GARY SCHMIDT

[1983] APO 32

In the Matter of the Patents Act 1952

‑and ‑

In the Matter of Petty Patent 523389 in the Name of GARY SCHMIDT

‑ and ‑

In the Matter of an Application for Extension of Term.

DECISION OF A DELEGATE OF THE COMMISSIONER:
         Petty patent 523389 was sealed on 2 September, 1982 in respect of an invention entitled "Electronic Taximeter".  On 21 June, 1983 the patentee made application in accordance with sub‑section 68B(1) of the Act for the grant of an extension of the term of the petty patent.
         On 1 August, 1982 a sub‑section 68B(3) notice was lodged in the name of KEITH LESLIE informing the Commissioner of the existence of the following facts:

(1)Statutory Declaration made by Keith Scott and dated 1 August, 1983.

(2)Statutory Declaration made by Douglas John Mercer and Murray Thomas Green and dated 29 July, 1983.

(3)Letter written by Allan Clarke dated 30 June, 1983.

(4)US, A, 4024384, published 1977, May 17, see columns 3‑4, lines 7‑43, I. TATEISHI and T. MAEGAWA.

(5)US, A, 3983378, published 1976, Sept. 28, see column 3, lines 17‑60, T.A. TAMMI.

(6)AU, B, 24615/67 (414907), published 1969, Jul. 17, see page 8, line 18; page 7, line 29, J.F. BRUCE‑SANDERS.

(7)  AU, B, 52607/73 (478772), published 1974, Aug. 29, see page 3, line 4, OMRON TATEISI ELECTRONICS COMPANY, et al.

(8)AU, B, 71246/74 (478878), published 1976, Jan. 15, see page 11, line 9, YAZAKI SOGYO KABUSHIKI KAISHA.

(9)DE, A, 2608251, published 1977, Sept. 8, LICENTIA PATENT VERWALTUNGS GmbH.

(10)AU, B, 50904/73 (444676), published 1974, Jan. 31, KIENZLE APPARATE GmbH.

(11)AU, B, 50901/73 (488271), published 1974, May 16, KIENZLE APPARATE GmbH.

(12)The operation manual of the Novax 80 Electronic Taximeter produced by Electronic Innovations Limited, New Zealand.

Both the Patentee and the section 68B informant indicated that they wished to be heard.  The matter was set down for hearing in Canberra on 1 September, 1983 with the Patentee being represented by Mr. P.R. Smith, patent attorney, of Sandercock, Smith & Beadle and Mr. K. Leslie, patent attorney of Davies & Collison, the informant.
          Prior to the hearing on 31 August, 1983, Mr. Leslie lodged further evidence for the Hearing Officer to consider in respect of the extension of term.  I decided to hear argument on the admission of this further evidence at the beginning of the hearing prior to any submissions in respect of the evidence submitted with the sub‑section 68B(3) notice.
         Mr. Smith submitted that the wording of sub‑section 68B(3) clearly ruled out the admission of any evidence of a declaratory nature.  Sub‑section 68B(3) reads as follows:

A person may, at any time within 11 months after the sealing of a petty patent, by notice in writing lodged at the Patent Office and accompanied by such documents (if any) as are prescribed, inform the Commissioner of any facts that the person asserts establish, in relation to the petty patent, any of the grounds set out in paragraphs 100(1)(b), (c), (d), (e), (f) and (g).

Mr. Smith submitted that the words "inform the Commissioner of any facts" restricted this sub‑section to published documents.  He quoted the definition of a "fact" from the Concise Oxford Dictionary:
         "Things certainly known to have occurred or to be true".
He contended that this definition meant that sub‑section 68B(3) only contemplates published documents and is restricted to factual material despite the fact that several of the grounds available under this sub‑section could only reasonably be proven by use of declaratory evidence.   Mr. Smith referred me to sub‑section 57(1) of the Patents Act which reads as follows:

57. (1)At any time after a notification that a complete specification is open to public inspection has been published in the Official Journal and before acceptance of the application and complete specification has been advertised in the Official Journal, any person may, by notice in writing lodged at the Patent Office and accompanied by such documents as are prescribed, inform the Commissioner of any matter ‑

(a)that has been published in a document in Australia before the priority date of a claim of that specification as so open to public inspection; and

(b)that the person asserts would, if a patent were granted in respect of the invention so far as claimed in that claim, affect the validity of that patent on a ground specified in paragraph 100(e), (f) or (g).

He submitted that the intention of sub‑section 68B(3) and section 57(1) was the same, that is consideration should be restricted to published documents.  He also referred to Regulation 19C which deals with notices under these sub‑sections:

19C. (1)Subject to sub‑regulation (2), a notice under sub‑section 57(1) or 68B(3) of the Act shall be accompanied by a statement setting out the facts on which the person giving notice relies and, where an assertion is made under paragraph 57(1)(b) or sub‑section 68B(3) of the Act based upon a document published in Australia, by ‑

(a)a copy of the document;

(b)a declaration establishing when and where the document was so published; and

(c)if the document is written in a foreign language, a translation of the document into English authen‑

ticated to the satisfaction of the Commissioner.

(2)Sub‑paragraphs (1)(a) and (b) do not apply where the published document is available in the Patent Office or in the library of the Patent Office.

Mr. Smith contended that Regulation 19C reinforced his argument that sub‑section 57(1) and 68B(3) had similar intention and were both limited to documents published in Australia. 
         In my opinion, Mr. Smith's interpretation of the wording of sub‑
section 68B(3) is unduly restrictive.  Many facts which may materially affect the validity of a patent cannot be established by published documents.  For example, the publication of an invention to a particular person on a particular date is a fact, but this fact must be established by declaration as such an event would not normally be published in a document.  Furthermore, it would seem highly improbable that section 68B would provide grounds for refusal of the extension of grant and then prohibit the submission of any evidence to establish such grounds.  In respect of sub‑section 57(1), I believe this sub‑section can be clearly distinguished from sub‑section 68B(3) in that this sub‑section refers specifically to matter that has been published whereas sub‑section 68B(3) is not limited in this manner.  Regulation 19C, in my opinion only applies to sub‑section 68B(3) when an assertion is made based upon a document published in Australia and does not imply that this is the only form of assertion which can be made under this sub‑section.  I therefore, consider evidence of a declaratory nature to be allowable under sub‑section 68B(3).
         Mr. Leslie then put forth argument on the admittance of the further evidence lodged.  The admittance of this evidence was strenuously opposed by the patentee.  Mr. Leslie submitted that the further evidence was a further particularisation of the evidence lodged with the sub‑section 68B(3) notice.  He argued that, as the evidence was before the Commissioner there was a duty for it to be considered under sub‑sections 68B(5) and 68B(6).  The reasons for the late submission of the evidence were that one declaration was not available and that the other evidence was only considered necessary at a later stage.
         Mr. Smith drew my attention to the time limit of 11 months stated in sub‑section 68B(3) for lodging a notice together with supporting evidence.  He further submitted that although there was a need to consider the public interest this must be weighed against the rights of the patentee and considered in the light of provisions for appeal from Commissioner's decisions made in respect of section 68B.
         The Act and Regulations make no specific provisions for admittance of further evidence in respect of section 68B.  Sub‑section 68B(3) allows a potential informer 11 months from the date of sealing of the petty patent in which to place before the Commissioner any evidence concerning the validity of the petty patent.  In the present case the informant was aware of the sealing of the petty patent at least as early as 11 February, 1983 when he was notified of this fact by a letter from the Patent Office.  Further, it appears from the file of the parent Application No. 59903/80, that the informant showed an interest in the invention which is a subject of the petty patent as early as 19 August, 1981 when he requested a copy of the International Search Report produced on the parent application.  The informant has shown no compelling reasons for his lack of diligence in placing this further evidence before the Commissioner.
         The question of public interest was raised at the hearing and I believe there is a public interest in having before the Commissioner all the available facts affecting the validity of a petty patent before a decision is made in respect of extending its term.  However, in this case there is also a public interest in the matter of the extension being decided if possible before the expiration of the initial term.  Any delay in deciding the matter may leave the public in a state of uncertainty as to the status of the patent.  Further to this, refusal to admit the evidence does not shut out the informant, as the Act provides for appeal to a prescribed court as well as institution of revocation proceedings.
         Having considered the nature of the further evidence lodged and reasons provided by the informant for its late submission I do not consider the informant has been diligent in placing this evidence before the Commissioner. I do not consider the public interest in having this evidence before the Commissioner outweighs the need to have minimal delay in arriving at a decision on the extension.  I believe if the Act had intended that other evidence could be submitted by the informant outside the 11 month period specified in sub‑
section 68B(3) specific provisions would have been made to allow such a procedure.  To allow evidence to be lodged at any time up to the stage when a decision is made could prolong the proceedings indefinitely in view of the need to give the patentee the opportunity to comment on all evidence submitted which may be detrimental to his rights.  In view of these considerations I decided at the hearing to refuse to allow the admittance of the further evidence.
         As a preliminary to consideration of the evidence lodged with the sub‑section 68B(3) notice, Mr. Leslie drew my attention to the fact that the petty patent may not have been entitled to its divisional status and thus its priority date of 11 April, 1979.  The application for the petty patent was made as a further application under sub‑section 51(1) of the Act in respect of standard patent application No. 59903/80 and lodged on 17 March, 1982.  Section 51 of the Act, inter alia, reads as follows:

51. (1)Subject to sub‑sections (1) and (3), an applicant for a standard patent (not being an applicant in respect of an application that has lapsed or has been refused or withdrawn) may, at any time before the application has been accepted or at any time after the application has been accepted and before the expiration of the period of 3 months after acceptance of the application has been advertised in the Official Journal, make a further application for a standard patent or for a petty patent, or further applic‑

ations for standard patents or petty patents, in respect of an invention or inventions disclosed in the provisional specification or complete specification lodged in respect of the first‑mentioned application.

................

(3)A further application for a petty patent may not be made by virtue of sub‑section (1) in respect of an invention disclosed in a complete specification of an application for a standard patent unless examination of the application for a standard patent and of the complete specification has been requested.

Mr. Leslie submitted at the hearing that sub‑section 51(3) required that:

"a particular order of events must occur in the case of a petty patent, if the petty patent is a divisional of a standard patent, and, that is, the request for examination should have been lodged in respect of the parent at the time of lodgement of the divisional."

Mr. Leslie further submitted that the present patent had not met this order of events as the petty patent application had been lodged on 17 March, 1982 and the request for examination on the parent application was lodged on 10 June, 1982.  In view of this, Mr. Leslie contended that the priority date of the petty patent was its date of lodgement, 17 March, 1982.  Accordingly, as the parent application 59903/80 became open to public inspection on 22 October, 1980 and contained substantially the same disclosure as the petty patent specification, he stated that the petty patent claim was prior published by the parent application.
         Mr. Leslie's submission concerning sub‑section 51(3) infers the presence of the wording in the sub‑section to the effect that "a further application for a petty patent may not be made by virtue of sub‑section 51(1) ... unless examination ... of the complete specification has been requested either before or at the time of lodgement of the further application".  In fact no such wording appears in the sub‑section, and it seems to me that the applicant is entitled to make an application for a petty patent, but not by virtue of sub‑section 51(1) until the requirements of sub‑section 51(3) are met.   Once examination of the complete specification of the parent application is requested, and provided the application for a petty patent has not proceeded to sealing, the application can be said to be made by virtue of sub‑section 51(1).
         Taking my construction of section 51, the present petty patent can be considered to have divisional status and be entitled to a priority date based on the invention disclosed in the provisional specification lodged in respect of 59803/80.  I have considered the disclosure made in this provisional specification and consider the petty patent is entitled to a priority date of 11 April, 1979, the date of lodgement of the provisional specification.
         The petty patent specification commences:

The present invention relates to an electronic meter and in particular to an electronic taximeter.

Electronic taximeters utlizing either analogue or digital circuitry are known and overcome a number of the inherent disadvantages of electromechanical taximeters.

The specification then details the disadvantages of the prior art:

However, the known electronic meters also have a number of disadvantages which make them less attractive in use than they might otherwise be.

For example, every taximeter must be calibrated to suit the individual vehicle in order to meet accuracy tolerances required by regulatory bodies and such calibration must be made regularly in view of variation in certain parameters such as tyre diameter.  Thus in order to meet the accuracy required such calibration is made upon installation of the meter and at every rate change and usually involves measurement of the revolutions of the speedometer cable (which provides input to the meter) over a measured distance travelled (say one kilometer).

In order to carry out the calibration it is firstly necessary with known meters to disconnect the said cable from the meter and attach thereto a revolution counter.  The vehicle is then driven over a known distance and calibration is done.  Any adjustment required is effected by either a gear‑ratio change, patchfield link change on printed circuit board or trim of a potentiometer.  Any of these adjustment is either time consuming or clumsy and can involve component cost.

Further prior art disadvantages are outlined however these relate to aspects of the taximeter which do not form part of the invention claimed.  There follows the object of the invention which reads:

Thus it is an object of this invention to provide an improved taximeter which avoids one or more of the aforementioned disadvantages and provides further features and advantages as will become apparent herein below.

The consistory statement is identical to claim 1 and is followed by the description of the preferred embodiment.
         The claim reads:

An electronic taximeter including a microcomputer memory and an electronic display, characterized in that, said memory is arranged to store and provide on initiation a read‑out to said electronic display of the current calibration factor for which meter is calibrated, said calibration factor being a number representative of speedometer shaft revolutions per distance, said meter further including an electronic revolution counter adapted to operate in conjunction with said display to provide a count and read‑out of the revol‑

utions of said speedometer shaft providing input data to said meter, whereby calibration of the meter may be checked by driving the vehicle over a measured distance and comparing said read‑out with said calibration factor.

I interpret the claim to define a taximeter including three main features:

(i)   a microcomputer memory

(ii)   an electronic display, and

(iii)   an electronic revolution counter.
         These features are connected in a manner to provide certain functional capabilities.   The memory stores the calibration factor and provides on initiation a read‑out to the display.  The electronic revolution counter operates in conjunction with the display to provide a count and read‑out of the revolutions of the speedometer shaft which provides an input to the taximeter.  The calibration factor and read‑out of speedometer revolutions are displayed in such a form that comparison of these numbers after the vehicle has been driven over a measured distance provide a check of the meter calibration.
         Mr. Leslie contended that the claim was not a combination claim in that the features of being able to count and display revolutions of speedometer shaft, and being able to display the calibration factor are not connected physically but intellectually.  As can be seen from my analysis of the claim, I do not consider the claim seeks to define a physical connection but only restricts the display of these two numbers to providing the capability of comparison for checking the calibration factor.
         Eight patent documents were notified in the sub‑section 68B(3) notice, however on consideration of these documents I believe only three warrant detailed discussion.  They are:

(1)US, A, 4024384, published 1977, May 17 in the name of I. TATEISHI and T. MAEGAWA.

(2)US, A, 3983378, published 1976, September 28 in the name of T.A. TAMMI.

(3)AU, B, 24615/67 (414907), published 1969, July 17 in the name of J.F. BRUCE‑SANDERS.

The patentee conceded the publication dates on these documents.
         On consideration of these three documents, I am of the opinion that none of them prior publishes the claim of the present patent.  There is no disclosure in these documents of a display of the calibration factor or of the count of revolutions of the speedometer shaft.  This point was not argued by the informant, however he submitted that the differences did not confer novelty on the presently claimed invention.
         Each of the above documents discloses means for calibrating the taximeter however none of the documents discloses the display of the calibration factor.  Furthermore, although these documents disclose the use of tachometer revolutions as an input to the taximeter, what is displayed in each case is the fare to be charged.  This fare is related to the distance travelled by some fare schedule.  On this basis, Mr. Leslie argued that display of a number proportional to the distance travelled and the display of fare could be considered equivalent when determining the question of novelty.

         Though, I am of the opinion that the taxi fare displayed can be considered a number representative to some extent of the distance travelled by the taxi, I cannot agree with the submission that a display of number directly related to the revolutions of the speedometer does not provide any inventive advantage.  It is clear on reading of all the documents that the fare displayed on a taximeter can by no means be considered to be a continuous function of distance travelled.  It is usually a step function related to a certain tariff per distance and may be modified by other factors such as waiting time charges (no distance being travelled) and tariff variations according to an initial threshold distance travelled.  It is possible to argue that these discontinuities can be overcome by the person calibrating the meter undertaking certain complex procedures, e.g. ensuring that no waiting time is registered, ensuring that calibration distance travelled coincides with a fare increment etc., however the present invention by avoiding the need to undertake any more complex procedure than driving the vehicle over a measured distance clearly in my opinion provides a significant and meritorious advantage over the prior art.
         It has been argued that the taximeter of the present petty patent specification in providing a display of the current calibration factor set into the meter does no more than display a number which could be determined by noting the position of calibration switch banks and performing an appropriate conversion to determine the calibration factor.
         I agree with this argument to a point but do not agree that the provision of the calibration factor display feature in the present taximeter is not an advantageous feature.  It is clear that the display of this factor considerably simplifies the calibration procedure.
         I am therefore satisfied in respect of these three documents that the ground of lack of novelty has not been established.
         In addition to the patent documents notified under sub‑section 68B(3) two statutory declarations and a letter were submitted with the notice.
         The letter, by Mr. Allan Clarke, was not relied upon by the informant and I do not consider it material to my decision in this matter.
         The Statutory Declaration made by Keith Scott on 1 August, 1983 refers to several forms of taximeters developed in New Zealand by Mr. Scott.  I shall confine my discussion to the preproduction model of the Novax 80 meter which it is alleged in the declaration was taken to Australia by Brian Royce North between 23 February, 1979 and 20 March, 1979, that is, before the priority date of the present petty patent.
         Several circuit diagrams of this meter are annexed as exhibits to the declaration and are dated 8 May, 1979.  It is alleged that although these diagrams were produced after the priority date they are representative of the preproduction meter taken to Australia.  On examining the exhibits it is clear that the diagrams have undergone several amendments, on 28 October, 1979 and again on 11 January, 1980.  Thus I do not consider that it is clearly established that these circuit diagrams truly reflect the meter taken to Australia before the relevant priority date.
         Before I need to consider the substance of this preproduction meter, it is necessary to consider what in fact was published in Australia in relation to this meter before the priority date of 11 April, 1979.
         In determining this point it is apposite to refer to the second declaration by Douglas John Mercer and Murray Thomas Green on 29 July, 1983. Mercer and Green are involved in the taxi industry and met Mr. Brian North in Brisbane in March 1979 and were given a demonstration of the Novax 80 Taximeter.  Mercer and Green declare:

"At that time Mr. North dismantled the taximeter and demonstrated and clearly explained to us:

(a)The method of calibrating the meter by counting speedo revolutions, and

(b)The method of displaying the calibration factor."

It was submitted at the hearing that by reading the description of the preproduction meter given in the Scott declaration it could be argued that the details of this meter were disclosed to Mercer and Green before the priority date of the present patent.  I am not satisfied on the present evidence that this is the case.  It is not, in my opinion, evident from the declarations that the preproduction meter described in the Scott declaration was in fact the taximeter demonstrated to Mercer and Green.  Furthermore, the evidence does not establish to my satisfaction that the essential features of the present claimed invention were disclosed to Mercer and Green at their meeting with Mr. North.
         In view of the fact that publication in Australia before the priority date of the meter described in the Scott declaration has not been established to my satisfaction, it is unnecessary to consider further the description of this meter.
         A copy of the Novax 80 instruction manual was also lodged with the notice however this document is undated and no evidence has been lodged to establish the publication date of this document in Australia.  Thus I need not consider this document.
         Thus, on consideration of all the documents lodged with the notice and submissions made before me at the hearing I am not satisfied that grounds have been established for refusing to extend the term of the petty patent 523389.  Accordingly, under sub‑section 68B(5) of the Act I grant an extension of term of Petty Patent No. 523389.
         As stated at the hearing, I make no award of costs.

(P. HEATHCOTE)