Johnson & Johnson Consumer Companies Inc

[1999] ADO 5

OFFICIAL NOTICE

DECISION OF A DEPUTY REGISTRAR OF DESIGNS

Application  :          No. 73/98 in the name of Johnson & Johnson Consumer Companies, Inc [and Registered Designs 137194, 137195, and 137196]

Title:          Nursing Bottle Holder

Action:          Plural priority documents, divisional applications, and priority dates

Decision:          Issued            .

Abstract

Where a design application includes plural designs, and claims convention priority from plural convention applications to different designs, the application proceeds on the following basis

·For the purposes of sections 21, 22C(2) and 49, the application should be taken notionally as being plural design applications; and

·Each notional design application is treated as having a priority date that goes to the earliest claimed priority document that discloses the particular design.

Such applications should be prosecuted before the Registrar in the following manner, to ensure the grant is properly made with respect to the relevant convention application:

·In any divisional application, the priority claim must be restricted to earliest claimed priority document that discloses the particular design [and any subsequent claimed convention applications (if any) for the same design] - ie to the priority date associated with the notional application for that design. Since the priority details are specified in the originally filed application, this will generally require a letter from the applicant disclaiming priority from the other convention applications.

·For a remaining design in the parent application, the priority claim must be restricted to earliest claimed priority document that discloses the particular design [and any subsequent claimed convention applications (if any) for the same design] - ie to the priority date associated with the notional application for that design. Because the priority details are specified in that application, this must be effected by an amendment to delete the other priority claims.

DESIGNS ACT 1906

DECISION OF A DEPUTY REGISTRAR OF DESIGNS

Re:Design Application No. 73/98 by Johnson & Johnson Consumer Companies, Inc [and Registered Designs 137194, 137195, and 137196]

BACKGROUND

This matter concerns claims to convention priority, and priority dates, where an application containing plural designs is filed claiming priority from plural convention applications.

Application 73/98 was filed on 14 January 1998, claiming priority from two US priority applications – 29/073808 and 29/081531. The examiner objected, inter alia, to the presence of more than one design in the application. Consequent upon that objection, the applicant filed three divisional applications that have proceeded to registration as design nos. 137194, 137195, and 137196. This matter concerns the processing of application 73/98 with respect to the residual design.

The applicant has proposed deletion of the three designs that form the basis of the divisional applications. However the examiner has objected that the remaining design is not disclosed in the first priority document, and sought deletion of that priority claim. The attorney has resisted this on the basis that they will lose that priority claim for the three divisional designs if the priority claim is deleted from the parent.

The circumstances are illustrated in the following diagram, where the letters A, B, C, and D represent the four different designs involved in the present situation:

The questions raised in this case are whether

• the priority claim to 29/073808 needs to be deleted before application 73/98 can proceed to grant for the ‘residual’ design D; and

• the three divisionals lose their rightful claim to priority from 29/073808 if that priority claim is now deleted from 73/98.

In response to the examiner maintaining an objection to 73/98 claiming priority from 29/073808, the attorney requested to be heard. However he did not seek to appear if my decision was to find that Designs 137194, 5, and 6 have priority from 29/073808, and 73/98 had priority from  29/081531. In the event, no appearance occurred – although I consider the conditional nature of the applicant's intention to appear in fact constitutes an appearance for the purposes of Reg 17.

As will become apparent below, the Act does not specifically address the issue raised by this case. I also note that the issues would potentially be different if "D" was divided out and "A" [for example] remained as the residual design. In that event, 73/98 would properly be entitled to claim the earlier priority date – but would s.22C determine the priority date of the divisional for "D" as that date as well? For this reason, I considerate appropriate to review the provisions of the Act in a general sense, before making my findings in respect of this particular set of applications.

LEGISLATION

This matter requires consideration of the several sections of the Act which deal with priority dates for designs. These provisions are:

Priority date

21(1) There shall be a priority date in respect of an application for the registration of a design.
(2) Subject to this Act, the priority date in respect of an application for registration of a design is the date on which the application was lodged under this Act.

Applications under International Conventions

49(1) Where:

(a) an application for protection in respect of a design (in this section referred to as the "basic application") has been made in a Convention country; and
(b) an application for registration of the design is lodged under this Act, within a period of 6 months after the date on which the basic application was made, by a person who is:

(i) the applicant in the Convention country;
(ii) the assignee of the applicant in the Convention country; or

(iii) the legal personal representative of the applicant in the Convention country or of his assignee;

the priority date in respect of the application under this Act is the date of the making of the basic application.
(2) ….
(3) Where 2 or more applications for protection in respect of a design have been made in one or more Convention countries, the period of 6 months referred to in paragraph (1)(b) shall be reckoned from the date on which the earlier or earliest of those applications was made.
…

Division of application after amendment

22C(1) Where –

(a)an amendment of an application for registration of a design has been made under section 22B; and

(b)the amendment has the effect of excluding a design or designs from the application,

the applicant may, at any time before the registration, or the refusal of the registration, on that application, of a design, make a further application (in this section referred to as a “divisional application”) for registration of the design, or each design, so excluded.

(2) For the purposes of this Act, a divisional application for registration of a design shall be deemed to have been lodged under this Act on the date on which the original application for registration of the design was so lodged and the priority date in respect of such a divisional application is the priority date in respect of the original application.

From these provisions, it may be observed that:

• The priority date of a Convention application is the date of making the basic application;

• The Act clearly recognises that there can be multiple convention applications in respect of a single design [see discussion below for further elaboration of this point], and sets the 6-month convention period as starting from the first of such convention applications; and

• The priority date of a divisional application is the priority date of the original application. The only ‘test’ is that the design was one excluded from the original application – there is no test per se relating to its disclosure in a priority document.

When an application is filed for plural designs claiming priority from multiple priority documents directed to different designs, these provisions could be interpreted as providing that:

• the priority date of the original application is the date of the earliest convention application relied upon; and

• any divisional application takes that date as the priority date – irrespective of whether the design was disclosed in the relevant priority document.

If this is correct, an applicant could obtain a priority date for a design earlier than the date of disclosure in any priority application – merely by including it in an application which otherwise properly claims priority from an earlier basic application – and then divide the ‘later’ design out. This seems to be somewhat surprising.

In dealing with this issue, I note the comments of Mason and Wilson JJ in Cooper Brookes (Wollongong) PTY Ltd v The Commissioner of Taxation 147 CLR 297, at page 320:

"... Generally speaking, mere inconvenience of result in itself is not a ground for departing from the natural and ordinary sense of the language read in its context. But there are cases in which inconvenience of result or improbability of result assists the court in concluding that an alternative construction which is reasonably open is to be preferred to the literal meaning because the alternative interpretation more closely conforms to the legislative intent discernible from other provisions in the statute.

There is a similar problem with the related so-called "golden rule" of construction. There are statements of the rule which would confine the courts to the ordinary grammatical sense of the words used unless that produces an absurdity or inconsistency. It is to be noted that Dixon J. in Broken Hill South Ltd. v. Commissioner of Taxation (N.S.W.) (1937) 56 CLR 337, at p.371 observed that departure from the ordinary grammatical sense is not legitimate unless there is "some obscurity or some inconsistency", though it may be that "obscurity" was intended to be a reference to " absurdity". For the reason already given in the discussion of the literal rule, departure from the ordinary grammatical sense cannot be restricted to cases of absurdity and inconsistency.

In some cases in the past these rules of construction have been applied too rigidly.  The fundamental object of statutory construction in every case is to ascertain the legislative intention by reference to the language of the instrument viewed as a whole.  But in performing that task the courts look to the operation of the statute according to its terms and to legitimate aids to construction."

The provisions in the Designs Act relating to both priority dates, and divisional applications, were introduced in 1981 in response to the Franki Report (Designs Law Review Committee – Report on the Law Relating to Designs, February 1973). Prior to the 1981 amendments to the Designs Act:

• There was no concept of ‘priority date’ as such in the Designs Act;

• Paris Convention priority was recognised via reference to a law in the United Kingdom; and

• There was no provision for divisional applications.

The Explanatory memorandum for the Designs Amendment Bill 1981 (esp. paras 14, 18, and 77) is of no particular assistance in ascertaining the intention of the amendments introduced by that legislation. However, it is apparent that the current provisions relating to priority date, convention applications, and divisionals, arose from the Franki report. I therefore consider the Franki report provides valid assistance in ascertaining the intention of the legislation. In particular, I think the following paragraphs are germane:

Priority Date

1. We also consider that each application should be given a priority date, which should be the date on which the application is lodged in the Designs office.  Convention applications would, of course, be entitled to a priority date according to the date on which the application was first lodged in a Convention country, which may be earlier than the date of lodging of the application in Australia.  This matter has been dealt with in our recommendations with respect to international arrangements.  A divisional application would have the same priority date as that of the application from which it was separated (see paragraph 109). The priority date should be the effective date for the purpose of testing newness or originality.

Convention Priority

1. The provisions of sections 48 and 49 are no longer appropriate and we recommend that they should be repealed. We recommend that a provision be included in any new designs legislation along the lines of section 140 of the Patents Act. The word 'inventions' in sub-section (2.) of that section should be replaced by the word 'designs' and the words 'application for a patent or similar protection in respect of an invention' in sub-section (3.) should be replaced by the words 'application for protection in respect of a design or a utility model. In making this recommendation we draw attention to Articles 4A (1) and (2) and 4E (1) and (2) of the Paris Convention for the Protection of Industrial Property. Section 140, does not appear to require any other alteration for the purpose of its adaptation for use in designs legislation.

1. We also recommend that a provision be included, similar to sections 141 and 142 of the Patents Act, to the effect that where an application for protection in respect of a design or a utility model ('the basic application’) has been made in a Convention country and the applicant in the Convention country or his assignee or legal representative makes an application for the registration of the design (or of the utility model as a design) within six months after the date on which the basic application was made, the priority date of the application is the date of the lodging of the basic application. Where two or more applications have been made for protection of the design or utility model in one or more Convention countries, the period of six months shall be reckoned from the date on which the earlier or earliest of those applications was made.

1. We also recommend that a provision be included, equivalent to section 143 (l.) (a), (3.) and (4.) of the Patents Act, to the effect that a Convention application shall be made and proceeded with in the same manner as an ordinary application under the Act. …..

Divisionals

1. The present Designs Act contains no provision enabling an applicant to make a further application in cases where the original application includes more than one design, and the designs are each separately registrable as a design. We think that such a provision is desirable, but only where an amendment of the application, representations or statement of novelty or statement of monopoly has been made to meet an objection by the Registrar and the amendment excludes a design or designs which are separately registrable. We recommend that a provision be included in any new legislation to the effect that where an amendment of the application, representations or statement of novelty or statement of monopoly has been made to meet an objection by the Registrar and the amendment excludes a design or designs which are separately registrable, the applicant may, before the application has been registered or refused or has lapsed, make a further application in respect of the design or designs so excluded.

1. The Registrar in such cases should be given power to direct that the design in respect of which the further application is made be accorded the same priority date' as the original application, and that the application shall be treated as if it had been lodged on the date of lodging of the original applications A right of appeal to the Appeal Tribunal by the applicant should lie against any direction or refusal to direct.

The first point to note is the clear intention of introducing the concept of a ‘priority date’ to provide an “effective date for the purpose of testing newness or originality”. Also, the committee was clearly guided by corresponding provisions in the Patents Act 1952, and there is no suggestion of any intention to depart from the general principle of ‘date of first disclosure’ that applied under that Act.

The second point is that while the Franki Report clearly bases its recommendation on analogous provisions in the Patents Act 1952, it makes no explicit recommendation for handling plural priority claims for different designs. This would seem to follow from the different nature of a design to an invention; a design registration relates to a single design; a patent relates to a single invention that can have plural embodiments – which embodiments can properly be disclosed in different priority applications. Such considerations are clearly evident in how the Franki report was implemented. Paragraph 212 of the Franki report recommends provisions similar to both sections 141 and 142 of the Patents Act 1952. S.141 (Patents) deals with priority claims from a single convention application, with provisions dealing with the situation where there are corresponding applications filed in plural countries on different dates. These provisions are mirrored in s.49 (3) (Designs). S.142 (Patents) deals with the situation of priority claims from plural different convention applications, and provides a ‘fair basis’ test to allocate the ‘correct’ priority date to a claim in the specification. The Designs Act includes no provision analogous to s.142 (Patents) despite the broad reference in para 212 of Franki.

The third point is that the recommendation to introduce divisional applications makes no reference to convention applications. Rather it appears to address the need simpliciter to have a divisional mechanism to preserve rights should an application include more than one design. This is reinforced by the recommended change to the requirements for sets – where (in para 93) the report states:

If our proposal for divisional applications in paragraphs 108 and 109 is accepted, then a decision by the Registrar that certain articles do not form a set of articles will leave the applicant with the right to apply for registration of the designs for the articles separately….

In summary, the Franki Report clearly does not deal with how to handle plural convention priority claims to different designs in a single application. What is clear is:

1. the intention to provide priority date that would form the basis of determining the novelty of a design;

2. there was no intention to depart from the general rule that the priority date is the date of first disclosure; and

3. the intention, where an application contains plural designs, that the applicant would be able to maintain their rights to the several designs by filing divisional applications.

The implementation of the Franki report in the 1981 amendments is consistent with these points. To deal with the situation of plural priority claims to different designs in a single application, I take these points as reflecting the legislative intention of the Act.

DECISION

It is clear that the Designs Act does not contemplate an application for plural designs claiming priority from plural different convention applications.

I think it is clearly contrary the intentions of the legislation for any design to be accorded a priority date that is earlier than the first convention application that discloses the design. To do otherwise would defeat the clear purpose of the priority date being the date for assessing the novelty of the design on the basis of the date of first disclosure – indeed it would allow an applicant to obtain an earlier priority date by merely including it in an application based on an earlier priority application, and subsequently filing a divisional application for that later design.

I also think that it is contrary the intentions of the legislation that the applicant should lose any priority claim that they would otherwise be entitled to, through the operation of the divisional mechanism.

In the absence of explicit provisions in the Designs Act, I think the manner of proceeding in situations where an application includes plural designs, and claims priority from plural convention applications, is as follows:

• For the purposes of sections 21, 22C(2) and 49, the application should be taken notionally as being plural design applications; and

• Each notional design application is treated as having a priority date that goes to the earliest claimed priority document that discloses the particular design.

Such applications should be prosecuted before the Registrar in the following manner, to ensure the grant is properly made with respect to the relevant convention application:

• In any divisional application, the priority claim must be restricted to earliest claimed priority document that discloses the particular design [and any subsequent claimed convention applications (if any) for the same design] - ie to the priority date associated with the notional application for that design. Since the priority details are specified in the originally filed application, this will generally require a letter from the applicant disclaiming priority from the other convention applications.

• For a remaining design in the parent application, the priority claim must be restricted to earliest claimed priority document that discloses the particular design [and any subsequent claimed convention applications (if any) for the same design] - ie to the priority date associated with the notional application for that design. Because the priority details are specified in that application, this must be effected by an amendment to delete the other priority claims.

The attorney in this case has expressed concern that by deletion of priority details from 73/98, the applicant will correspondingly lose entitlement to that priority in the divisional applications. I disagree. The Act refers to the priority date of a divisional application as being the priority date of the original application. It is clear to me that the reference to original application is intended to refer to the originally filed application before any steps were taken to exclude the subject matter. I am therefore of the view that deletion of priority claims from the parent concurrent with, or subsequent to, the exclusion of designs which become the subject of  divisional applications, does not delete that priority claim from the divisional application. Rather, the priority claim of the divisional application includes all priority claims present in the original application at the time immediately prior to the design being excluded therefrom.

CONCLUSION

In my view,  assuming Designs 137194, 137195, and 137196 were disclosed in both priority documents, the priority date of those designs is the date of the earlier priority document – and that is not changed if an amendment is now made to application 73/98 to delete the claim to convention priority from that document.

The design remaining in application 73/98 was not disclosed in the first priority document. I consider the application requires amendment to delete the claim to priority to 29/073808.

Finally, as regard to the further prosecution of this case, I note that a reg.16 notice issued on 30 June 1999, with a response due by 30 Sept 1999. The applicant requested a hearing on 29 Sept. In the circumstances, I consider it appropriate to allow the applicant a further opportunity to amend the application. Accordingly, I allow the applicant one month from the date of this decision to amend the application in accordance with this decision – after which I shall decide to register (or refuse to register in the event of non-amendment) the application [Reg 17(4)].

D. Herald
Deputy Registrar of Designs

Patent attorneys for the applicant  :  Baldwin Shelston Waters, Sydney