Five Rings Aerospace Pty Ltd v HeliMods Pty Ltd

[2019] APO 55

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Five Rings Aerospace Pty Ltd v HeliMods Pty Ltd [2019] APO 55

Innovation Patent:                  2018100549

Title:Stretcher Loading Assembly

Patentee:  HeliMods Pty Ltd

Requestor:  Five Rings Aerospace Pty Ltd

Delegate:  O L Haggar

Decision Date:  10 December 2019

Hearing Date:  Written submissions completed on 24 June 2019

Catchwords:  PATENTS – section 191A – request to correct an alleged error in the recorded priority details of an innovation patent – whether the Commissioner has already determined that the Register includes an invalid priority claim – no previous determination by the Commissioner under section 43 – no suggestion by the Register as to actual priority dates – alleged error not shown on balance to exist – request declined – costs awarded against the requestor

Representation:  Patent attorney for the patentee: Wynnes Patent and Trade Mark Attorneys

Patent attorney for the requestor: Madderns Patent and Trade Mark Attorneys

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovation Patent:                  2018100549

Title:Stretcher Loading Assembly

Patentee:  HeliMods Pty Ltd

Date of Decision:                   10 December 2019

DECISION

I am not satisfied on the balance of probabilities that the request under section 191A is justified.  I therefore decline to rectify the Register as requested, and award costs according to Schedule 8 against Five Rings Aerospace Pty Ltd.

REASONS FOR DECISION

Background

1. Patent application 2018202692 (the standard patent application) was filed by HeliMods Pty Ltd (HeliMods) on 27 February 2018 under the provisions of the Patent Cooperation Treaty as international application PCT/AU2018/050172 which originated from innovation patent application 2017100274 (the priority application) filed on 8 March 2017.  On 27 April 2018 the standard patent application was converted to innovation patent application 2018100549.  The innovation patent application proceeded to grant on 16 May 2018.  The innovation patent was examined and a certificate of examination issued on 17 December 2018.

1. On 19 December 2018 Five Rings Aerospace Pty Ltd (Five Rings) filed a request under section 191A to rectify particulars of the innovation patent entered in the Register (the request for rectification).  Five Rings opposed the innovation patent under section 101M on the following day.

1. This decision relates solely to the request for rectification which was heard by written submissions.

Legal principles

1. Section 191A relevantly provides as follows:

(1) The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:

(a) the omission of an entry from the Register;

(b) an entry made in the Register without sufficient cause;

(c) an entry wrongly existing in the Register;

(d) an error or defect in an entry in the Register.

(5) The Commissioner must not make a declaration or rectify the Register under this section while relevant proceedings in relation to the patent are pending.

(6) An appeal lies to the Federal Court against a decision of the Commissioner:

(a) to make, or refuse to make, a declaration; or

(b) to rectify, or not rectify, the Register;

under this section.

1. This section was introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act2012.  As explained in the Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at item 79:

“This item inserts new section 191A to give the Commissioner the power to declare who owns the patent and to amend the Register to correct an error or omission or to correct ownership details.

On grant of a patent, details of the patent, including ownership details are recorded in the Register.  Currently, only the courts have the power to rectify details in the Register.  This can make it onerous and costly for a patentee to seek to have the Register corrected where details of their patent are incorrect.

This item gives the Commissioner the power to declare who is the correct owner, or owners, of the patent and to rectify the Register where she is satisfied, on the balance of probabilities, that details on the Register are incorrect.”

1. It is thus clear that section 191A was intended to give the Commissioner the discretionary power to correct a broad range of errors or omissions in the Register.  The Australian Patent Office Manual of Practice and Procedure (MPP) states that the range of corrections that can be made includes the insertion of priority date information.[1]  Although of no present consequence, I note for completeness that section 191A cannot be used to expunge the particulars of a patent in their entirety from the Register, even when the patent is revoked by order of a Court (Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302 at [175]-[177]).

Preliminary issues

[1] MPP at 3.10.3.2.1

The examiner’s “additional comments”

1. The request for rectification seeks to correct a purported error in the priority details of the innovation patent that have been recorded in the Register.  Five Rings submits that the existence of this error was initially confirmed during examination of the innovation patent.[2]

   [2] Letter from Madderns date 19 December 2018; Five Rings submissions in response at [18]

1. An examination report issued in respect of the innovation patent on 24 July 2018.  The report provided the following explanation under the heading “Additional comments”:

“Please note that the current innovation application [sic] claims priority from innovation application AU 2017100274, however, upon review of the priority application, the examiner considered that the claimed invention in the current application [sic] is not disclosed in the priority document.  Therefore, the relevant priority date for the current application [sic] is considered to be the filing date, which is 27 February 2018.”

1. I do not agree with Five Rings that these comments confirm that the recorded priority details of the innovation patent are in error.

1. The examination report cited a number of prior art documents that were said to deprive the claimed invention of novelty.  Notably, while all of these documents were published before the filing date of the innovation patent, none were published before the filing date of the priority application.  It therefore strikes me that the examiner was merely following established practice in explaining the premise on which they had relied when raising a novelty objection under these somewhat unusual circumstances.

1. It is important to note in this regard that the question of whether the claims of the innovation patent can properly take the date of filing of the priority application as their priority date is a matter to be finally determined under section 43.  This would in turn necessitate an enquiry as to whether the priority application discloses the invention claimed by the innovation patent in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art (section 43(2A)).  In view of the broad nature of the “additional comments”, and the consequential lack of a detailed analysis, I am not satisfied on balance that the examiner has made such a determination.  

The Commissioner’s alleged direction

1. Five Rings has also submitted that the correction it seeks is vindicated by a direction given by a delegate of the Commissioner on 15 February 2019 that “the priority information recorded in respect of [the innovation patent] be amended [so that the filing date of the innovation patent is listed as the priority date].”[3]

   [3] Five Rings submissions in support at [1] and [3]

1. I agree with HeliMods that Five Rings’ submission as to the direction allegedly made by the delegate of the Commissioner is misguided.[4]  On the date in question the delegate advised the parties as follows:

“While I remain of the opinion that the Register reflects the claimed priority information, with the actual determination of priority a matter of determination pursuant to section 43, in the interests of progressing this matter the request that the Register be amended will be advertised pursuant to reg 10.7 for a period of two months.”

[4] HeliMods submissions in response at [1]-[3]

1. This closely follows the earlier advice of the delegate on 17 January 2019:               

“What is recorded in the Register and on the Certificate of Examination is the claimed priority information.  Pursuant to section 43 the priority date of a claim is the filing date, unless a prescribed document (in this case the [priority application]) discloses the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art.  Accordingly, it is always the case that, irrespective of the priority details listed in a patent request, or on the Register, the priority date is a matter to be determined having regard to the claims in question and the content of the documents from which priority is claimed.

Notwithstanding the above, the Commissioner may, pursuant to section 191A, amend the Register when it is in error, but such an amendment must be advertised, and the Patentee would have an opportunity to be heard.  Given that there is already [an opposition under section 101M] in train in the context of which it is open to the parties to make submissions as to the appropriate priority date of the claims, I do not presently intend to amend the Register.”

1. It is therefore clear that on 15 February 2019 the delegate went no further than signalling an intention to advertise the request for rectification purely as a matter of expediency.

1. It is also notable that the underlying theme of the advice provided by the delegate on 17 January and 15 February 2019 is that, in the absence of a determination under section 43, the correctness of the recorded priority details of the innovation patent must be accepted at face value.  This advice is entirely consistent with the operation of section 195(1).  More importantly, I am far from satisfied that the delegate can be taken to have expressed a favourable opinion as to the merits of the request for rectification as inferred by Five Rings. 

The request for rectification

1. The priority application was filed on 8 March 2017.  The recorded priority details of the innovation patent refer to this date.  Five Rings submits that the disclosure of the priority application does not meet the requirements of section 43(2A) and is thus insufficient to secure a priority date earlier than 27 February 2018 being the date on which the innovation patent was filed.  Five Rings further submits that in improperly referring to the filing date of the priority application, rather than the filing date of the innovation patent, the recorded priority details of the innovation patent fall within one or more of the provisions of section 191A(1) and thereby warrant correction pursuant to the request for rectification.[5] 

   [5] Five Rings submissions in response at [5] and [7]

1. HeliMods counter argues that the recorded priority details of the innovation patent have not been shown to be incorrect. The position for which HeliMods contends is essentially that (i) the priority date “is a matter to be determined having regard to the claims in question and the content of the documents from which priority is claimed”, (ii) the Register reflects the claimed priority information, “with the actual determination of priority a matter of determination pursuant to section 43”,[6] and (iii) such a determination “is a totally separate matter to the present matter. There has been no determination as to a ‘priority date of the Patent’”.[7]

   [6] HeliMods submissions in support

   [7] HeliMods submissions in response at [8]

1. HeliMods also points out that “sections 43(2) and 43(2A) are concerned with the priority date of a claim, not with the claimed priority information on the Register” (original emphasis).[8]

   [8] HeliMods submissions in response at [4]

Consideration

1. Section 62 provides that on granting an innovation patent, the Commissioner is obliged to enter particulars of the innovation patent in the Register.  The particulars include the priority details of the innovation patent. 

1. According to Five Rings, the present entry in the Register states under “Priority details” – “Earliest priority date 2017-03-08”.[9]  However, it is clear that this is a reference to information appearing on the publicly available “AusPat” electronic database which is not the Register.[10]  An extract from the Register shows that the priority details in fact recorded are “Number: 2017100274 - Filing Date: 8 March 2017 - Country: AU”.  HeliMods has submitted that these details simply identify the basis on which the innovation patent is claiming a priority date other than the date on which it was filed.  I am persuaded by this submission.  While the Register is, by virtue of section 195(1), prima facie evidence of the priority details and any other particulars relating to the innovation patent recorded in it, no suggestion arises from the Register as to the actual entitlement to the priority date claimed.  

   [9] Five Rings submissions in response at [14]

   [10] MPP at 3.10.1

1. Further to the above, the particulars are those applying at the time of grant, that is, before the innovation patent had undergone substantive examination.[11]  For the reasons already discussed, I am not satisfied on balance that the Commissioner has made any adverse finding under section 43 subsequent to grant as contended by Five Rings.  In similar vein, Five Rings has not, of its own accord, established (by evidence or otherwise) why the correctness of the recorded priority details of the innovation patent should not be accepted at face value for present purposes.

CONCLUSION

[11] MPP at 3.10.2 and 2.31.1.1

1. Five Rings has not satisfied me on the balance of probabilities that the recorded priority details of the innovation patent are in error so as to enliven the provisions of section 191A.  I therefore decline the request for rectification.

COSTS

1. The request for rectification has not succeeded.  I see no reason to vary the usual practice that costs follow the event.  I therefore award costs according to Schedule 8 against Five Rings.

O L Haggar
Delegate of the Commissioner of Patents