Ciba Ltd v Commissioner of Patents

[1960] HCA 36

HIGH COURT OF AUSTRALIA

Menzies J.

CIBA LTD. v. COMMISSIONER OF PATENTS

(1960) 103 CLR 526

28 June 1960

Patents

Patents—Application—Specification—Direction by Commissioner of Patents to amend—Appeal against direction—Principles upon &hich Appeal Tribunal ought to proceed upon hearing of appeal—Patents Act 1952-1955 (Cth), s. 49 (2) (4).

Decision

June 28.
MENZIES J. delivered the following written judgment:-
On 29th April 1957 Ciba Limited applied for a patent for an invention entitled "Method of making inscriptions on the surfaces of transparent structures", and lodged a complete specification. This specification was twice amended, and as it stood on 20th February 1959 it was for an invention entitled "Self-inscribed transparent containers" and it embodied two claims, as follows: (at p527)

2. "1. A container for pharmaceutical and cosmetic products, at least one part of which is composed of a clear colorless transparent mouldable synthetic resin material bearing an inscription on said transparent part, the areas representing elements of said inscription being sunken and formed as surfaces broken up by a multitude of small projections located on the interior surface of the container part said broken-up surfaces being free of any coloring matter or pigment. (April 27, 1956).
2. A container substantially as hereinbefore described with reference to the accompanying drawings. (April 27, 1956)". (at p527)

3. The final amendments were made on 28th January 1959 pursuant to a direction to amend given by the Acting Deputy Commissioner of Patents on 15th January 1959 pursuant to s. 49 (2) of the Patents Act 1952-1955. After making these amendments, the appellant sought another decision under the sub-section, and on 20th February 1959 the Acting Deputy Commissioner by telegram directed the application "be amended to satisfaction of Commissioner before 4 p.m. Monday, 23rd February 1959". This direction has been treated as a direction to amend further the amended complete specification as it then stood, and it is from this direction that an appeal has been brought under s. 49 (4) of the Act. (at p527)

4. Upon an appeal of this sort, I do not think that the Appeal Tribunal should interfere with a direction to amend unless it is satisfied both that the specification is in the form required by the Act (ss. 35, 38, 40 and 44), (which is the matter for examination and report under s. 47), and that any objection to the specification on the ground that the invention claimed is the subject of a prior claim (s. 48 (1) (a) and (c), or has been published previously (s. 48 (1) (b) and (d), or was not novel on the priority date of the claim (s. 48 (1) (e)), (which are matters for investigation and report under s. 48), is mistaken. (at p527)

5. In this case, the Acting Deputy Commissioner apparently had reports from an examiner pursuant to ss. 47 and 48, and, as I read the reasons for the direction that he gave, the Acting Deputy Commissioner considered that the specification as amended did not describe the invention claimed with sufficient particularity to ensure that what the invention claimed was novel in April 1956. (at p527)

6. It appears to me that the specification does need amendment to comply with the requirements of the Act. In the first place, it is uncertain, confused and vague. Although it refers to a container for "pharmaceutical and cosmetic products", Mr. King, for the appellant, told me that it was intended to cover a container for either type of product. The phrase "the areas representing elements of said inscription" was, I was assured, intended to mean more than merely "the inscription", though what more was intended never clearly appeared. The phrase "surfaces broken up by a multitude of small projections" is not precise, and its vagueness becomes a matter of importance when I am told that the word "small" was adopted to describe something larger than minute and was intended to convey the notion that the projections should at least be of a size visible to the naked eye; and the word "projection" was intended to cover sharp projections and not what were described as round projections - "protuberances", as they were called. The point of these distinctions is to mark off the invention claimed from inscriptions by processes such as sand-blasting, which the Acting Deputy Commissioner considered were not novel. I agree with the Acting Deputy Commissioner when he said: "In the absence of any definition, 'small projections' may or may not include the projections which would result from sand-blasting or engraving . . .". (at p528)

7. The Acting Deputy Commissioner went on to say that sand-blasting or engraving were methods of making an inscription disclosed in the prior art documents, but it was argued before me that even if the specification should be read to cover inscriptions made by such a process, it would still describe something that was novel in April 1956. I am in no position to say that the Acting Deputy Commissioner was wrong in deciding that in April 1956 to inscribe transparent plastics by sand-blasting on the reverse side lacked novelty; indeed, I may say that on the limited material before me I am disposed to think that his view was correct. It is sufficient, however, that I am not satisfied that the Acting Deputy Commissioner was mistaken on this point. (at p528)

8. For the foregoing reasons the appeal must be dismissed with costs. As requested, I extend the time for acceptance until 1st December 1960. (at p528)

Orders

Appeal dismissed with costs. Order that the time for acceptance of the appellant's application and complete specification No. 27373 of 1957 be extended until the 1st December 1960.