Husky Injection Molding Systems Ltd

[1990] APO 11

In the Matter of the Patents Act 1952

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In the Matter of Application No. 42603/89 by HUSKY INJECTION MOLDING SYSTEMS LTD

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In the Matter of Application under Section 160 for Extension of Time.

DECISION OF AN ASSISTANT COMMISSIONER OF PATENTS:
Background
        Watermark, Patent and Trade Mark Attorneys, lodged application 42603/89 on 6 October 1989, together with an application under s.160 for an extension of time within which to meet the requirements of s.51.  According to the application form (form 1), the filing purports to be made under the provisions of s.51, the number of the original application being 72688/87, in the name of Husky Injection Molding Systems Ltd.
        Despite correspondence, including submissions, from Watermark, the delegate of the Commissioner did not allow the s.160 application.  Subsequently, Watermark requested a hearing on the matter within the session scheduled for February 1990 in Melbourne.
        At the hearing, Mr B. Hess of Counsel, advised by Mr I. Scott, patent attorney, of Watermark, represented Husky.
The S.160 Application
        The Office sealed a patent (No. 579768) on the original or "parent" application 72688/87 on 5 May 1989, five months prior to

the date of lodgement of 42603/89.  Mr Scott, the attorney responsible for prosecuting the original application, has made a declaration as required by reg. 47(2) explaining the circumstances which led to the failure to lodge 42603/89 in time to comply with the requirements of s.51.  He makes the following points:

.the second official report (dated 7 July 1988) on the original application included an objection that claims 23 to 37 (as then proposed) were directed to an invention separate from the other claims, (as then proposed);

.as a result of that report, by letter dated 29 August 1988, Watermark's principals instructed that claims 23 to 37 were to be made the subject matter of a divisional application;

.by facsimile letter dated 4 October 1989, the principals enquired about the details of the divisional application;

.on receipt of that letter, Watermark realized from an inspection of the file of the original application that the firm had not filed a divisional application as instructed.

The final paragraph of the declaration reads:

"6.That due to an error or omission on the part of Watermark, the divisional application was not filed within the time prescribed."

Mr Scott has exhibited copies of the second official report, and of the letters of 29 August 1988 and 4 October 1989 to his declaration.
        The relevant portions of s.51 and s.160 read as follows:

"51.(1)  Subject to sub‑sections (2) 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 applications 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.

(4)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 after the expiration of the period of 3 months after acceptance of the application has been advertised in the Official Journal and before sealing of a patent on the application, make a further application for a standard patent or a petty patent, or further applications for standard patents or petty patents, in respect of an invention or inventions falling within the scope of the claims of the complete specification that was accepted in respect of the first‑mentioned application."

"160.

(2)Where, by reason of ‑

(a)an error or omission on the part of the person concerned or of his agent or attorney; ...

an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedings in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner may, upon application by the person concerned, but subject to this section, extend the time for doing the act or taking the step.

(8)This section does not apply in relation to the doing of an act or the taking of a step under section 47, section 47A, section 47B, section 47C or sub‑section 52B(1)."

S.45(4) provides for early priority for applications properly invoking the provisions of s.51.  It is essential for Husky to obtain that priority benefit for the application in suit, otherwise, pursuant to s.45(1), it must take as its priority date, its date of lodgement.  Consequently, the original application (now patent No. 579768) would prior publish the "further" application.
        In reporting on the s.160 application the delegate of the Commissioner stated that s.160 is not applicable in the present case.  This is so, the delegate wrote, because the relevant sub‑sections of s.51 viz. ss.51(1) and 51(4), each include the limitation that only the "applicant" for a standard application may make the further application in terms of the sub‑section.  In addition, s.51(4) is limited by reference to the terminology "before sealing", and the Office sealed a patent on the original application 5 months before the lodgement date of the purported divisional application.
Submissions
        I have summarised below the major submissions made by Messrs. Hess and Scott on behalf of the applicant, and which I consider to be most relevant to this action, having regard to the view taken by the delegate:

.The trend of the Authorities is towards a liberal application of s.160 unless there is some clear preclusion. For instance, in Scaniainventor v Commissioner of Patents 36 ALR 101, the Federal Court stated that s.160 is a

"remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary."

S.160(8) does list exclusions, but s.51(1) is not included in the list.  Furthermore, there is nothing within s.51(1) itself which would preclude the application of s.160 thereto.

.S.51(1) is the relevant sub‑section here ‑ this sub‑section is limited by reference to the terminology "an applicant", and to the time limit "before the expiration of the period of 3 months after acceptance of the application has been advertised in the Official Journal".  The expiration of this 3 month period defines the "certain time" for the purposes of s.160.  As to what is meant by "an applicant", just because an entity has become a patentee, as here, the entity does not cease being an applicant, though a "successful applicant".  That is, "applicant" is the broader class including "patentee" as a sub‑class.  There is no legislative intent to exclude an entity from making a divisional application merely because that entity has become the patentee of the original application.  In any case, Husky Injection Molding Systems Ltd was an applicant at the time the error (which resulted in failure to lodge the present application in time) was made.  It is at that time that the applicability of s.160 should be considered.

.S.51(4) is not relevant here except for the purposes of interpretation. Thus whereas s.51(4) explicitly refers to "before sealing", s.51(1) does not. In this respect see Hill v William Hill (Park Lane) Ld. 1949 AC 530, in which the House of Lords (per Viscount Simon) stated ‑

"As regards the first of these objections, it is to be observed that though a Parliamentary enactment (like parliamentary eloquence) is capable of saying the same thing twice over without adding anything to what has already been said once, this repetition in the case of an Act of Parliament is not to be assumed.  When the legislature enacts a particular phrase in a statute the presumption is that it is saying something which has not been said immediately before.  The rule that a meaning should, if possible, be given to every word in the statute implies that, unless there is good reason to the contrary, the words add something which would not be there if the words were left out.  If the choice is between tautology and retrospective effect (as in Hough v. Windus (I)) it is natural to prefer a construction which implies the reproach that Parliament has said the same thing twice over in preference to a construction which would have the result of undeclared retrospective interference, but no difficulty of choice of that sort arises here.  Indeed, the proper construction of one section can seldom be assisted by reference to a decision on the construction of quite a different section in another statute."

Decision
        I shall begin by referring to the precedents upon which the Office practice is based.
The first of these is a judgement of the High Court of Australia by Kitto J., viz., The Eimco Corporation v Commissioner of Patents 103 CLR 521. In this action Eimco had lodged a "divisional" application. The Deputy Commissioner directed that the indicated priority date of the claims of the complete specification was to be changed. Eimco appealed against this direction to the High Court, sitting as the Appeal Tribunal. Kitto J. considered the provisions of the Patents Act 1952‑1955. In particular, s.45(5) provided:

"45.(5)Where, in respect of an application for a patent lodged under the repealed Acts, (i.e. the Patents Act 1903‑1950) the Commissioner has required or allowed the applicant to amend the application and specification and drawings or any of them so as to apply to one invention only and the applicant has made an application under this Act for an invention excluded by the amendment, the priority date of a claim of the complete specification lodged under this Act, being a claim fairly based on matter disclosed in the provisional specification or complete specification lodged under the repealed Acts, is the date which would have been the priority date of that claim if that claim were a claim of the complete specification lodged in respect of the applicaton under the repealed Acts."

His Honour held that this sub‑section applied only when the application under the Act was lodged whilst the application under the repealed Acts was being prosecuted. Counsel for Eimco had submitted that the expression "the applicant" where first occurring merely identifies the person who, having applied for a patent under the repealed Acts, has made such an amendment as is described; and the same expression where secondly occurring is simply a second reference to the same person, and carries no implication that the person still has the character of applicant in respect of his original application. His Honour commented on this (see 103 CLR 524‑5) as follows:

"If this is correct, the appeal must succeed; but its consequences are startling.  Not only a person who, like the appellant, lodged his original application shortly before the new Act came into force, but every person who applied for a patent at any time between the passing of the first Patents Act in 1903 and the repeal of that Act, and who excluded an invention from his application in order to restrict it to one invention, upon applying for a patent for the excluded invention at any time in the future, would be entitled to take as the priority date of his claims the date of his original application.  A more unlikely intention it is difficult to imagine.  In order to give the provision a more sensible operation, by confining its operation to dealing with the situation to which the former reg. 11(3) was directed, even some straining of language would seem justified, if it were necessary.  But in fact all that is necessary is to adhere to the natural meaning of the words used.  The expression "the applicant", in the two places in which it occurs and especially in the second, suffices, if only one credits the draftsman with a precise use of words, to give a clear indication that the sub‑section, in speaking, both at the beginning and at the end, of an application for a patent lodged under the repealed Acts, is referring only to an application which is still an application in course of being prosecuted."

Subsequently, the Office issued two decisions on matters similar to that of the present action. The first, In the matter of a Patent Application by Esso Research & Engineering Co., appears at (1968) AOJP Vol 38 No 2 at page 146. The Patent Attorneys involved in this case did not dispute the facts, which were very similar to those in the present action. The Office had sealed a patent on the "original" application. Five months later, Esso lodged a "further" application said to be made by virtue of s.49A(1) of the Patents Act 1952‑66 (as then in force). Esso also sought an extension of time under s.160(2)(a) from the date of sealing of the "original" application to the date of lodgement of the "further" application. The delegate of the Commissioner refused the application under s.160(2)(a) on the basis of the law set out by Kitto J in the Eimco case.
         The Deputy Commissioner issued the second of the two decisions to which I have referred.  (See Application No. 22603/77 for a patent by Toyo Pulp Co., Ltd., (1978) AOJP Vol 48 No 23 at page 2166.)  Here Toyo's "original" application had lapsed by virtue of s.53.  Toyo then lodged (one day later) a "divisional" application purporting to be made under the provisions of s.49A.  Subsequently, Toyo made an application under s.160(2)(b) for an extension of time of one day in which to file the "divisional" application.  The Deputy Commissioner refused the s.160 application, again on the basis of the law expressed by the High Court in the Eimco judgement in relation to the meaning of "applicant".  In addition, he made the point that:

"there is no time limit expressly stated in section 49A before which a separate application must be made.  Accordingly, there is no time which can be extended by action under section 160."

Subsequently, Davies J considered the Toyo matter on review before the Administrative Appeals Tribunal.  He commented:

"A divisional application may be made at any time, but it must be made by 'the applicant'.  A person who does not hold this character may not make a divisional application.  To act pursuant to section 160 to authorise a person who is not 'the applicant' to make a divisional application would be to act inconsistently with the clear legislative intent expressed by section 49A.  That section does not refer to time but does require that the divisional application be made by 'the applicant'."

I shall now consider the application of the foregoing precedents to the present circumstances, in the light of the submissions made by Mr Hess and Mr Scott.
        Firstly, I draw attention to the fact that as noted by the Deputy Commissioner and Davies J, the former s.49A made no reference to time limits, being restricted only by reference to "the applicant".  On the other hand, s.51(1) does make reference to a "certain time", as pointed out by Mr Hess ie "... 3 months after acceptance ... has been advertised ...".  Consequently, having regard to the law expressed by the Courts, in particular as expressed by the Federal Court in the Scaniainventor case (supra), the Commissioner has the power to extend the time under s.160 in which an "applicant" ‑ in terms of the sub‑section ‑ may lodge the further application for an invention disclosed in the original application.  The "advantage" to be gained is, of course, that the applicant is not limited by the terms of s.51(4) which would otherwise operate.  That is, the applicant is still entitled to claim an invention disclosed in, rather than one limited to falling within the scope of the claims of, the original application.  Indeed, the practice of the Office is to allow such extensions, and the delegate who dealt with the s.160 application in the first instance informed Mr Scott accordingly.  Counsel for Husky submitted that the trend of the Authorities is that s.160 should be applied except where it is clearly inapplicable, and that nothing in s.51(1) prohibits the application of s.160 thereto.  I agree ‑ at least insofar as I have explained above.
        Consequential on the foregoing reasoning, I have to determine whether Husky can be called an "applicant" in terms of s.51(1).  Counsel for Husky has put forward two submissions on this matter : the first being that "applicant" includes "patentee", the second being that Husky was clearly an applicant at the relevant time, ie when Husky's attorneys made the error.  I disagree on both points.  I think the plain meaning of the sub‑section does not admit of either such possibility.  Furthermore the law as expressed by Kitto J in the Eimco case (supra) clearly excludes both possibilities.  In particular His Honour commented that:

"The expression "the applicant" ... is referring only to an application which is still an application in course of being prosecuted."

As a result, s.160, which is concerned only with extension of time, cannot be applied where there is no longer an "applicant" in terms of the sub‑section.  Here, Husky became a patentee in respect of the original application before the time of lodging the further application.  No action under s.160 can change Husky's status at that time.
        I have one final submission to consider.  Mr Hess in comparing ss.51(1) and 51(4), pointed out that the latter refers to "before sealing", whereas the former does not.  In this respect he referred me to the judgement of the House of Lords in Hill v William Hill (supra).  This submission is concerned with the rule that a meaning should, if possible, be given to every word in a statute.  As stated by the House of Lords, this rule implies that, unless there is a good reason to the contrary, the words add something which would not be there if the words were left out.  Of course, I am bound to agree.  In particular I would not want to ignore the meaning ascribed to "the applicant" by Kitto J merely because there is no reference to "before sealing" in s.51(1).  In my view, if s.51 had the meaning sought to be given it by counsel, it would be a remarkable piece of legislation.  Thus a person might make a further application for an invention falling within the scope of the claims of the original application as accepted.  However, because at the time of applying, the original application had matured to the status of a patent, the application would fail to meet the terms of s.51(4), for which s.160 could not provide a remedy.  Suppose that person then proposed amendments to the further application which broadened its scope beyond that defined in the accepted claims of the original application, but still falling within the overall disclosure thereof.  Assuming that the late lodgement was the result of circumstances falling within the  bounds of s.160(2)(a) or s.160(2)(b), one or the other of those sub‑sections could be applied to enable the compliance of the further application with the terms of s.51(1).  Thus the (apparently) irredeemable failure of a narrow application to obtain early priority could be changed to a success by broadening of the application.  I do not think that this is what the legislation intended.
        Finally, I believe there is a strong argument discernible from ss.51(5) and (5A) which supports the view that "applicant" and "patentee" are quite distinct in terms of the section.  These sub‑
sections read:

"(5)An applicant for a petty 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 sealing of a petty patent on the application, make a further application for a petty patent or a standard patent, or further applications for petty patents or standard patents, in respect of an invention or inventions disclosed in the petty patent specification lodged in respect of the first‑mentioned application.

(5A)A patentee of a petty patent may, at any time before the expiration of the period of 3 months after sealing of the petty patent, make an application for a petty patent or a standard patent, or applications for petty patents or standard patents, in respect of an invention or inventions disclosed in the petty patent specification lodged in respect of the application on which the first‑mentioned petty patent was sealed."

In my view, these sub‑sections make it manifestly clear that the person concerned has the status of "applicant" before sealing, and "patentee" after sealing, and this accords with the interpretation of these terms which I have previously made.
Conclusions
        I have found that the expression "the applicant" appearing in s.51(1) is concerned only with an application which is still an application in the course of being prosecuted.  I have also found that once the original application has matured to the status of a patent, there is no "applicant" in terms of the sub‑section, and there is no time extendable under s.160.
        Consequently, I refuse to allow the extension of time applied for under s.160.

(J.L. ROVETA)