GUNNAR BERG and SVEN OLLE STROMBERG

[1983] APO 35

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 50301/79 for Letters Patent in the Names of GUNNAR BERG and SVEN‑OLLE STROMBERG

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In the Matter of Examiner's Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. 50301/79 was lodged on 27 August, 1979 and became open for public inspection on 17 April, 1980.  A request for examination was made on 11 January, 1982.  Before any examination could take place, the applicants filed a request to amend their specification under section 77.  Following the issuance of several adverse reports under section 79, an Examiner's first report under section 48 issued on 21 September, 1982 being based on the application and complete specification as lodged.
         In response to the section 48 report, a statement of proposed amendments was lodged, and as the proposed amendments had the same effect as the amendments previously proposed under section 77, the request under section 77 was concurrently withdrawn.  Two further reports under sub‑section 49(2) then issued, the Examiner contending that the amendments proposed were not allowable under sub‑section 49(4) and accordingly maintaining the objections of the first report.

The attorneys for the applicants contested the objection raised by the Examiner concerning the non‑allowability of the amendments and requested the decision of the Commissioner on this matter. 
         The hearing took place in Canberra on 5 July, 1983 with Mr. J. Terry, patent attorney, of Griffith, Hassel & Frazer representing the applicants.
         In order to appreciate the Examiner's objection, it is necessary to consider the documents originally lodged in relation to this application and the nature of the proposed amendments.
Documents at Lodgement
         On 27 August, 1979 the applicants filed a Convention application for a standard patent.  The Convention application was based on application No. 7810289‑4 made in Sweden on 2 October, 1978, which details appear on the application form.  At lodgement, the application was accompanied by a complete specification including drawings, and a certified copy of the Swedish application with a translation purportedly of that Swedish application being stapled thereto.  I should add that in relation to the translation, while the translator's certificate which precedes the actual pages of English trans‑
lation states "the following is a true and correct translation made by me of the documents in the Swedish language attached hereto", it is fairly apparent that is not the case since the bibliographic page of the Swedish document does not appear in the translation, reference numerals up to numeral 28 appear in the translation only, and more claims appear in the translation than in the Swedish document.
         According to the application form, the cover page of the specification (i.e. Form 10), and the Swedish document, the names of the applicants are G. Berg and S‑0 Stromberg and on the first two documents mentioned the invention is entitled "Magnetic Fuel Purifier with rotating Pre‑Purifier".  The descriptive pages 2 to 6 as well as the claims of the complete specification relate to a gear mechanism including planetary gears and the five figures shown on the drawing pages resemble a gear arrangement and in fact the description reads on to those drawings.  There is no hint at all in the description of any matter concerning a magnetic fuel purifier as the title of the complete specification relates.  It is noted that the drawings lodged with the complete specification clearly bear no resemblance to the drawings forming part of the Swedish application No. 7810289‑4.  Also it is noted that the description and claim pages of the complete specification are equivalent in text and layout with the translation attached to the Swedish application document except in the following regards; firstly, it does not include the heading "A planetary‑type of gear and also procedure and apparatus for its production" nor an eighteen line "Abstract" as included at the commencement of the translation document, and secondly, the claims have blank spaces where bracketed numerals are included on the translation document.  Furthermore, it is also noted that the description and claim pages lodged are clearly photocopies and not original‑typed pages.
The Proposed Amendments
         In response to an Examiner's adverse first report under section 48 on the application and complete specification as lodged, the applicants filed a statement of proposed amendments on 22 October, 1982.  The effect of those proposed amendments to the specification are firstly to replace the entire description and claim pages with totally new pages containing description and claims relating to "magnetic fuel purifiers", and secondly to replace the drawings on file which showed five figures with new sheets of drawings containing seventeen figures.  The proposed drawings clearly correspond to the drawings of Swedish application No. 7810289‑4.  (The above proposed new pages and drawing sheets had been previously filed with the now withdrawn section 77 request).
         I note that a replacement sworn translation and attached translator's declaration in respect of Swedish application No. 7810289‑4 has also been filed.  However I question the accuracy of this replacement translation being a true and correct translation of the Swedish basic application.  I do so on the basis that firstly, the translation of the bibliographic data which includes details regarding the publication date of the application and the fact that a patent was granted on 27 March, 1980 is clearly at variance with the face page of the certified copy of the basic application, and secondly, the translation which has a paragraph headed "Abstract" is also clearly at variance with the corresponding portion of the basic application since the translation includes additional bracketed reference numerals and is in one sentence compared to four in the Swedish document.  In view of these variations, apparent to myself being a person not conversant with the Swedish language, doubt must exist as to the accuracy of the remainder of the translation.
         An inspection of the proposed amended pages of description and claims of the Australian specification reveal that they appear to be derived via a photocopying process using the corresponding pages of the replacement translation document but it is worth noting here that the "Abstract" which appears in the translation document is not part of the proposed amended description.
The Examiner's Objections
         As a consequence of the proposed amendments lodged under sub‑section 49(1), the Examiner was faced with the following situation to consider:

.A convention application had originally been lodged for an invention identified on the application form as relating to a magnetic fuel purifier (invention M), which application was accompanied by ‑

(i)a complete specification for an invention identified on page 1 as relating to a magnetic fuel purifier (invention M) but whose description, claims and associated drawings related to an invention concerning a gear mechanism (invention G), and

(ii)a certified copy of the Convention document namely a Swedish application for invention M which had a "translation" attached thereto relating to an invention G.

.A statement of proposed amendents had subsequently been lodged seeking to replace the entire existing description, claims and drawings of the complete specification with new pages directed to invention M.

The Examiner reported under sub‑section 49(2) that the proposed amendments were not allowable.  Despite detailed submissions lodged in rebuttal of the Examiner's objection a further report issued with the Examiner maintain‑ ing his objection.  The applicants then requested a hearing.
         The allowability of the proposed amendments is governed by sub‑section 49(4) of the Patents Act which reads as follows:

"(4)An amendment of the specification (not being an amendment for the purpose of correcting a clerical error or an obvious mistake) is not allowable if the specification would, as a result of the amendment, claim matter not in substance disclosed in the specification as lodged."

The applicants do not dispute the fact that as a result of the amendments their specification would claim matter not in substance disclosed in the specification as lodged.  However, they strongly contend that the proposed amendments are for the purposes "of correcting a clerical error or an obvious mistake", and as such the proposed amendments of the specification are allowable because of the specific dispensation on that basis included within sub‑section 49(4).   I am satisfied that for the amendments to be allowable in this case it must be established that they qualify for that special dispensation as contended by the applicants, and accordingly it is necessary to consider whether a "clerical error" or an "obvious mistake" can be established in the documents prior to the proposed amendments.
Clerical Error
         On the question of "clerical error" my attention was drawn to two main authorities.  Firstly, there is the decision of the British Patent Office in respect of Maere's Application (1962) RPC 182 where an amendment was sought to correct a "clerical error" by virtue of sub‑section 76(1) of the British Patents Act. The following paragraph appears at page 185 of that decision:

"The words "clerical error" must, I think, be taken to mean a mistake made in the course of some mechanical process such as writing or copying as distinct from an error arising, e.g. from lack of knowledge, or wrong information, in the intellectual process of drafting language to express intention. ........

....... The sub‑section in my view, therefore, is concerned only with clerical errors made in the course of preparation of the document itself.  It does not, I think, extend to errors made before preparation of the document began."

Secondly, there is the judgement of the High Court of Australia in R. v. Commissioner of Patents; Ex Parte Martin (1953) 89 CLR 381. The following passages from that judgement are relevant:

"A clerical error, I would think occurs where a person either of his own volition or under the instruction of another intends to write something and by inadvertence either omits to write it or writes something different" (per Williams A.C.J. at page 395).

"But the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing" (per Fullagar J. at page 406).

In his submissions, Mr. Terry drew my attention to the specific requirements of section 76 of the UK Patents Act 1949 which required the clerical error sought to be corrected to be "in any patent, any application for a patent or any document filed in pursuance of such an application" as is discussed in the above paragraph from Maere's Application (supra).  He argued that, in contrast, sub‑section 49(4) of the Australian Patents Act placed no such restriction on the source of the clerical error so that it need not be an error arising in the production of the actual documents lodged at the Patent Office but could be an error arising in any pertinent document included along the chain of events leading up to the lodgement documents.  Accordingly he submitted that Maere's Application (supra) did not have relevance in Australia because of statutory differences and that the High Court case Ex Parte Martin (supra) should be used as the authority for clerical error.  Mr. Terry then submitted on behalf of the applicants that the clerical error arose when the person concerned in the office of the Swedish patent agents copied the wrong English translation which copied document was then sent to Australia and from which the complete specification was subsequently generated.  He further submitted that based on the High Court case, the question was: What was the intention in the mind of the person concerned?, and he argued that the evidence showed, particularly exhibit JT‑1 which is a copy of the filing instructions sent to the Australian attorneys from the Swedish agents, that the intention in the mind of the person concerned was to send to Australia an English translation of the Swedish basic document No. 7810289‑4 entitled "Magnetic Fuel Purifier with Rotating Pre‑Purifier".
         In considering the question of clerical error and the submissions on behalf of the applicants in this regard, it is appropriate to refer to the wording of sub‑section 49(4) which reads in part:

"An amendment of the specification (not being an amendment for the purpose of correcting a clerical error or an obvious mistake) is not allowable if ...".

The bracketed portion of the sub‑section could equally be rewritten as '(not being an amendment of the specification for the purpose of ...)' in order to appreciate its full meaning.  Hence, the sub‑section implies that in the case of an amendment for the purpose of correcting a clerical error, the amendment must achieve that result, i.e. correct the error which is established to be a "clerical error".  Accordingly it follows that unless a clerical error is established in the specification sought to be amended, then any amendment of the specification would not correct the clerical error itself.  Illustrating that point with the present facts, if one were to accept that the clerical error arose in this case when the person in the office of the Swedish patent agents copied the wrong English translation and thus generated an incorrect document to send to Australia which incorrect document was then used as the basis for filing the Australian complete specification, then clearly no amendment of the complete specification can possibly have the effect of correcting that clerical error arising in the office of the Swedish agents; any such amendment merely changes the specification which was lodged in Australia.
         Consequently I find myself unable to agree with submissions on behalf of the applicants that the clerical error referred to in sub‑section 49(4) means a clerical error in any pertinent document leading up to the specific‑
ation lodged.  I am clearly of the view that the sub‑section is concerned only with clerical errors arising in the actual course of preparation of the specification itself and which can be directly correctable by amendment of that specification, and does not extend to errors either made in, or made in the preparation of, an earlier document upon which the preparation of the specific‑
ation was based.  It is noted that this view is similar to the situation existing in relation to Maere's Application (supra).  I also point out that the judgement in R. v. Commissioner of Patents; Ex Parte Martin (supra) only provides definitions of what constitutes a "clerical error" and provides no other guidance in relation to sub‑section 49(4) as is being considered in this case.
         Accordingly, in considering whether a clerical error exists in the specification as lodged, it needs to be determined whether an error has arisen in the mechanical process of writing or transcribing to produce that specific‑
ation, or alternatively whether an error has arisen because something different was written from that intended to be written in producing that specification.  In my view neither of those two criteria are satisfied in relation to this application.  The following events took place with respect to lodging the present application:

.an incorrect English translation of the basic Swedish document was forwarded to Australia by the Swedish patent agents,

.the Australian patent attorneys prepared and lodged a complete specification which was derived from that incorrect translation either directly from the translation attached to the basic document or from additional sheets of that trans‑ lation forwarded by the Swedish patent agents.

There was therefore no writing, copying or transcribing error because the Australian attorneys prepared the complete specification truly from the English language translation document with which they had been supplied and which was associated with the Swedish basic document and the corresponding filing instructions.  Furthermore, the specification was prepared as intended by the Australian attorneys being based on the English translation with which they had been provided.
         The error here, and this is conceded by the attorney for the applicants, arose in the office of the Swedish patent agents when the wrong English translation was associated with the Swedish basic application.  This was clearly a mishandling error in that office.  The ultimate consequence of that error was the lodgement in Australia of a specification derived from that wrong translation.  As such the situation in the present case is not dissimilar to Maere's Application (supra), the case of Mobil Oil Corporation (Ciric's) Application (1974) RPC 507 before the Comptroller‑General, and two cases before the Australian Patent Office namely Farbenfabriken Bayer A.G.'s Application (1971) 40 AOJP 4333 and Dempster Brothers Inc.'s Application (1974) 44 AOJP 4276. 
         Accordingly, bearing in mind the meaning of "clerical error" as it applies in the context of the Patents Act, I find that in the circumstances of the present application no clerical error exists in the specification as originally lodged and consequently the present amendments do not qualify for the special dispensation on that basis as included within sub‑section 49(4).
Obvious Mistake
         The meaning of "obvious mistake" has been analysed on several occasions in proceedings under the UK Patents Act where it had been argued that a proposed amendment ought to be considered "for the purpose of correcting an obvious mistake" as provided for in section 31(1) of the UK Act 1949.  From the remarks made by Graham J. in Chevron Research Company's Patent (1970) RPC 580 and in General Tire and Rubber Company (Frost's) Patent (1972) RPC 259, it is clear that the essential requirements of an "obvious mistake" are that an instructed reader of the specification must from an examination of the specification, be able to appreciate the existence of the mistake and the proper answer by way of correction.
         In my view, the remarks of Mr. Justice Graham are directly applicable to sub‑section 49(4) under consideration in relation to the present patent application insofar as the question of an "obvious mistake" is concerned.
         At the hearing, Mr. Terry on behalf of the applicants submitted that an instructed reader having the complete specification as lodged before him would notice the distinct variation between the invention title on page 1 and the actual subject matter of the description and so would recognise that there was something wrong, i.e. that a mistake had been made, and being an instructed reader would have regard to all documents on file including the application form and priority documents including its drawings to confirm the mistake and recognise the correction needed.  He submitted that the correction or remedy needed was obvious and clear, namely, the introduction into the complete specification of the description and drawings set out in the Swedish priority document and which correction would need to be in the English language to comply with the Act and Regulations.  Accordingly, the applicants contended that since the mistake was apparent to an instructed reader, as was the proper answer by way of correction, the amendments were rightly allowable as being a correction of an obvious mistake.
         In making his submission on the question of "obvious mistake" Mr. Terry argued that it was appropriate for the instructed reader to consider the specification in the light of all documents on file open to public inspection including the Swedish basic application.  I will consider this point first before deciding whether an "obvious mistake" is proven to exist.

         The Patents Act requires that an application for a standard patent be accompanied by a specification, either a provisional or a complete.  If the application is a Convention application then the provisions of Part XVI would apply requiring a complete specification to accompany the application, and a Convention basic document to be lodged as provided for by sub‑section 143(3).  There is no requirement in the Act that the complete specification accompany‑
ing a Convention application be of any special nature or indeed bear any resemblance to the relevant basic document; however, certain benefits may accrue if say a claim of the complete specification is fairly based on matter disclosed in the basic application (see sub‑section 141(1)).  It should be appreciated also that, firstly, a basic document can be lodged in support of a Convention application at any time up to sealing of that application, and secondly, that amendment of a Convention application form itself may be sought under regulation 76 to correct the basic application details, to replace the existing basic application details with completely different details, or even to delete all reference to Convention details.  But, the fact that a basic document has or has not been filed in respect of the application, or the fact that the application has been amended under regulation 76 for example, has no direct effect on the complete specification document itself but merely affects the application and hence whether that application is entitled to any benefits under Part XVI of the Act.
         Sub‑section 49(4) as well as similar provisions of section 78, is concerned with the non‑allowability of amendments of the specification associated with an application for a patent.  A complete specification accompanying an application is a document of record since its purpose is to describe the invention and to have claiming paragraphs defining the invention. Apart from circumstances wherein clerical errors or obvious mistakes exist in that complete specification as lodged and amending corrections are allowable on that basis, the complete specification in the form that it was lodged has to be considered the one the applicant intended to lodge to describe and claim his invention.  It is only the complete specification of a Convention application, not the basic document, to which a competitor or interested party refers to ascertain the invention disclosed, the monopoly sought or the monopoly granted. As I have already mentioned, the complete specification of a Convention application can, and often does, vary significantly in text from that of its associated basic document.  Furthermore, it should be noted that as the complete specification of the present application, in the form in which it was originally lodged, was laid open to public inspection on 17 April, 1980, any interested party examining that specification from that date from the point of view of the effect of that publication as provided in section 54C of the Patents Act, would recognise that the invention disclosed and claimed only concerned a gear mechanism.
         Accordingly, if there are any mistakes in the complete specification as distinct from the application form, then I consider it correct that in order to determine whether such mistakes are "obvious mistakes" it is only appropriate to consider the specification itself.  This view is in accord with remarks of Graham J. in the General Tire and Rubber Co. (Frost's) Patent (supra) where he held that an obvious mistake is one "that the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction".
         Consequently I find myself unable to agree with the proposition that recourse to all documents on file including the basic application is appropriate to establish an "obvious mistake".  I note that the hearing officer in Dempster Brothers Inc.'s Application (supra) had found the disclosure of a US basic document irrelevant to obvious mistake considerations in the light of Graham J.'s judgement.
         Therefore in relation to the present matter, on an examination of the specification as lodged and considering only that document I believe an instructed reader would recognise that there exists some error or mistake due to the divergence of the title and the actual text and drawings, but would not necessarily conclude that it is the description, claims and drawings that are wrong rather than the title.  Even if it were concluded that the entire description was wrong, then the proper answer by way of correction would not be apparent from the specification itself.  Consequently on the basis of the tests of Mr. Justice Graham I find that there is no "obvious mistake" in relation to the specification as lodged.
         In my view, even if the instructed reader were permitted to have regard to all documents on file including the Swedish basic document identified on the application form and filed therewith to consider the question of "obvious mistake", although I have decided that is inappropriate, the same conclusion as stated in the preceding paragraph is reached.  Briefly my reasons for that view are as follows.  Firstly, if regard is had to all documents on file available for inspection, there is no certainty that an instructed reader would recognise that the mistake resides in the description, claims and drawings of the specification ‑ the correspondence between the specification and the English language translation on file could tend to indicate that the specification as lodged was correct and that in fact the basic document in Swedish on file was incorrectly associated with the application.  Secondly, even if it were clearly concluded that there was a mistake in the description, claims and drawings, as distinct from the application form or page 1 of the specification, the proper answer by way of correction would not be appreciated. I cannot agree with the applicants' submission that the obvious correction needed is to insert the text and drawings of the Swedish basic document (appropriately translated) into the Australian specification.  The text of complete specifications accompanying Convention applications often exhibit distinct textual differences to the text of a basic document or of its translation ‑ that in fact was the case here in respect of the text of the complete specification lodged compared with the original "translation" of the basic document accompanying the application, as I have previously indicated.  Moreover, overseas agents when instructing Australian attorneys often realise that the text of the patent description and claims may need to be altered and accordingly authorise the Australian attorneys to make such alterations as are needed prior to lodgement.  This was in fact clearly the situation in this case also as the instructing letter of the overseas agents indicates (see exhibit JT‑1 of Mr. Terry's declaration lodged at the hearing).  Consequently, with the above in mind, I am clearly of the view that an instructed reader could only be guessing that the proper answer by way of correction is as suggested on behalf of the applicants.
         At the hearing, Mr. Terry also drew my attention to the case under the British Patents Act of Toya Soda Manufacturing Co. Ltd.'s Application (1971) RPC 127 and particularly to a portion of the judgement of Whitford J. at page 130 which reads as follows:

"There are, of course, general powers under the rules so far as the Comptroller is concerned dealing with the question of the allowance of amendment and the Manual of Office Practice does give some guidance with regard to this.  Thus, for example, section 6.37 of the Manual refers to a case in which a convention application was accompanied by a wrong British specification and the Office allowed substitution of the correct specification without post‑dating.  Here was a mistake of such an obvious character that quite plainly it was very sensible to permit this to be done and I was told that this is a practice which has not occurred merely on one occasion but which has followed on more than one occasion and, indeed, had been followed relatively recently.  So that in a case of what under another section of the Act might be referred to as an obvious mistake, it would seem that the practice of the Office is to allow correction without any post‑dating."

Mr. Terry argued that from that judgement it is clear that under the British Act, the UK Patent Office in relation to a Convention application permitted the substitution by amendment of the correct specification for an originally lodged wrong specification, and that as the amendments sought by the applicants in the present case created an analagous situation the present amendments should be allowed.  In the alternative he argued that Mr. Justice Whitford considered the mistake of clearly having the wrong specification lodged with the Convention application was an "obvious mistake" and accordingly the present amendments were allowable as a correction of such an obvious mistake.
         I am unable to agree with Mr. Terry's submissions in the following regards.  Firstly, the amendments sought in the Toya Soda case (supra), and the section to which the British Manual reference relates, both concerned pre‑
acceptance amendments sought under sub‑section 76(1) of the UK Patents Act 1949 which reads as follows:

"The Comptroller may, in accordance with the provisions of this section, correct any clerical error in any patent, any application for a patent or any document filed in pursuance of such an application, or any error in the register of patents."

Consequently, in the British case of the allowance of the correct specification in relation to a convention application, it can only be assumed (since there is no detailed explanation available) that in that particular case the Comptroller must have considered that the existence of a "clerical error" had been established and accordingly permitted the correction on that basis.  As I have decided earlier in this matter, in the circumstances of this application I have found that no "clerical error" exists in the specification as lodged.   Secondly, I consider that the remarks of Mr. Justice Whitford in the last sentence of the passage quoted can not be interpreted as concluding that the "mistake of such an obvious character" as referred to must inevitably be an "obvious mistake", since no reasoning is given to so conclude and it is noted that Whitford J. uses the indefinite expression "might be referred to as an obvious mistake" (my emphasis).  I have found earlier that the mistake was not an "obvious mistake" in the present circumstances and in my view the Toya Soda case (supra) is no authority to conclude otherwise.
Conclusion
         I have concluded that the amendments proposed to the specification are not for the purpose of correcting a clerical error or an obvious mistake in the present specification and, as they would have the effect of causing the specification to claim matter not in substance disclosed in the specification as lodged, they are not allowable.
         In consequence, the specification remains in the form as considered by the Examiner at the first report stage under section 48 examination.  In one objection taken in that report, the Examiner reported that since no claim of the present application was entitled to convention priority under section 141, the claimed invention was prior claimed by claims of Application No. 50302/79 having earlier priority dates.  I note that Application No. 50302/79 is still under examination and has not lapsed or been withdrawn.  Other than to seek amendments to their specification which I have found to be unallowable, the applicants have made no other direct response to the substance of the object‑
ions of the Examiner's first report.
         Accordingly, it is not appropriate for me to refuse the application and complete specification at this stage.  As time remains for acceptance as determined by section 54, I think it appropriate that the applicants be at liberty to seek what further action they consider appropriate in relation to their application and complete specification.

(T.R. BRUHN)