Behringwerke Aktiengesellschaft

[1986] APO 5

In the Matter of the Patents Act 1952

‑ and ‑

In The Matter of Patent Number 535123 in the Name of BEHRINGWERKE AKTIENGESELLSCHAFT

‑ and ‑

In the Matter of a Request under Regulation 76.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         Patent number 535123 in the name of BEHRINGWERKE AKTIENGESELLSCHAFT was sealed on Convention application 59723/80 on 22 June, 1984.  Consistently with the information set out in the declaration lodged in support of application 59723/80 under sub‑section 35(3), the deed of letters patent recites that the actual inventor is KLAUS HUNGER.
         On 13 September, 1984 the Attorneys for the Patentee informed the Office as follows:

"We have been informed by the applicant that the declaration in support of this application is incorrect.

Apparently, the inventor Klaus Hunger shown in that declaration is not the correct inventor.  We have not been informed of the circumstances in which this error arose.  We are informed that, although there is a Dr. Klaus Hungerer in the applicant company, he is not the inventor in this case.  Furthermore, his name has been mispelled.  Apparently, the true inventor is Klaus Habenstein.  We have been supplied with a copy of the Canadian Patent which show the correct inventor.  A copy of this patent is lodged herewith.

Please let us know what evidence you would require to support substitution of the name of the correct inventor.  Please let us know also whether this substitution could be carried out under regulation 76."

The response of the Office was to advise that the amendment could not be carried out under regulation 76.  Following further representations, and the

lodging of evidence, the Office advised the Attorneys as follows on 3 June, 1985:

"In Ex Parte Martin (89 CLR 381), the majority judgement identified a clerical error as "an error which arises in the mechanical process of writing or transcribing" (Page 406). That conclusion is considerably broader than the approach adopted by Williams A.C.J. who states that ‑

"A clerical error, I would think, occurs where a person either of his volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different".

The conclusion of Williams A.C.J. clearly does not include errors which arise without intention e.g. where a clerk misreads or misunderstands instructions and transcribes or writes the instruction as misread or misunderstood.  Errors of that kind, however, are clearly comprehended within the broader concept of a clerical error adopted by the majority of the High Court.  Thus an error in a document purporting specifically to be the handiwork of a particular person cannot be a clerical error if it was caused by someone other than that person (89 CLR paragraph bridging pp.403 and 404 and p.406).  In other words, where the person "actually and directly responsible for the mistake" is not the author, a mistake from such source, however innocently made "consists of a simple mis‑statement of fact and that is the whole of the matter".  It appears that the circum‑

stances in the present case are on all fours with those in Ex Parte Martin in that the document concerned required to be signed by a person as a declaration by that person, and that the error arose from a source other than that person.

However it should be noted that the error under consider‑

ation is an error in an application (in the accompanying Declaration).  So far as the Register is concerned, where the Register accords with the particulars in the application, no error, clerical or otherwise, exists in the Register.  That conclusion was also adopted by the High Court in Ex Parte Martin vide (89 CLR p.606, paragraph 1). Accordingly, the Commissioner is not prepared to act on your request."

In reply, the patentee requested a hearing, which was held in Melbourne on 5 February, 1986 when the patentee was represented by Mr. Bruce Caine of Counsel, instructed by Mr. James Murray, Patent Attorney, of Edwd. Waters & Sons, Melbourne.  At the hearing Mr. Caine asked that the proceedings be treated as requests under regulation 76 to amend:

‑the Register of Patents,

‑the Deed of Letters Patent, and

‑the sub‑section 35(3) declaration in support of the application,

to substitute the name of Klaus Habenstein for that of Klaus Hunger as actual inventor.
         The evidence lodged in these proceedings established that all formalities concerning the filing of patent applications in the name of the patentee Behrengwerke AG are carried out by employees of the central patent department of Hoechst AG, the parent company of the patentee.  Application 59723/80 on which the present patent was granted claims priority from German application P29 26 271.3.  ("The first basic application").  The declaration form destined for Australian patent application 59723/80 was prepared in the central patent department of Hoechst AG at the beginning of May 1980.  At that time, the clerk who is generally employed in the preparation of all application papers was absent from Hoechst AG and her work was being carried out by a temporary employee.  That temporary employee was carrying out instructions received from Dr. Stein of Behringwerke AG.  The temporary employee had been instructed to prepare:

‑applications for lodging in the United States, Canada and Australia claiming priority from German basic P29 26 271.3 in which the inventor was Dr. Klaus Habenstein, and

‑applications for lodging in a number of countries claiming priority from German basic P29 25 542.3 in which the inventor was Dr. Klaus Hunger.  ("The second basic application").

I accept that the clerk, in preparing the documents for Australian application 59723/80, erroneously inserted into the declaration form the name of the inventor from the second basic application instead of the name of the inventor from the first basic application.  This action was contrary to the instructions and the intention of Dr. Stein.  After preparation of the declaration form by the clerk, that form was signed by Dr. Stein and filed in this Office at the same time as the application form and complete specification.
         This request is made under regulation 76, the material parts of which are as follows:

76.(1)Subject to sub‑regulation (6), the Commissioner may, on a request being made in accordance with Form 30, amend a patent for the purposes of correcting a clerical error or an obvious mistake.

(2)Subject to sub‑regulation (6), the Commissioner may, on a request being made in accordance with Form 31, amend an entry in the Register for the purpose of ‑

(a)correcting a clerical error or an obvious mistake; or

(b)where a name, or an address, entered in the Register has been changed ‑ changing the name or the address so entered.

(3)Subject to sub‑regulations (6) and (7) and, where the relevant application is an international application, subject to the Treaty, the Commissioner may, on a request being made in accordance with Form 32, amend, for the purpose of correcting a clerical error or an obvious mistake or otherwise, an application, a provisional specification or any other document or instrument (not being a complete specification) lodged at the Patent Office.

(4)........

(5)........

(6)........

(7)........

A precondition to amendment under these sub‑regulations is the finding of a "clerical error".  I think it is clear that the clerk made a clerical error in the preparation of the declaration form.  The meaning of "clerical error" was exhaustively considered by the full High Court in The Queen v. Commissioner of Patents, ex Parte Martin (1953) 89 CLR 381. That decision concerned provisions in the Patents Act 1903 and in the regulations under that Act, rather than the Patents legislation now in force. The majority judges in that case adopted a relatively broad test for "clerical error", the minority judge adopted a narrower test.
         The majority judges (Fullagar, Kitto and Taylor J.J.) stated, at page 406 of the report, that:

"... 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."

The minority judge (Williams A.C.J.) at page 395 of the report stated 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."

The circumstances of the Declaration in the present case fall within both tests.  In the mechanical process of transcribing information from a basic application to a declaration form the clerk transcribed information from the wrong basic application, and so the test set by the majority of the High Court has been met.  Alternatively, under the instructions of Dr. Stein the clerk intended to write one name in the declaration but inadvertently wrote another name, and so the test set by Fullagar J. has been met.  Accordingly, I think it clear that the declaration can be amended under sub‑regulation 76(3) in order to correct the clerical error in it.  That amendment should be by way of substitution of a fresh declaration.
         The situation in respect of amendment of the patent and of the Register of Patents is somewhat different, in that there was no clerical error in the preparation of those documents.  The patent recites that Klaus Hunger is the actual inventor.  That information was transcribed from the declaration form, and there was no error in the transcription.  Similarly, applying the test set by Williams A.C.J., there was never any intention to write anything different in the patent.  The Register of Patents contains a carbon copy of the patent, and so there is no clerical error in the Register.  I must accordingly consider whether regulation 76 allows amendment of a patent and of the Register of Patents to correct erroneous information which come to be in those documents as a result of a clerical error made in the preparation of the declaration form.
         This Office has previously understood Ex Parte Martin as preventing amendment of a patent or of the Register where those documents correctly copied information from an earlier document which itself contained a clerical error.  To determine whether this understanding is correct it is necessary to compare the legislation considered by the High Court in Ex Parte Martin with the present regulation 76.  The High Court considered the then regulation 147 and section 117, which were as follows:

.Any document, for the amending of which no special provision is made by the Act, may be amended, and any irregularity in procedure, which in the opinion of the Commissioner may be obviated without detriment to the interest of any person, may be corrected, if, and on such terms as, the Commissioner thinks fit.

.The Commissioner may on request in writing accompanied by the prescribed fee correct any clerical error in the Register of Patents or in any proceedings under this Act, but no fee shall be required in respect of any correction necessitated solely by error in the Patent Office.

The majority of the High Court in Ex Parte Martin found regulation 147 invalid.  In respect of section 117, Fullagar J., for the majority of the Court, stated:

'So far as s.117 of the Act is concerned, I can see nothing wrong with the view which the Commissioner took.  He said:‑ "So far as the Register is concerned, no error, clerical or otherwise has been shown to exist.  The entries prescribed by s.20 have been made in the Register, and they accord with the particulars in the application and the letters patent granted thereon ... So far as 'any proceedings' are concerned, I do not consider that I can regard the application for a patent as a proceeding at this stage : it ceased to be a proceeding when that for which it applied was granted."  ...  There was in truth no relevant proceeding in the Patent Office at the relevant time ...'

(In Ex Parte Martin the application form, like the present declaration form, required the applicant to give details of inventorship.  Martin, misunderstand‑
ing the requirements of the form, in one case mis‑described himself as 'actual inventor' when he was the assignee of the actual inventor, and in a second case again described himself as 'actual inventor' when he was in fact both a co‑
inventor and the assignee of the other co‑inventor).
         I do not think the passage from the decision of the High Court quoted above is of any assistance in deciding whether, under sub‑regulations 76(1) and (2), the Commissioner may amend a patent or an entry in the Register to change information copied from a declaration when that information is incorrect because of a clerical error.  I am of this opinion because there are significant differences between, on the one hand the wording of sub‑regulations 76(1) and (2) under consideration in this case and, on the other hand, the section 117 which was considered by the High Court.  Section 117 allowed the Commissioner to "correct any clerical error in the Register of Patents".  In Martin's case, the error, even if it had been a clerical error, was not in the Register of Patents and so that Register could not be amended.  The sub‑
regulations currently under consideration allow the Commissioner to "amend a patent for the purposes of correcting a clerical error" and to "amend an entry in the Register for the purpose of ... correcting a clerical error".  Unlike section 117, these sub‑regulations do not contain any express limitation to the effect that the error to be corrected must be in the Register of Patents or in the patent.  I am of the opinion that this difference of wording in the current regulations was intended to broaden the Commissioner's powers of amendment:

"When we see in Acts ... by the very same legislature words added to those used in a prior enactment, it would be setting at nought the clear intention of the legislature to give the later enactment the construction judicially placed on the earlier enactment.  To do so would be to read out of the statute expressions which must be held to have been deliberately inserted to make the new Act differ from the old one."

(See Pearce, Statutory Interpretation in Australia, second edition, paragraph 89, and the authorities there cited).  I think this principle equally applicable where, as in the present case, the legislation under consideration is a regulation made under an Act, which Act in turn repealed the Act under consideration in the earlier decision.  It would also be applicable where, as in the present case, words are deleted in the later legislation.  The present legislation differs from the previous legislation by the deletion of words requiring that the relevant clerical error be "in" the document to be amended.  I accordingly must conclude that this change of wording allows amendment of a patent to correct a clerical error which took place in the preparation of a declaration, and similarly allows amendment of the Register of Patents to correct such a clerical error.
         Accordingly, if the patentee were to lodge requests under sub‑
regulations 76(1), (2) and (3) for appropriate amendment of the patent, of the entry in the Register, and of the declaration I would proceed to allow those amendments.  The operation of sub‑regulation 76(4) would require, in the cases of requests to amend the declaration and the patent, that the request be accompanied by a certified copy of the document on which the amendments are shown.  In the circumstances of this case I would be prepared, under regulation 84, to dispense with that requirement.

(A.J. EVANS)