GIACOMO BERTOLOTTI

[1996] APO 43

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 25974/92 in the name of Giacomo Bertolotti

Title:          Fluid Distribution System

Action:          Application under section 223(2)(a) for an extension of time to enter national phase.

Decision:          Issued            .

Abstract

Application for extension of time refused.

The patent application related to an irrigation system.  The applicant had made a decision to enter national phase in various countries based on his on-going business activity in those countries.  He had grouped Australia with certain other countries.  The applicant submitted that he had made an error of judgement in not reviewing Australia on an individual basis.  This was due to his lack of education on the geographic and climatic conditions in Australia.  After being contacted by and entering into negotiation with a prospective business entity in Australia, he became aware Australia was an arid country and his invention had commercial application in Australia.

The failure to enter national phase was not due to an error or omission.  The decisions not to enter national phase and to later attempt to proceed with the application were based on the applicant’s on-going business activities.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 25974/92 by Giacomo Bertolotti and an application under section 223(2)(a) for an extension of time to enter national phase.

background

Patent application 25974/92 was filed under the PCT on 17 September 1992 and given international application number PCT/US92/07897.  Australia was elected in the demand for International Preliminary Examination filed on 16 April 1993.  The final date for entering the national phase in Australia was 19 April 1994.

On 24 November 1994, the applicant filed the requirements for national phase entry.  The applicant also filed an application for extension of time under section 223.  The s.223 application stated that the “reasons will be detailed in a Declaration or Affidavit to be filed in due course.”  The applicant filed an affidavit supporting the s.223 application on 14 November 1995.

In December 1995 AIPO informed the applicant that a delegate of the Commissioner was not satisfied that the extension sought was justified by the material supplied in support.  The delegate invited the applicant to provide further material in support of the request.  The applicant filed further material on 4 March 1996.  The further material included an affidavit by Giacomo Bertolotti and statutory declarations by Allan Carnovale and Noel T. Brett.  AIPO issued another letter to the applicant on 28 March 1996.  This letter stated “the Commissioner considers that the evidence on file indicates that there was a deliberate decision (for whatever reason) to not enter the national phase in Australia at the relevant time.  Accordingly the Commissioner remains of the view that the extension of time to enter the national phase is not justified.”

The matter was set for hearing.  Mr Noel Brett, patent attorney of Griffith Hack & Co, appeared for the applicant at a hearing in Canberra on 16 July 1996.  At the hearing, Mr Brett asked for time to file a further affidavit by Mr Bertolotti.  This affidavit was to establish that there was no undue delay from when Mr Bertolotti first became aware that Australia could benefit from his invention to the date he filed the s.223 application.  I agreed to this request and the further affidavit was filed on 19 August 1996.

S. 223 Application

The reasons for the application for extension of time are set out in the first affidavit by Mr Bertolotti filed on 14 November 1995.  Paragraphs 1 to 5 of this affidavit set out particulars about the invention and the international application.  This includes the fact that all possible countries were designated and elected.  In paragraph 6 Mr Bertolotti stated that he reviewed the list of possible countries with a view to proceeding in those countries where he had specific, on-going business activity and could justify the expense of proceeding.  Paragraphs 7 to 10 read as follows:

7.    At no time did I make a decision not to proceed in Australia as a conscious decision.  Moreover, because I had no on-going business activity in Australia, I did not look at Australia as an individual country and assess its particular needs for my invention.  Rather, I grouped Australia with certain other countries without reviewing Australia as a country on its own and I made a decision to proceed with certain countries based on my on-going business activity.

8.    As a direct result, I made an error or omission in that I had made an error of judgement as to the non-importance of certain countries in my foreign patent program.

9.    At all material times, I had an intention to proceed with obtaining patent protection in the countries listed in the International patent application PCT/US92/07897 as evidenced by the various countries elected in the Demand referred to in GB-1.

10.Recently, however I have entered negotiation with a prospective business entity in Australia.  It was not until negotiations developed to a degree that the need for patent protection for this invention in Australia became apparent that I understood or comprehended that my invention has particular commercial application in Australia.  Such awareness occurred after the relevant date when the necessary advice should have been provided to the Australian Patent office of my intention to proceed with the Australian National Phase application.

The remaining paragraphs state that Mr Bertolotti had made an error of judgement by not reviewing the needs of countries on an individual country by country basis.  According to the declaration, if Mr Bertolotti had done so, he would have understood that Australia is a country that would have received great benefit from his invention.

Mr Bertolotti provided further information by way of a second affidavit filed on 4 March 1996.  In this affidavit Mr Bertolotti addressed the comments in the letter from the delegate of the Commissioner.  Mr Bertolotti disputed the delegate’s opinion that he made a deliberate decision to not enter the national phase in Australia by the due date and that a change of mind to proceed in Australia was motivated by the subsequent emergence of favourable commercial factors.  These issues were addressed in several paragraphs of the declaration as follows:

3.    In my earlier Affidavit I made reference in paragraph 6 that I reviewed the list of possible countries in which the international application could proceed with a view to proceeding in those countries where I had specific, ongoing business activity and could justify the expense of proceeding.  In paragraph 7 I made reference to the fact that at no time did I make a decision not to proceed in Australia as a conscious decision.

4.    I am of Italian descent and I received my junior school education in Italy prior to taking up residency in USA in 1972.  My junior school education in Italy occurred approximately 1942, and I had very little education in relation to geography and climatic regions of countries outside Europe and, in particular, I cannot recall receiving education in this respect about Australia.  My perception was not that in Australia there are climatic conditions which render the country arid and in need of irrigation.  Thus, I have always considered that Australia could not benefit from an irrigation system and, thus, I grouped Australia with other countries at the time when a decision had to be made about national phase processing and accordingly I made an error of judgement.  Hence, because of the error of judgement, the Australian national phase was not entered at the required time.

6.    The decision to proceed with late national phase entry in Australia was not made on the basis that business negotiations looked promising in Australia and therefore it would be desirable to have patent protection in Australia as assumed by the examining officer but rather on the basis that an error of judgement was made as to the importance of the technology for Australia, and, once realised, a decision was made to then attempt to enter the national phase in Australia with an extension of time.

The applicant also filed a statutory declaration by Allan Carnovale, a director of Greenhouse World Pty Ltd, trading as Sprinkler City Irrigation, setting out the importance of the invention to Australia.  A declaration by Noel T. Brett, patent attorney for the applicant, was also filed.

Subsequent to the hearing Mr Bertolotti filed a third affidavit, expanding on paragraph 10 of his first affidavit filed on 14 November 1995.  In this affidavit, Mr Bertolotti stated:

3.    My first contact with the first prospective Australian licensee - Mr Chris Smith - was when he approached me in USA as a result of a trade show at Atlanta, Georgia USA on 5-8 November 1994, during the international irrigation conference.

4.    I did not approach Mr Smith but rather he approached me.  Negotiations took place for a licence agreement for Australia and it was not until November 1994 that I discovered from discussions with Mr Smith that Australia was, in fact, an arid country and could benefit significantly from my invention.

The remainder of the affidavit sets out facts that establish that Mr Bertolotti then took immediate steps to attempt to proceed with the application in Australia.

decision

Mr Brett submitted that the reason Mr Bertolotti did not enter national phase by the relevant date was due to an error of judgement by Mr Bertolotti.  Mr Brett referred me to Kimberly-Clark Ltd v Commissioner of Patents & Anor (No 3) 13 IPR 569 and several Patent Office decisions. In these decisions the words “error or omission” in s.223 of the 1990 Patents Act and the equivalent s.160 of the 1952 Patents Act were held to include an error of judgement. According to Mr Brett and the declarations filed in support, Mr Bertolotti had made an error of judgement by not considering Australia an individual country. The error was due to Mr Bertolotti’s lack of education on the geography and climatic conditions in Australia.

In paragraphs 6 of his first affidavit, Mr Bertolotti stated that he “reviewed the list of possible countries with a view to proceeding in those countries where I had specific, on-going business activity and could justify the expense of proceeding”.  In paragraph 7 he stated that he “made a decision to proceed with certain countries based on my on-going business activity”.  Mr Bertolotti grouped Australia with “certain other countries”.

Mr Bertolotti has stated that at no time did he make a decision not to proceed in Australia as a conscious decision.  Rather, he grouped Australia with certain other countries and decided to proceed with certain countries based on his on-going business activity.  In my opinion, a decision to proceed in certain countries amounts to the same as a decision not to proceed in the other countries.

There is no indication as to what other countries Mr Bertolotti grouped Australia with or on what basis countries were grouped, other than on the basis of whether or not Mr Bertolotti had on-going business activity in those countries.  There does not appear to be any causal relationship between Mr Bertolotti’s lack of awareness of the climatic conditions in Australia and his failure to enter national phase in Australia.  It is clear from Mr Bertolotti’s first affidavit that he based his decision to enter national phase in the various countries on his specific, on-going business activity in those countries.

In paragraph 6 of his second affidavit, Mr Bertolotti stated that he did not make his decision to proceed with late national phase entry in Australia on the basis that business negotiations looked promising in Australia and therefore it would be desirable to have patent protection in Australia.  This is contradicted by certain other evidence.  In paragraph 10 of his first declaration Mr Bertolotti stated that it was not until negotiations had developed to a degree that the need for patent protection became apparent.  Mr Bertolotti’s third affidavit included a letter from his US attorneys to his Australian attorneys as exhibit GB-3.  This letter stated that “The client now requires some form of intellectual property rights protection in Australia to support a business negotiation”.

It may be that Mr Bertolotti only became aware that Australia was an arid country after he entered into negotiations with a business entity in Australia.  But it is clear from the evidence filed that he made his decision on entering national phase in the various countries on the basis of specific, on-going business activity, and that he now seeks patent protection in Australia to support a business negotiation.  I believe that Mr Bertolotti’s decisions to not enter national phase by the relevant time and then to proceed with late entry to national phase were based on his business activities at the relevant dates.  The failure to enter national phase was not because of any error or omission.

There was some suggestion in the submissions filed that an attempt to pay a continuation fee indicated Mr Bertolotti’s intention to proceed with the application.  National phase entry was due on 19 April 1994.  The continuation fee was due on 17 September 1995 and was paid on 14 August 1995 by a third party, Computer Packages Inc.  It is not clear if Computer Packages Inc had a specific arrangement to pay fees for Mr Bertolotti or a general arrangement with his US attorneys to pay fees on their behalf.  A letter from Computer Packages Inc to the US attorneys (exhibit NTB-2 of the Brett declaration) seems to suggest the latter.  In any case, the attempt to pay the fee was after the due date for entering national phase.

Mr Brett also pointed out that the Patent Office database incorrectly stated the application was withdrawn, rather than lapsed.  I do not believe that this contributed to the failure of the applicant to enter national phase by the due date.

I have found that the failure to enter national phase by the due date was not because of an error or omission by the applicant or his agent or attorney.  There was a point raised by Mr Brett concerning the discretionary aspects of section 223 that I will also discuss.

The application for extension of time was filed on 24 November 1994.  The declaration setting out the grounds of the application was filed on 14 November 1995, more than 11 months later.  Mr Brett submitted that regulation 22.11(1) does not say that the declaration has to be filed at the time of the application or without undue delay.  The regulation is as follows:

22.11 (1) For the purposes of subsection 223 (2) of the Act (“extensions of time”), an application for an extension of time must be in the approved form and have with it a declaration setting out the grounds on which the application is made.

Mr Brett submitted that as the application now has a declaration with it, the applicant has complied with all that the regulation requires.

I do not agree with this interpretation of the regulation.  In my opinion, the correct interpretation is that the application is not properly made until both the application in the approved form and the declaration have been filed.  Paragraph 26.5.3 of the Australian Patent Office Manual of Practice and Procedure (Volume 3) states:

“Situations may arise where it is not possible for the applicant to file the declaration with the application form.  In such cases the declaration should be filed as soon as practicable thereafter.  Delay in filing the declaration is a factor the Commissioner needs to consider when exercising discretion on the application.  In fact, given the provisions of reg 22.11(1), strictly speaking the application is not made until such time as the declaration is filed.”

Therefore, any undue delay in filing the declaration is also a relevant factor to consider when exercising discretion.

conclusion

I have found that the failure to enter national phase by the due date was not because of an error or omission by the person concerned or by his agent or attorney.

I refuse the application for extension of time.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Griffith Hack & Co, Melbourne