Behringwerke Aktiengesellschaft - [1986] APO 5

In the Matter of the Patents Act 1952
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In The Matter of Patent Number 535123 in the Name of BEHRINGWERKE AKTIENGESELLSCHAFT
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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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Behringwerke Aktiengesellschaft [1986] APO 5
Case: [1986] APO 5
Decision Date: 12 March 1986

CaseChat Overview and Summary

Behringwerke Aktiengesellschaft was the subject of a legal dispute concerning the correct inventor of a patent granted under the Patents Act 1952. The dispute arose when it was discovered that the inventor named in the patent, Klaus Hunger, was not the actual inventor. The true inventor was identified as Klaus Habenstein. The matter was brought before the court to determine whether the patent, the deed of letters patent, and the declaration in support of the application could be amended to reflect the correct inventor.

The primary legal issue the court had to address was whether the Commissioner of Patents had the authority to amend the patent, the deed of letters patent, and the declaration in support of the application to correct the inventor's name. This hinged on whether the error in the inventor's name constituted a "clerical error" under the relevant regulations. The court also needed to determine if such an amendment could be made under regulation 76 of the Patents Regulations.

The court examined the definition of "clerical error" as set out in previous High Court decisions and found that the error in the inventor's name met the criteria for a clerical error. The court noted that the majority judgment in Ex Parte Martin had established that a clerical error is one that occurs in the mechanical process of writing or transcribing. The error in this case, caused by a clerk who transcribed the wrong name from a different application, fit within this definition. The court further reasoned that the regulations under consideration allowed for the amendment of patents and the Register of Patents to correct clerical errors, even if those errors originated in a different document such as the declaration in support of the application. The court concluded that the Commissioner had the authority to amend the patent, the deed of letters patent, and the declaration to correct the inventor's name, provided that the necessary requests were made and appropriate evidence was provided.

If the patentee were to lodge the appropriate requests under regulation 76, the court indicated it would allow the amendments. The court was also prepared to dispense with the requirement for a certified copy of the document on which the amendments are shown, given the circumstances of this case.

Orders