Day v Perrott - [1924] HCA 14

PatentApplication-Opposition-Disconformity between provisional and complete

specificationsConstruction of specifications-Patents Act 1903-1921 (No. 21 of 1903-No. 24 of 1921), secs. 35, 56, 65,

The appellant lodged, pursuant to the Patents Act 1903-1921, a provisional specification for an invention called improvements in toys and elements for construction thereof," from which it appeared that the object of the invention was in toys, similar to the well-known Meccano, to provide rigidity without the use of bolts and nuts. This object was to be obtained by so shaping the ends of each element that, when the end of one was passed through a hole in another,

34 CLR 226

the two could be locked together by a key, and one form of key indicated was a pronged key which would fit tightly into niches one on each side of the end, which was passed through the hole. In his complete specification one of the appellant's claims was for a means of locking elements together which was independent of the shaped ends of the elements and was not referred to in his provisional specification.

The respondent opposed the grant of a patent on the grounds mentioned in sec. 56 (d) of the Patents Act 1903-1921, namely, that the complete specification claimed an invention other than that described in the provisional specification, and that such other invention formed the subject of an application made by the respondent in the interval between the leaving of the provisional specification and the leaving of the complete specification. The Commissioner of Patents upheld the opposition.

Held, by Knox C.J., Isaacs, Gavan Duffy and Rich JJ. (Starke J. dissenting), that there was disconformity between the provisional and the complete specifications. and, therefore. that the respondent's opposition was properly upheld.

APPEAL from the Commissioner of Patents.

On 21st April 1922 Alfred Carlyle Day applied for a patent for an invention entitled Improvements in toys and elements for construction thereof"; and on 24th April he lodged at the Patents Office a provisional specification in which he declared the nature of his invention to be as follows This invention relates to the production of toys and to means therefor. One object of the invention is to provide combinable elements of simple forms which allow of making easily and of disassembling a great multiplicity of different structures which will be reasonably rigid, durable, amusing and interesting, and which may have working parts. The elements I provide may be used in combination with other elements already used in connection with toy structure production. The elements I use include parts which will enable machinery and buildings and manufactured objects generally to be imitated. These elements include rails, strips or bars, blocks or bodies, planes, wheels, pulleys, cranks, levers, handles, bolts, brackets, stays, clutches, distance pieces, locking keys, bearings, chains, weights, springs, and other known mechanical integers. One novelty I provide is holes or slots having, extending outward from a central aperture, recesses in one or more pairs. I avoid the use of nuts and bolts…

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.

Continue reading Day v Perrott

Details

AGLC: Day v Perrott [1924] HCA 14
Case: [1924] HCA 14
Decision Date: 26 May 1924

CaseChat Overview and Summary

The appellant, Alfred Carlyle Day, sought a patent for improvements in toys and construction elements. The respondent, James Perrott, opposed the grant of the patent, alleging disconformity between the provisional and complete specifications, and that the invention claimed in the complete specification had been the subject of an earlier application by the respondent. The Commissioner of Patents upheld the opposition. The matter proceeded to the High Court of Australia on appeal.

The central legal issue before the High Court was whether there was disconformity between the appellant's provisional and complete specifications, as contemplated by section 56(d) of the Patents Act 1903-1921. This required the court to determine if the complete specification claimed an invention that was not fairly described in the provisional specification.

A majority of the High Court, comprising Knox C.J., Isaacs, Gavan Duffy, and Rich JJ., held that disconformity existed. They reasoned that the provisional specification described an invention focused on eliminating bolts and nuts by using shaped elements with specific niches and a pronged key to lock them together. The complete specification, however, introduced a separate locking means that was independent of these shaped ends and niches, effectively claiming an invention beyond what was foreshadowed in the provisional specification. Starke J. dissented, finding that the modification in the complete specification was merely a substitution of obvious and equivalent means for achieving the same object of locking elements, and thus fell within the ambit of the provisional disclosure.

The appeal was dismissed with costs, upholding the Commissioner's decision that the patent should not be granted due to the disconformity between the specifications.

Orders