second rule in relation to the term “inconsistent”. The court stated that the use of this term encourages an over meticulous verbal analysis mainly because “inconsistent” is used in a variety of senses in Australian law, particularly constitutional law. As I have earlier indicated, I do not think that I should apply any less meticulous verbal analysis in the present case where the fair basing relates to a complete specification whether or not I were to apply the term “inconsistent” in the sense that it is used in constitutional law. I observe that, in Leonardis v Sartas (No. 1) (supra), at 42, the Full Court considered the Mond Nickel rules 1 and 2 and did not find disfavour with the term “inconsistent” in the second rule. The court stated:

“This plainly leaves open that there may be other material disclosed in the provisional specification, but not included in the claim, which, however, will destroy the fair basing of the claim only if it is `inconsistent with the alleged invention as claimed’...”.

Therefore, in the present case, I intend to apply the above rules as modified in F. Hoffman-La Roche & Co AG v Commissioner of Patents (supra) to determine if the present claims are fairly based on patent application 78532/91.

The priority date(s) of the present claims

It is common ground that the drawings filed with the petty patent specification are the same as figures 13, 14 and 15 of the 78532/91 specification (which I shall refer to as the parent specification). It is also common ground that the drawings form part of the disclosure of the parent specification. (See, for example, Leonardis v Sartas (No. 1) (supra).)

The central issue is the particular wording in the parent specification in relation to the form of the invention presently claimed and whether this wording would colour the disclosure provided in the drawings to the reader of the parent specification.

Mr Fisher referred to page 5, lines 14 and 15, of the parent specification where the wording is “a free wheel mount including a tubular stub axle supported about the opposite end of the axle assembly”. I have underlined the critical portion. This feature is also referred to at page 6, lines 14 and 15 and included in claims 10, 14 and 15. Mr Fisher argued that the free wheel mount equates to the free wheel hub referred to in the preferred embodiment of the parent specification and in the petty patent specification. Mr Fisher drew the conclusion that it is essential that the free wheel hub have a tubular stub axle. According to Mr Fisher, there is no other disclosure in the parent specification. As there is no disclosure of a wheel hub without a tubular stub axle and the claims of the petty patent do not include this feature, Mr Fisher argued that the second of the three rules identified above must be answered in the positive because there is an inconsistency between the basic application and the invention claimed. Mr Fisher concluded that the petty patent claims are not fairly based on the parent specification and as a consequence they are not entitled to the earlier priority date.

Ms Mullins argued that there may be an inconsistency between the passages identified by Mr Fisher in the parent specification and the description directed at the relevant drawings also in the parent specification. This does not mean that there is an inconsistency between the presently claimed invention and the parent specification. The similar drawings and the equivalent parts of text in relation to those drawings in both specifications clearly provide support for the petty patent claims.

I believe that I must determine what the parent specification discloses to an appropriate person skilled in the art. I do not think that if there is an inconsistency in the parent specification this necessarily means that there is an inconsistency between the parent specification and the claimed invention.

In trying to assess the disclosure of the parent specification, the evidence does not provide me with any assistance. The expert witnesses do not consider the disclosure of the parent specification. While one statutory declaration by Mr Jim Pandelakis has a copy of the parent specification attached as an exhibit, the declarant does not volunteer any information on what the parent specification discloses to him although there is a brief comparison between the parent specification and another specification.

In determining what the parent specification discloses to an appropriately skilled person, it is convenient for me to do so during my consideration of the three Mond Nickel questions set out above.

Is the alleged invention as claimed broadly described in the basic application?

Would a person skilled in the art find the features of claim 1 for example broadly disclosed in the parent? I must say that, if there was no internal inconsistency, then I think Mr Fisher’s argument would be very persuasive. In such a case, I think that the person skilled in the art would not believe that the parent specification discloses anything but an arrangement with a tubular stub axle. The whole thrust of the specification would be to such an arrangement with a stub axle. This would mean that the claimed invention is not broadly described in the basic application. This would be so even though the description specifically related to the drawings in each of the parent and petty patent specification is virtually the same.

However, the parent specification does have this internal inconsistency in that the a free wheel mount is described as having a tubular stub axle. In the body of the specification, the text associated with the relevant drawings describes the tubular stub axle as being formed integrally with a sun gear. This tubular stub axle has an outer key so that it can be locked to a wheel hub.

I turn to the specific wording on page 5, lines 10 to 29, of the parent specification which is as follows:

“In yet another aspect this invention resides broadly in a differential assembly including:-
an axle assembly;
a fixed wheel mount at one end of the axle assembly;
a free wheel mount including a tubular stub axle supported about the opposite end of the axle assembly;
a fixed sun gear on the axle assembly and preferably located adjacent the free wheeling mount;
a gear case assembly having planetary gears therein adapted to engage with said fixed sun gear;
mounting means for mounting the gear case rotatably about the axle assembly;

drive means preferably adapted for belt or chain drive from a drive motor for rotating the gear case about the axle;
a further sun gear adapted to mesh with said planetary gears to form a differential drive, and

connector means for connecting the free wheel mount to the further sun gear. The term fixed wheel mount and free wheel mount herein are to be understood as being fixed of (sic) free relative to the innermost one of the concentric axles.”

The wording on page 6 is similar but refers also to locking means.

In looking at the above summary of the invention in the parent specification, I must say that the purpose of the tubular stub axle is not at all clear. While most of the summary refers to the axle assembly, there is only one other reference to “axle” apart from the definition in the last sentence. This reference is in relation to the rotation of “the gear case about the axle”. I do not think that this axle refers to the tubular stub axle as this would be totally inconsistent with the rest of the specification and the drawings. Therefore I am left with the conclusion that the above summary includes a feature (the tubular stub axle) which performs no useful function as the summary is described. Although the last sentence of the summary refers to concentric axles, one of which presumably is the stub axle, I do not think that this provides any further explanation of why a stub axle is needed.

Therefore it seems to me that the person skilled in the art would be provided with a disclosure in which the tubular stub axle is not necessary. I do not think that the claims of the petty patent should therefore be restricted to the use of a tubular stub axle. I think that there is a broad disclosure of the arrangement defined in petty patent claim 1. The passages to which Mr Fisher has referred me provide this broad disclosure and this is supported by the more detailed disclosure in relation to the drawings. As such I would answer the above question positively in relation to petty patent claim 1.

However while the inclusion of this feature was the main thrust of Mr Fisher’s argument, that is not the end of it. Subsequent submissions on behalf of the petty patentee in relation to the ground of novelty place great emphasis on the wording “the gear case encloses the sun gears” in petty patent claim 1. I should determine whether or not this feature is broadly disclosed in the parent specification.

In perusing the parent specification, I must say that I find ample support for this feature. In fact I note that more attention is given to this aspect of the gear casing in the parent specification than in the petty patent specification. For example, on page 5, line 34 to page 6, line 3 of the parent specification, the gear case is described as follows:

“The gear case may be of conventional form and it may include an end flange and axle locating means for locating the planetary gears with respect to the sun gear. Preferably however the housing is an open ended housing which is operatively located in position by meshing of the respective gears and end plates are provided which may be through bolted to clamp the housing in position. Suitably one end plate is constituted by the web portion of a sprocket or pulley wheel.”

There are further passages in the detailed description and of course the drawings of the two specifications are similar. Therefore I am of the opinion that the invention of claim 1 of the petty patent is broadly described in the parent specification.

Claim 2 of the petty patent adds the feature of a selectively engageable differential locking means. Mr Fisher submitted that this includes any selectively engageable locking means whereas the parent specification refers generally to selectively operable locking means for locking the axle to the free wheel mount i.e. a particular type of locking means. Ms Mullins submitted that a person skilled in the art on reading the parent specification would realise that a locking means for locking the free wheel mount to the axle could be replaced by any differential locking means. In effect, as I understand it, Ms Mullins is saying that the feature of claim 2 is part of the common general knowledge. I think that, because of this, it is common ground that if claim 1 fails for want of novelty claim 2 would also fail. As such, I do not think it is necessary for me to determine its priority date but nevertheless, it seems to me that the invention of claim 2 would be broadly described in the parent specification if the such differential locking means were part of the common general knowledge at the date of the parent specification. Since neither Mr Fisher nor his declarants appear to contravene this then I will take it that the invention of claim 2 is broadly described in parent specification.

Claim 3 defines a particular type of differential locking means. Mr Fisher argued that because claim 3 is appended to claim 1 and claim 2, claim 3 has the same failings as these claims in relation to fair basing. I must decide first of all whether the particular locking means of claim 3 is broadly described in the parent specification.

In the parent specification, the broad disclosure of a locking means is, as I indicated above in relation to my discussion on claim 2, a selectively operable locking means for locking the axle to the free wheel mount.

I must say that I have some difficulty with the wording of claim 3. I am uncertain as to what the term “locking member” includes. It seems to me that because it is defined as being offset with respect to the transverse axle and is supported by the one wheel hub, then it includes the wheel nut extensions or at least one of them that are shown in the drawings. However, I am not so sure that the term “locking member” also includes the locking plate which slides axially along the transverse axle. Such a plate could not be said to be offset from the transverse axle nor could it really be said to be supported by the one wheel hub. Therefore I must conclude that claim 3 does not specifically define the locking plate.

I do not think that the parent specification has such a broad disclosure of a locking member without also a locking plate. Therefore, I do not believe that the invention claimed in petty patent claim 3 is broadly disclosed in the parent specification.

Is there anything in the basic application which is inconsistent with the alleged invention as claimed?

With respect to claim 1, I think my discussion under the previous heading also applies to this question. While the parent specification includes what appear to be some inconsistencies, I do not think that this leads to the parent specification containing anything which is inconsistent with
claim 1.

On the assumption that the parent specification would disclose to a person skilled in the art different types of differential locks, this would not be inconsistent with claim 2.

In relation to claim 3, for the reasons mentioned above, I think that the parent specification contains a locking mechanism which includes the wheel nut extensions and a particular type of locking plate. This is inconsistent with the lock of claim 3.

Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?

For similar reasons to those indicated above, I do not find anything in claim 1 or claim 2 about which the parent specification is wholly silent.

With respect to claim 3, it seems to me that the parent specification is wholly silent on the locking member being selectively engaged for movement of the locking member with the adjacent portion of the drive axle assembly to prevent differential action other than by a locking plate which engages with an adjacent portion of the drive axle assembly (the keyed portion).

Given the ambiguous wording of claim 3, I have come to the conclusion that the parent specification is wholly silent on locking means which are selectively engageable with the drive axle assembly other than by a locking plate.

In considering the Mond Nickel rules, I have found that claims 1 and 2 are fairly based on the parent specification but claim 3 is not.

Therefore, I find that claims 1 and 2 are entitled to the priority date of 1 May 1990, the date of filing of the first provisional specification and therefore the longest possible term of the petty patent expired on 1 May 1997.

Claim 3 is at best entitled to a priority date of the date of filing of the petty patent specification. However, because the body of the petty patent specification, before amendment, was substantially the same as the parent specification, I find that claim 3 is not fairly based on the matter disclosed in the petty patent specification before amendment. Therefore in accordance with section 114 and sub-regulation 3.14 of the Patents Act and Regulations, the priority date of claim 3 is 1 March 1996, the date of filing of the statement of proposed amendments which incorporated amended claim 3.

I would add that, if I were to adopt the fair basing test set out in CCOM Pty Ltd v Jiejing Pty Ltd and Leonardis v Sartas (No. 1) (supra), I believe that I would come to a similar conclusion in that there seems to be a real and reasonably clear disclosure of the features in claims 1 and 2 but not of all the features in claim 3.

NOVELTY

As indicated to me at the hearing, the basic test for anticipation is set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235, that is:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement".

As to what constitutes infringement, I am guided by the view expressed by Lord Upjohn in Rodi & Wienenberger A.G. v. Henry Showell Ltd (1969) RPC 367 at 391 which view was adopted by Gibbs J. of the High Court of Australia in Olin Corporation v. Super Cartridge Co Pty Ltd and Another 14 ALR 149 at 157 as follows:

"To constitute infringement the article must take each and every one of the essential integers of the claim. Non-essential integers may be omitted or replaced by mechanical equivalents; there will still be infringement."

It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel - Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183.

As I have been provided with no submissions to the contrary, I will assume for the moment that all of the integers of the claims of the petty patent are essential.

The Norman declaration concerns the use of the OMC Greensaire turf aerator before the priority date of 1 May 1990. The petty patentee has not challenged the actual date of use of the Greensaire vehicle. Since there is some form of corroborating evidence provided by the statutory declaration of Lee Mills in relation to when the Greensaire vehicles were acquired by Mr Norman for repair, I will accept that these vehicles including the OMC differentials were in public use before the priority dates of the petty patent claims.

It seems to be common ground that the novelty or otherwise of claim 1 turns on the feature that the gear case encloses the sun gears and planetary gears. All other features are found in the OMC differential (the present claims not being restricted to ride-on mowers).

Ms Mullins, in her submissions, referred me to paragraph 42 of Mr Reinhold’s declaration in this respect:

“One other factor that was also weighing on my mind when I was thinking about how to construct the locking mechanism to go with a differential was that I needed to get the differential mechanism fully enclosed to prevent any entry of grit, grass and water into the moving parts whilst the machine was in operation. Mowers operate in an inherently very dirty or occasionally wet environment with great potential for grit etc to get into working parts and destroy them. I had to make sure I had a completely enclosed system that would forestall any such problems from that end.”

Ms Mullins also referred me to the Chaseling declaration where she pointed out that Mr Chaseling argues the wheel hub forms part of the OMC differential casing. As such the OMC differential does not have the same degree of prevention of grit and grime in the gears. Because the wheel hub rotates, grit can enter the gears even though there may be an O ring between the wheel hub and the cylindrical gear casing.

The patentee’s position therefore, as I see it, is that the differential claimed in the petty patent claim 1 has a gear case or casing which encloses the sun gears and planetary gears and therefore prevents those gears from being clogged with grit and grime. The OMC differential does not have the same advantage because the there is no casing as such enclosing the gears.

Mr Fisher submitted that the OMC differential does have a casing enclosing the gears. Whether or not that casing includes the wheel hub, the gears are still enclosed. The question of whether or not an O ring is required to seal the casing is irrelevant. In any case all the alleged advantages of the present invention are not apparent from the presently worded petty patent claims.

It seems to me that the OMC does have a gear case which encloses the gears. It is not a one piece case but then neither is the claimed gear case necessarily made in one piece. Certainly, the preferred form of the case in the petty patent is one which is an open ended tubular housing with end plates. This is similar to the OMC gear case which is open ended with portions which cover the ends.

Despite the advantages of the present gear case suggested in the Reinhold declaration and at the hearing by both Mr Pizzey and Mr Reinhold and the disadvantages of the OMC gear case put forward in the Chaseling declaration, I find that these differences are not apparent in the claimed gear case.

Therefore I find that all of the essential integers of the differential of claim 1 are found in the OMC differential and as a consequence claim 1 lacks novelty in the light of the OMC differential.

I note that the petty patent specification makes no mention of the significance of the enclosing of the gears. There is no discussion of prevention of soiling of the gears. It seems to me that, notwithstanding the lack of debate about the essential integers of claim 1, it is difficult to determine from the petty patent specification why the enclosing of the gears would be an essential integer of claim 1 at all.

As I have indicated above, my initial assumption has been that all features of the claims are essential. However, a feature can be regarded as not essential if it does not appear to make any difference to the inventive concept (Catnic Components v Hill & Smith Ltd [ 1982] RPC 183).

In the present case it seems to me that there is nothing in the petty patent specification which suggests that the enclosing of the gears by the gear case makes a difference to the inventive concept. From a fair reading of the specification, I think the inventive concepts appear to be the locating of the differential in or near one of the wheel hubs and the use of the particular type of locking means. The enclosing gear case does not make any difference to these inventive concepts. Although there was some suggestion by Ms Mullins that the wording on page 1, lines 32 - 34, provides an indication that the enclosing of the gears has particular advantages which provide a drive mechanism which is reliable and efficient in use, I do not think that the specification provides the person skilled in the art with any inkling that efficiency and reliability is achieved by the enclosing of the gears within the gear casing.

The upshot of this is that I do not think that this is an essential integer of claim 1. Therefore, even if I am wrong about the OMC differential disclosing a gear case which encloses the gears, whether or not the OMC differential has this feature is irrelevant to the question of novelty. I find that claim 1 lacks novelty with respect to the OMC differential.

Claim 2 includes the feature of a selectively engageable differential locking means. As I have indicated earlier in relation to the issue of fair basing, Ms Mullins submitted that such locks were part of the common general knowledge at the time of the priority date of claim 2 because the person skilled in the art would read such known locks into the parent specification. At the hearing Mr Pizzey conceded that if claim 1 was anticipated then claim 2 would also fail. However I do not believe that claim 2 necessarily fails because of want of novelty. The OMC differential does not disclose a lock. The differential lock of claim 2 is an essential integer of claim 2. Therefore claim 2 cannot be said to lack novelty in the light of the OMC differential because not all the essential integers are disclosed. Similarly, claim 3 does not lack novelty in the light of the OMC differential.

I find that claim 1 lacks novelty in the light of the OMC differential but that claims 2 and 3 do not.

The Norman declaration also exhibits a number of US patent specifications. None of these, as I understand it, are alleged to render claim 1 not novel. Certainly, the Norman declaration does not assert that any one of these documents includes all the essential integers of claim 1. Ms Mullins made the point that all these US specifications are concerned with split axle differentials whereas the present differential is for a common axle. I cannot find all the essential integers in any one of these specifications and therefore they are not relevant for novelty considerations.

Australian patent application 18434/92 in the name of the present inventor, Mr Reinhold, was an exhibit attached to the Pandelakis declaration. This application discloses a particular type of locking means. (It also discloses a differential similar to that defined in claim 1 of the patent in suit but patent application 18434/92 was published on 7 January 1993, after the priority date of claims 1 and 2.) While there were few submissions provided to me when I sought the views of both parties on what this application disclosed, Mr Fisher did suggest in passing that perhaps the locking means disclosed in this specification included an offset locking member similar to that defined in claim 3. Mr Pizzey suggested that if claim 1 was not entitled to the earlier priority date, then it would probably be anticipated by this patent application.

I am satisfied that patent application 18434/92 includes all the essential integers of claims 1 and 2 to which claim 3 is appended. What I have to determine therefore is whether or not this application discloses the essential integers specifically defined in claim 3. It seems to me that the main feature involves the locking member supported by the wheel hub offset from said transverse axle. While Mr Fisher suggested that the locking arrangement in patent application 18434/92 could be classed as being offset, I think it is fair to say that both the engagement plate and the engagement block in this specification are axially located. As such, I do not think that they can be said to be offset. Therefore, I have not found all of the essential integers of claim 3 in patent application 18434/92. Claim 3 is therefore novel with respect to this disclosure.

In the Hooper declaration, there is some discussion about differentials which allegedly existed before the early priority date of claims 1 and 2. However, the disclosure provided in this declaration is not sufficient for me to come to the conclusion that claims 1 and 2 would be anticipated. Mr Fisher did not press this part of the Hooper declaration at the hearing.

Having established that claims 1 and 2 are entitled to the early priority date, I do not have to consider the rest of the material in the Hooper declaration in relation to claims 1 and 2. However, I need to consider the rest of the Hooper declaration in relation to claim 3.

One of the exhibits referred to in the Hooper declaration is a purported copy of a report from a patent attorney on that attorney’s opinions on the likelihood of two differentials. The report includes two drawings of these two differentials. I have no evidence before me to suggest that this report was ever made public. (Indeed, the report appears to be confidential advice between the patent attorney and the company, Cox Mower & Machinery Co.(Cox), employing this patent attorney. As such, there would need to be very clear evidence to establish that it has been published before I could rely on it.) Therefore, the report of itself cannot provide any basis for prior public disclosure of the integers of claim 3.

Another exhibit of the Hooper declaration is what appears to be an extract from a service manual. Mr Hooper points out that this service manual is dated 17 August 1994 and that it was produced by Cox for Cox Stockman ride-on mowers.

A further exhibit shows a cross-sectional drawing of what Mr Hooper says is the Cox Mark 2 differential assembly.

The Cox Mark 2 differential assembly was first publicly displayed, according to Mr Hooper, as part of the Cox Stockman ride-on mower at the Australian National Field Days at Orange, NSW between 8-10 November 1994. A further exhibit is an invoice which Mr Hooper says is for the particular mowers supplied to the distributor who exhibited these mowers at the field day. However this invoice appears to contradict the date of the field day as the invoice is dated 2 December 1994. While it may be the practice to invoice distributors after they display the company’s products at field days, it does not help to establish the date of the field days in Orange.

The Hooper declaration also includes exhibit LEH 8 which consists of a series of photos of differentials. However there is no indication that I can find in the Hooper declaration as to what these photos depict. At least some of these photos are dated 15 May 1996. Therefore they provide me with no assistance in determining the novelty or otherwise of claim 3.

A declaration by Rex Douglas Brown provides some support for Mr Hooper’s discussion of the Orange field days. Mr Brown indicates that he is the proprietor of the distributing company referred to by Mr Hooper. Mr Brown indicates that his company took delivery in or about October 1994 of the particular Stockman mower for display at the field day. According to Mr Brown, this mower had a differential drive axle and a differential lock in the form of a retractable pin extending through the free-wheeling hub in a position radially spaced from the axle. Such an arrangement appears to be disclosed in the extract from the service manual I have referred to earlier.

There is no mention of whether or not any confidentiality agreements existed between Mr Brown and Cox or whether visitors to the field day had similar restrictions placed on them. While the patentee has not controverted, in any significant way, the evidence of Mr Hooper and Mr Brown, relying instead on its argument that all claims should be entitled to the earlier priority date, I think the onus is on Mr Fisher to establish that the Cox Stockman mowers were publicly displayed before the priority date of claim 3. While Mr Hooper refers to these field days as the first “public” display of the Stockman mower and Mr Brown refers to the field days as being the “initial Australian launch” of the new Stockman mower, I do not think that this provides me with sufficient evidence to reach the conclusion that the Stockman mower was freely displayed at the Orange Australian National Field Days without any confidentiality requirements associated with the viewing of the mower. I find therefore that there is not sufficient evidence to establish that the Stockman mower was publicly displayed before the priority date of claim 3.

In summary, I have found that Claim 1 lacks novelty in the light of the OMC differential.

INVENTIVE STEP

The Patents Act 1990 refers to inventive step as follows:

“7 (2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately.
(3) For the purposes of subsection (2), the kinds of information are:
(a)prior art information made publicly available in a single document or through doing a single act; and

(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area.”

As to the question of how to determine what would have been obvious to a person skilled in the relevant art, I am guided by the question posed in Allsop & Another v. Bintag Ltd., (1989) AIPC 90-615 at page 39331:

"Would the hypothetical non-inventive person skilled in the art faced with the problem have taken as a matter of routine whatever steps might have led from the prior art to the invention claimed?"

Mr Fisher made some brief submissions on this ground. He submitted that the specification is unclear as to what problem the claimed invention has overcome. Therefore the problem/solution approach to analysing inventive step is not appropriate. He asserted that all of the claims lack an inventive step in the light of the OMC differential and common general knowledge.

Ms Mullins argued that the claims did not lack an inventive step. She rejected the various US patent specifications exhibited to the Norman declaration as being irrelevant to the question of inventive step.

With respect to analysing the inventive step of the claims, I have a similar difficulty as Mr Fisher in determining the problem solved by claim 1. Despite the submissions of the patentee and the evidence of Mr Reinhold and Mr Chaseling, I cannot glean from the body of the petty patent specification any problem which claim 1 solves which relates to the enclosing of the gears. At best, the problem solved by claim 1 appears to be to provide a differential suitable for a simple drive train which utilises a common driving axle suitable for ride-on mowers and small vehicles and which is reliable and efficient in use. I think it is convenient that I consider what a person skilled in the art would do when faced with this problem rather than ignore the problem/solution approach.

In relation to claim 2, I see the problem solved by this claim as being the same as that for claim 1 plus the need for the differential to be selectively utilised or locked.

Claim 3 appears to solve a similar problem to claim 2 as well as solving the problem of not having to locate the locking means internally in the gear casing or providing easier access to the locking means.

Because the claims and the description are not restricted to ride-on mowers, it seems to me that the relevant person skilled in the art would be one who was familiar with small vehicles, particularly chain driven vehicles with two rear wheels and differential arrangements for those vehicles. I am prepared to accept that Mr Norman, Mr Hooper and Mr Reinhold would all be such persons.

In relation to sub-section 7 (3)(a), referred to above, I refer to the OMC differential service manual. It seems to me that, if Mr Norman were faced with the above problem in relation to claim 1, he would consider the OMC differential to be relevant as required by sub-section 7 (3) above. It seems to me that Mr Norman would then consider the problem solved. I do note that, in his declaration, Mr Norman provides an opinion on what he thinks a manufacturer of ride-on mowers and like small vehicles would do and not what he himself would do. Nevertheless, this part of Mr Norman’s declaration has not been controverted by the patentee. Therefore I believe that claim 1 lacks an inventive step in the light of the OMC differential.

In relation to the problem solved by claim 2, the patentee has argued that the locking means of claim 2 is part of the common general knowledge in the art (in order to establish the case of early priority date entitlement). This appears to be supported, in part, by the wording of the specification itself, on page 2, lines 22 to 26, where known locking means are referred to. It seems clear enough then that, if a person skilled in the art was faced with the additional problem of selective locking of the differential, such a person would as a matter of routine use a known locking means. Therefore I find that claim 2 lacks an inventive step in the light of the OMC differential and known differential locking means.

I do not think there is sufficient evidence for me to come to the conclusion that claim 3 lacks an inventive step in the light of the OMC differential. While Mr Norman attempts to add the disclosure of a certain US patent document to the OMC differential, he does not satisfactorily establish that this disclosure is either part of the common general knowledge or that the document falls into the category mentioned in sub-regulation 7 (3)(b) above.

I have found that claims 1 and 2 lack an inventive step in relation to the OMC differential.

SECTION 40

While the section 28 notice refers to sub-section 40(3), the accompanying submissions in relation to this deal with the petty patent claims lacking fair basis on the parent specification rather than any internal defect of the petty patent specification itself.

The Norman declaration refers to some alleged section 40 defects in the petty patent claims to claim 3 before and after amendment.

Before I consider claim 3 in relation to section 40, I will consider claim 1. I have indicated earlier in this decision, that the present petty patent specification discloses no advantages associated with the gear case enclosing the gears. The advantages of the drive axle assembly over the prior art appear to be the particular type of locking means used and the fact that the differential is arranged to be concealed within one of the wheel hubs (page 3, lines 3 to 7). It is interesting to note that, on page 3, lines 2 and 3, the specification indicates that the differential may be of a conventional form and be provided with a differential case and axle housing. Ms Mullins argued that this wording had been included in the petty patent specification in error. This wording appears in the parent specification. While it may be in error, I do not think that the rest of the specification provides any hint that there is an error i.e. it is not inconsistent with the rest of the description.

As claim 1 does not include any reference to either the differential being enclosed either totally or substantially within the wheel hub or the use of a locking means, I am of the opinion that it is inconsistent with the disclosure in the specification which suggests to me that the invention resides in the inclusion of either of these features with the rest of the features defined in claim 1.

If I apply the above mentioned Mond Nickel rules to the fair basing of the petty patent claims on the body of the petty patent specification, I find that the specification is inconsistent with claim 1 because claim 1 does not include either of these two features i.e. the second rule must be answered positively.

I find that claim 1 is not fairly based on the matter described in the specification.

As claim 2 includes reference to a locking means, I do not have the same as concern as I have with claim 1. Therefore the feature introduced by claim 2 has fair basis.

With respect to claim 3, paragraph 21 of the Norman declaration summarises the features of claim 3, the relevant portion of the summary being:

“(e)the differential locking means includes

(1) a locking member which is supported by said one wheel hub offset from said transverse axle

the locking member may be selectively engaged for movement with

(2) an adjacent portion of the drive axle assembly which rotates relative to said one wheel hub during differential rotation, whereby the differential action is prevented.”

Paragraph 22 of the Norman declaration says:

“In my opinion, feature (e) of amended claim 3 is not entirely clear as it seems to be reaching beyond the description of the Petty Patent which describes locking member (1) as a wheel nut extensions (sic) 242, and, adjacent portion (2) of the drive axle assembly as the locking plate 250 which slides axially on the axle. From the language used in amended claim 3, it is my opinion that “an adjacent portion of the drive axle assembly which rotates relative to said one wheel hub during differential rotation” could cover anything from the drive sprocket, the differential housing, the main axle or the fixed sun gear.”

As I have indicated earlier in this decision, I have interpreted claim 3 to include only the wheel nut extension(s) without any specific definition of the locking plate. Therefore, claim 3 defines an arrangement which, while it might include the preferred form of the locking means within its scope, includes other forms of locking means. However, there is now support for claim 3 in the petty patent specification due to the amending of page 2 of the description. I do not find that claim 3 lacks fair basis on the petty patent specification.

In summary, I have found that claim 1 lacks fair basis on the matter described in the petty patent specification.

SUMMARY

I have found that the longest possible term of the petty patent expired on 1 May 1997.

I have found that the notifier has been successful in establishing the grounds of lack of novelty and lack of inventive step and I have found that the claims do not comply with section 40.

I refuse to extend the term of the petty patent with the specification in its present form.

DIRECTION TO AMEND

A normal remedy for the petty patentee in hearings of this nature is for the delegate of the Commissioner to give the petty patentee an opportunity to file amendments to overcome the defects found in the specification.

In the present case, I think that it might be possible for the petty patent to be amended to overcome the defects I have identified.

However, the longest possible term of the petty patent has expired so that it could be argued that the petty patentee is no longer in fact a patentee. If this is the case, can someone who is no longer the patentee amend the specification?

I note that the definition of “patentee” in Schedule 1 of the Patents Act 1990 is as follows:

“`patentee’ means the person for the time being entered in the register as the grantee or proprietor of a patent.”

At the present moment, Bartlem Pty Ltd is the person entered on the Register as the grantee of petty patent no. 664820.

Subsequent to the hearing, I asked both parties, in a letter dated 22 May 1997, to provide me with written submissions on this issue.

The main thrust of Mr Pizzey’s submissions is that section 69(4) of the Act provides the Commissioner with the power to give the applicant for the extension of term of the petty patent an opportunity to amend. Mr Pizzey argued that Bartlem is still the applicant for the extension of term whether or not the petty patent has ceased. Section 108 sets out the procedure which the Commissioner should follow in giving the applicant (for the extension of term) the opportunity to amend. Section 69(4) is as follows;

“(4) The Commissioner must not refuse to grant an extension of the term of a petty patent that the Commissioner is satisfied is invalid unless the Commissioner has, where appropriate, given the applicant a reasonable opportunity to amend the relevant patent request or complete specification, or both, for the purpose of removing the grounds of the invalidity and the applicant has failed to do so.”

Mr Fisher made a number of points in his written submissions as follows:

In relation to the definition of “patentee”, Mr Fisher argued that the more important term is “patent” and whether or not there is such a thing as a patent if it has expired. Mr Fisher submitted that the Patents Act does not contemplate retrospective amendments of any kind. If such amendments were allowed to an expired patent, Mr Fisher argued that a patentee would gain retrospective rights which might not otherwise have existed but for these amendments. Mr Fisher submitted that this would result in retrospective liability which would appear to be contrary to the laws of natural justice. Accordingly, Mr Fisher contended that “patent” in this sense must mean a patent in force.

Mr Fisher also submitted that the date of amendment is the date on which the proposed amendments are filed. There is no provision in the Act to back-date amendments. The amendments would therefore have no effect.

Mr Fisher also argued that a direction by the Commissioner to make amendments would result in needless cost to both parties and public funds because the Commissioner would have to consider allowability of those amendments and then advertise them for opposition purposes.

As a starting point, I note Mr Pizzey’s comments in relation to section 69(4). It seems to me to be practically impossible, where a section 28 notice has been filed, for the Commissioner to hear the matter and issue a decision including an opportunity for the applicant requesting an extension of term to amend the specification before the initial 12 months term of the petty patent has expired. This is because the prescribed period for filing section 28 notices does not expire until 11 months after the granting of the petty patent. Therefore it seems to me clear that the Patent Act envisages that amendments can be made to a petty patent specification even though the patent is not in force. Mr Fisher agrees that the Commissioner can allow the patentee an opportunity to amend in such a situation.

The Act therefore envisages a situation where a patent can be amended even though the patent is not in force. Mr Fisher has argued that the Act does not provide for amendment where the patent has expired i.e. where the total possible term of the patent has run out. In this respect, his reference to the significance of the term “patent” in the definition of patentee” is critical. If Mr Fisher is correct in his assertion that “patent” means a patent which has not expired then I do not think that I am entitled to allow the patentee an opportunity to file amendments.

Section 187 of the Patents Act 1990 refers to what is kept on the Register as follows:

“Particulars of patents in force, and other prescribed particulars relating to patents (if any) must be registered.”

Therefore, Mr Fisher does have some support for his line of argument in that the Register includes particulars of patents in force. However does this mean that the Register does not also contain particulars of patents which are not in force?

In answering this, I am guided by the majority decision of the High Court of Australia in Sanofi v Parke Davis Pty Ltd and Anor. 1 IPR 383 where the court considered whether or not a patentee was still a patentee within the meaning of the Patents Act 1952 even though the term of the patent had expired. The majority decision indicated that, in relation to the equivalent of the above definition in the 1952 Patents Act, there was no suggestion that patents not in force should necessarily be removed immediately from the Register. The court decided that the term “patentee” can included a person who owns a patent whose term has expired.

Even though this decision concerned a standard patent under the 1952 Act, it seems to me that similar reasoning applies to a petty patent under the 1990 Act. Therefore, I believe that Bartlem can be described as a patentee within the meaning of section 104. I agree with Mr Pizzey that Bartlem is still the applicant for the extension of term of the petty patent even though the petty patent has expired.

I also note some obiter dictum in Leggatt v Hood’s Original (1951) 68 RPC 3 at 22, where Evershed M.R. commented as follows:

“...I should not be taken to be assessing to the view that the Court has no power to order an amendment after expiry. I am not expressing any final view about that, it is not necessary, but, as present advised, I am inclined to think that the Court would have such power.”

Even though this deals with the court’s powers rather than the Commissioner’s, it suggests, similarly to the Sanofi decision (supra), that a patentee can amend an expired patent.

In relation to the other points raised by Mr Fisher, the question of retrospective liability is not one that I think carries a great deal of weight in the present circumstances. Section 102(2) which deals with allowability of amendments requires that, where a specification is accepted, an amendment is not allowable if it would introduce a claim which did not fall within the scope of the claims of the specification before amendment. It seems to me that it is not possible to introduce claims which would make something an infringement which was not an infringement before if the amendments properly satisfy section 102(2). In this respect, I note that various decisions on allowability of amendments under requirements similar to that set out in section 102(2) have used the test "would the amendment make anything an infringement which would not have been an infringement before the amendment?" While these decisions do not deal specifically with section 102(2), they deal with similar sections in the UK Patents Act and the equivalent section in the 1952 Patents Act. See The Distillers Co. Ld.'s Application, (1953) 70 RPC 221 at page 223, W.J. Voit Rubber Corp.'s Application, ( 1965) AOJP 1752 and AMP Incorporated v Commissioner of Patents, (1974) AOJP 3224. It seems to me therefore that any amendment satisfying section 102(2) would not make something an infringement which did not infringe before amendment. This means that there would be no retrospective liability contrary to what Mr Fisher has suggested.

In relation to the issue of needless expense, I do not think that this argument helps Mr Fisher’s case much. It seems to me that there is no real difference in the expense which arises if an opportunity to amend is provided before the patent has expired compared with after the patent has expired. Certainly there is an issue with how the amendments will affect the parallel court case but this has nothing to do with whether or not the patentee is bale to amend.

Mr Fisher also argued that there is no provision in the Act for back-dating amendments. In essence, Mr Fisher is arguing that the date of the amendments is their date of filing and therefore they have no effect on the expired petty patent specification. In section 104(6), the amendment is taken to have been made on its allowance. However, as I have indicated above, the Act provides for the amendment of a petty patent specification even where the petty patent has, for the time being, ceased. In such a case, there is, for the time being, no patent but such amendments presumably can be made to the specification so that they in effect are back-dated to when the patent was in force to remove any invalid matter and allow the patentee to still have protection for any valid matter in the patent. I see no difference in the present case where the patent has in fact expired. The patentee can still sue for infringement even after the patent has expired and therefore it seems reasonable for the Commissioner to allow the patentee to remove any invalid matter from the specification.

It seems to me therefore that the Commissioner is entitled to allow Bartlem Ltd an opportunity to amend the petty patent to overcome the above defects.

However, I am conscious of the parallel court action on the present petty patent dealing with infringement and revocation. Any amendment to the claims could potentially affect both the infringement and revocation actions. On the other hand, I have indicated that I cannot extend the term of the petty patent with the specification in its present form.

In the circumstances, I think it is appropriate to give the patentee an opportunity to propose amendments to the petty patent specification to overcome the defects I have identified above. However, it seems to me that I should adopt a similar practice to that set out in paragraph 22.13.7 of Volume 2 of the Australian Patent Office Manual of Practice and Procedure. The proposed amendments should be processed within the Patent Office up to the point of allowance after which the notifier should be asked if there is any objection to the amendments being allowed. If there is an objection, the Commissioner should seek a direction from the court as to the most appropriate action.

I therefore allow the patentee an opportunity to propose amendments to overcome the above defects within 60 days of the date of this decision unless the Federal Court directs otherwise.

COSTS

The notifier has been successful in establishing the grounds of lack of novelty and lack of inventive step in relation to some of the claims.

Therefore, I award costs against the patentee, Bartlem Pty Ltd.

R. Hallett
Delegate of the Commissioner of Patents

Patent attorneys for the patentee : Pizzeys, Brisbane
Patent attorneys for the notifier : Fisher Adams Kelly, Brisbane

[1997] APO 29

25 June 1997