Emperor Sports Pty. Limited

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 662655 in the name of EMPEROR SPORTS PTY. LIMITED

Title: A Device For Use In Sport

Action: Request under S104 by EMPEROR SPORTS PTY. LIMITED to amend the specification

Decision: Issued .
Abstract

The last statement of proposed amendments filed during re-examination process on 18 May 2004 was never considered by the examiner during the re-examination process. The delegate’s decision revoking the patent indicated that, while the claims of 18 May 2004 may have included subject matter which was novel and inventive, there was doubt as to whether the amendment to insert the matter was allowable. To clear up any doubt, the amendments were examined and an adverse report issued on indicating that the amendment was not allowable. Emperor subsequently appealed this decision. However, subsection 104(7) of the Patent Act allows for an appeal “against a decision of the Commissioner allowing, or refusing to allow, a requested amendment”. There was doubt as to whether the report was in fact a “decision” under this section. To avoid uncertainty, the Commissioner proposed to issue a formal decision.
The amendment is not allowable under S 102(1) since claim 1 would claim matter not in substance disclosed. Proposed Claim 1 (on which all other claims are ultimately dependent), claims a device “when used” in a game of Rugby League or Australian Rules football. The interpretation to be placed on the term “when used” has had no clear guidance from the courts. The traditional interpretation, following the obiter in Wellcome Foundation Ltd v Commissioner of Patent 30 ALR 510, means, in essence, that claim 1 is a claim to a method of playing either Rugby League or Australian Rules football. However, an alternative interpretation is that the claim is directed to a device limited in the space/time continuum to being within a game of Australian Rule football. I am disinclined to adopt the alternative interpretation, since no clear guidance has been provided by the courts. For either interpretation, there is no disclosure in the specification, beyond a passing comment, of any form of Australian Rules football which uses the device, no rules that may be applicable to this game, and no hint as to what rules need to be created and implemented to allow an Australian Rule football game to be played with the particular device described. As such, there is no “real and reasonably clear disclosure” of a system of playing Australian Rules football with the device.
Amendment refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 662655 by EMPEROR SPORTS PTY. LIMITED and a request under S104 to amend the specification

BACKGROUND

Emperor Sports Pty. Limited ("Emperor") under its previous name of Oztag Pty. Limited, first filed patent No. 662655 as provisional application PL3261 on 25 June 1992. The associated complete application (48739/93) progressed to be advertised accepted as patent application number 662655 on 7 September 1995, with the patent being subsequently granted in the usual manner.
On 10 September 2003 the Australian Football League ("AFL") under Regulation 9.2, requested a re-examination of the complete specification. Re-examination of the specification was undertaken. Three adverse reports were issued (the last on 3 May 2004) and leave sought by the patentee to propose various amendments to the granted claims throughout the re-examination process. Leave to amend was, however, not granted and as such the specification still included the originally granted claims, without a successful resolution of the novelty and inventive step issues raised in the re-examination reports. On 18 May 2004, the last statement of proposed amendments was filed, including the claim set upon which submissions at the hearing were based. However, these claims were never considered by the examiner during the re-examination process.
To resolve these re-examination issues, the matter was set down for a hearing in Canberra on 16 June 2004. In the delegate’s decision (which revoked the patent), the delegate indicated that while the claims of 18 May 2004 may have included subject matter which was novel and inventive, there was doubt as to whether the amendment to insert the matter was allowable. To clear up any doubt, the amendments were examined and I issued an adverse report on 19 October 2004 indicating that the amendment was not allowable.
The decision of the delegate revoking the patent has been appealed. When Emperor received my report on the amendment they also appealed this report. The intention is to roll the appeal against the delegate’s decision and the appeal against the amendment into one. However, subsection 104(7) of the Patent Act allows for an appeal “against a decision of the Commissioner allowing, or refusing to allow, a requested amendment”. There was doubt as to whether the report issued on 19 October 2004 was in fact a “decision” under this section. To avoid any uncertainty as a result of this issue, the Commissioner proposed issuing a formal decision on the allowability of the amendments.
Emperor indicated that they did not wish to be heard and had no further submissions to make. Consequently my decision is based upon the submissions made by Emperor during the re-examination process.
DECISION
Relevant law
Section 102 of the Act is germane in assessing the allowability of amendments. The relevant parts read:
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40(2) or (3).
(2A) For the purpose of subsection (2), relevant time means:
(a)in relation to an amendment proposed to a complete specification relating to a standard patent - after the specification has been accepted
Amendment
In my opinion, the amendment is not allowable since claim 1 would claim matter not in substance disclosed.
Before amendment, the wording of granted claim 1, which was the only independent claim, was:
1.A device for use in sport, including one or more indicia, the or each indicium being adapted for removable attachment to a user’s garment, such that in use and when attached to a user’s garment, the removal of the, each, or one or more further indicia indicates a predetermined result.
The proposed amendment introduces new claims. Proposed Claim 1 is as follows:
1A device when used in the game of Rugby League or Australian Rules football, the device including one or more indicia, the or each indicium being adapted for removable attachment to a user's garment, such that in use and when attached to a user's garment, the removal of the, each, or one or more further indicia takes the place of a tackle in the game.
Proposed Claim 1 (on which all other claims are ultimately dependent), claims a device “when used” in a game of Rugby League or Australian Rules football. The device is then characterised by a feature (removability) of the device, and the effect that the device’s removal has on the game (replacing a tackle). The term “when used” is problematic. Traditionally its use has meant that the claim that includes it is considered to be a method claim. This follows from the obiter in Wellcome Foundation Ltd v Commissioner of Patents 30 ALR 510 (see, for example, the Patent Office’s Manual of Practice and Procedure, volume 2, paragraph 10.8.2.1). However, it would also appear that claims such as these are in fact directed to a device limited in the space/time continuum to being within a particular field of application. The decision in Astra Lakemedal Aktiebolag v Commission of Patents 31 IPR 1, which overturned a decision by the Commissioner in which “when used” was interpreted to limit the relevant claims to method claims, would prima facie seem to support that use of the term “when used” does not limit the claim to being a method claim. However, that decision appears to hinge on the fact that the Commissioner’s delegate did not give any meaning to the words “to which the application relates” which appeared in S75(2)(b) as it was then, but are now deleted. The decision gives no explicit guidance on the interpretation of “when used’, and what effect it has on the scope of the claim. Absent any clearer guidance, I am disinclined to adopt the alternative interpretation, and I will continue to interpret “when used” as limiting the claims to method claims. However, I will also comment on the effect of the alternative interpretation where appropriate.
Claim 1, as proposed to be amended, can be notionally rewritten as two claims directed to different aspects as follows:
(a)A method of playing a game of Rugby League football using a particular removable device which, when removed, has the effect of replacing a tackle in the game; and
(b)A method of playing a game of Australian Rules football using a particular removable device which, when removed, has the effect of replacing a tackle in the game.
While there is mention at page 7, line 1 of the description that the device can be used in Australian Rules football, it does not of itself supply a real disclosure. The specification mentions all sport, but only gives details of a particular code of football, i.e. a Rugby League-style code. The only disclosed purpose of the device for any sport is that when it is removed (signifying a tackle) the attacker is supposed to stop. This is the general effect of a tackle in Rugby League. In touch football, the removal of the “tag” is a clear replacement of the tackle, and its effect is exactly the same as in Rugby League. This condition (stopping when tackled) is essential to the playing of either game. However, this has no equivalent rule in Australian Rules football. The question must be asked; what effect would removal of the device have on the game of Australian Rules football?
In Australian Rules football, the purpose of a tackle is to dispossess the player of the ball. When tackled, the player in possession of the ball must release it, either via a kick or a handball. The tackle’s purpose is not to stop the play. Any game stoppages that arise around a tackle only do so if there is a penalty awarded due to an illegal tackle, or for the player not releasing the ball when they are tackled. In light of this, the effect on the game that removal of the device (signifying a tackle) would have is not clear at all. There is no disclosure in the specification of any form of Australian Rules football which uses the device, no rules that may be applicable to this game, and no hint as to what rules need to be created and implemented to allow an Australian Rule football game to be played with the particular device described. The person skilled in the art is not instructed in any way how the device is to be used in Australian Rules football, and it is not otherwise apparent to me how the device could be so used.
As such, there is no “real and reasonably clear disclosure” of a method of playing Australian Rules football with the device. A claim to playing Australian Rules football with the particular device disclosed (as is the case here), would claim matter not in substance disclosed. Any amendment to insert such a claim is not allowable.
Therefore, the proposed amendment filed on 18 May 2004 is not allowable under S102(1) when it encompasses Australian Rules football . This conclusion is the same even if I interpret claim 1 to being directed a device limited in the space/time continuum to being within a game of Australian Rules football. As noted above, there is simply no detailed disclosure which explains how the device is used in this game.
CONCLUSION
The proposed amendment filed on 18 May 2004 to insert new claims into the granted patent is not allowable since, by specifically claiming Australian Rules football, it would result in the claims claiming matter not in substance disclosed (irrespective of what interpretation is placed on the term “when used”).
As no other submissions have been received looking to overcome this problem, and none are to be filed, I refuse the amendment.
GREG POWELL
Delegate of the Commissioner of Patents
Patent attorneys for the patentee : Griffith Hack, Sydney

[2004] APO 28

3 November 2004