Mark Johnson v Paul Weingarth, Spiro Rokos and Paul Scully-Power
[2020] APO 32
•7 July 2020
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Mark Johnson v Paul Weingarth, Spiro Rokos and Paul Scully-Power [2020] APO 32
Patent Application: 2018282346
Title:A system for digital receipts enrolment and issuance
Patent Applicant: Paul Weingarth, Spiro Rokos, Paul Scully-Power
Opponent:Mark Johnson
Delegate:Dr S.D. Barker
Decision Date: 7 July 2020
Hearing Date: Written submissions completed on 3 June 2020
Catchwords: PATENTS – extension of time to file application – applicants believed they could not obtain an effective patent – error established – extension is appropriate – opposition unsuccessful
Representation: Solicitors and patent attorney for the applicant: Minter Ellison
Patent attorney for the opponent: Lord & Company
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018282346
Title:A system for digital receipts enrolment and issuance
Patent Applicant: Paul Weingarth, Spiro Rokos, Paul Scully-Power
Date of Decision: 7 July 2020
DECISION
I grant the extension of time.
I award costs according to Schedule 8 against Mark Johnson.
REASONS FOR DECISION
This matter arises under the Patents Act (the Act) and the Patents Regulations (the Regulations).
Patent application 2018282346 was filed on 19 December 2019 by Paul Weingarth, Spiro Rokos and Paul Scully-Power (collectively the applicants). The applicants sought to associate the application with provisional applications 2016901891 (the first provisional application) and 2016903897 (the second provisional application). The prescribed period for associating with these provisional applications is 12 months from the filing of the first provisional application,[1] i.e. 20 May 2017. The applicants filed an application for an extension of time of 19 months to file a complete application associated with a provisional application. The extension of time was opposed by Mark Johnson (the opponent).
[1] Regulation 3.10.
The law
This matter is governed by section 223(2) which states:
Where, because of:
(a) an error or omission by the person concerned or by his or her agent or attorney; or
(b) circumstances beyond the control of the person concerned;
a relevant act that is required to be done within a certain time is not, or cannot be, done within that time, the Commissioner may, on application made by the person concerned in accordance with the regulations, extend the time for doing the act.A "relevant act" for the purposes of section 223 is defined in section 223(11) and means:
an action (other than a prescribed action) in relation to a patent or patent application, or any proceedings under this Act (other than court proceedings), and includes the making of a Convention application within the time allowed for making such applications.
Section 223 has been considered in detail in many decisions. A convenient summary of the principles was given by the delegate in Knauf Plasterboard Pty Ltd v CSR Building Products Limited:[2]
[2] Knauf Plasterboard Pty Ltd v CSR Building Products Limited [2018] APO 64 at [6] – [8].
"The following principles for applying the provisions of section 223 are derived from decided cases:
(i) The statutory provision to extend time is beneficial in nature and should be applied beneficially.[3]
(ii) While the applicant has the burden of placing before the tribunal the circumstances it claims will justify the grant of an extension of time, that does not amount to a burden of proof and it is not appropriate that it be so described.[4]
(iii) For section 223(2)(a) to be enlivened, it must be shown that an error or omission had contributed to cause the failure to perform the relevant act, i.e. there must be a causal connection between the error or omission and the relevant act that is required to be done within the stipulated time.[5]
(iv) The applicants for an extension of time must demonstrate that they had an intention to do the relevant act within the time prescribed, and that an error or omission on their, or their agent's, behalf reasonably could be said to have frustrated that intention.[6] However, there will be exceptional circumstances where the relevant error precluded the formation of a specific intention. In such cases the required causal connection is satisfied if the error contributed to the failure to form the intention to perform the relevant act.[7]
(v) "In order to make out the 'proper case ... justifying an extension' ... an applicant would ... have to go beyond a disclosure of the processes by which an agent's errors came to be committed and would have to expose frankly, inter alia, all the conduct, knowledge, beliefs and mental processes of the applicant ... relevant to an understanding of the way the failure to do the act or take the step occurred, or relevant to an evaluation of the reasonableness of that conduct."[8]
The term 'error or omission' in section 223 encompasses accidental slips, inadvertences and errors caused by faulty reflection;[9] an unexpected failure to exercise due diligence and/or a flaw in mental function in carrying out an intention;[10] and a breakdown in procedure in effecting an intention.[11] Accordingly, the phrase 'error or omission' has a broad scope.
In contrast, the failure to perform the relevant act cannot itself be the 'error or omission' by which the failure occurred[12] and a deliberate policy or decision that leads to the failure to perform the relevant act does not constitute an 'error or omission'.[13]"
[3] ReSanyo Electric Co Ltd and Commissioner of Patents [1996] AATA 832, (1996) 36 IPR 470 at 479 [16].
[4] Ibid.
[5] Kimberly-Clark Ltd vCommissioner of Patents (No 3) [1988] FCA 421; (1988) 13 IPR 569 at 579 [9], 582 [15]; Re Lazer Safe Pty Ltd and Commissioner of Patents [2001] AATA 967 at [11].
[6] Ibid.
[7] Re Apotex Pty Limited and Commissioner of Patents [2008] AATA 226 at [21].
[8] Kimberly-Clark Ltd v Commissioner of Patents (No 3), supra at 583-584 [17].
[9] Ibid at 579 [9].
[10] Total Peripherals Pty Ltd v Commissioner of Patents [1998] AATA 784 at [14].
[11] Oz Technology, Inc v Boral Energy Ltd [1999] APO 8.
[12] Kimberly-Clark Ltd v Commissioner of Patents (No 3), ibid at 580 [11].
[13] Re Weir Pumps Ltd and Commissioner of Patents and Stork Pompen BV [1988] AATA 331; (1988) 13 IPR 163 at 166-167 [9].
To this list could be added the observation that an error or omission does not include changes of mind with the benefit of hindsight,[14] and misapprehension or ignorance of the law does not constitute an error by itself.[15]
[14] Amicus Therapeutics, Inc. [2019] APO 4 at [34] amd Magnum Magnetics Corporation [2019] APO 3 at ??.
[15] Kmart Australia Limited [2011] ADO 2.
The facts
The basis for the extension of time is set out in several declarations by Mr Rokos. The declaration dated 20 February 2019 (the first Rokos declaration) sets out the following information:
· around April 2016 the applicants engaged a patent attorney to draft the first provisional specification;[16]
· around September 2016 the patent attorney drafted the second provisional specification;[17]
· on 17 March 2017 Mr Rokos exchanged emails with the patent attorney regarding filing a PCT application claiming priority from the provisional applications;[18]
· on 8 May 2017 Mr Rokos and Mr Weingarth met with the patent attorney to discuss the results of an international type search. Mr Rokos and Mr Weingarth understood that the patent attorney advised them that there was a lack of inventive step that could not be overcome in a way that would allow a commercially useful patent to be granted;[19]
· on 18 May 2017 the patent attorney informed Mr Rokos that the deadline for filing a complete application claiming priority from the first provisional was 20 May 2017;[20]
· Mr Rokos did not instruct the patent attorney to file a "complete PCT application" because of the belief that it would not be possible to obtain a commercially useful patent;[21]
· around November 2018 Mr Rokos obtained different advice that it would have been possible to overcome the issue of lack of inventive step;[22] and
· the present application was filed on 19 December 2018.
[16] Para [6].
[17] Para [7].
[18] Para [9].
[19] Para [11] and [12].
[20] Para [13].
[21] Para [14].
[22] Para [16].
The declaration dated 2 May 2019 (the second Rokos declaration) sets out the following additional information:
· the advice on 8 May 2017 was oral, and it is Mr Rokos' view that the advice was that it was impossible to overcome the lack of inventive step in a way that would allow a commercially useful patent to be granted;[23] and
· if Mr Rokos and Mr Weingarth had understood that it could have been possible to amend the specification, they would have proceeded to file a patent application.[24]
[23] Para [5] and [6].
[24] Para [12].
The declaration dated 7 August 2019 (the third Rokos declaration) sets out the following additional information:
· the desire to file a PCT application included a desire to obtain patent protection in Australia;[25]
· the patent attorney did not provide any options to address the lack of inventive step;[26]
· the applicants do not have a sophisticated understanding of the patenting process and relied on the advice of their patent attorney;[27] and
· the applicants had funds available to file a PCT application, and would have done so but for the advice of the patent attorney.[28]
[25] Para [5].
[26] Para [7].
[27] Para [8].
[28] Para [9].
Mr Rokos filed a declaration dated 28 February 2020 (the fourth Rokos declaration) as evidence in answer to the opposition. This declaration sets out the following additional information:
· Mr Scully-Power does not have day-to-day involvement with the business, and was not involved in the prosecution of any of the applications;[29]
· Mr Scully-Power was not involved in the meeting with the patent attorney, or discussions about the ability to pursue patent protection;[30] and
· Mr Scully-Power was not involved in the decision not to apply for a patent.[31]
[29] Para [6].
[30] Para [7].
[31] Para [8].
Information provided by the opponent establishes the following information:
· Mr Scully-Power is a co-applicant of three granted US patents.[32]
[32] Letter filed with the Notice of Opposition on 1 November 2019.
Submissions by the opponent
The opponent filed submissions on 13 May 2020 and 3 June 2020. The essence of these submissions is:
· there is no evidence that the patent attorney did not inform Mr Rokos and Mr Weingarth that there was an ability to amend the specification;
· it is unlikely that a registered patent attorney would have provided the advice that Mr Rokos asserts;
· if the patent attorney believed that the application was futile, why did he send a reminder on 18 May 2017; and
· it is unlikely that Mr Rokos and Mr Weingarth did not conduct any research on their own, or seek assistance from Mr Scully-Power.
The opponent's reply submissions dated 3 June 2020 made the following additional points:
· it is the duty of a patent attorney to ensure their client is informed with regard to intellectual property matters. The patent attorney has not provided evidence in this matter.
Submissions by the applicants
The applicants filed submissions on 27 May 2020. The applicants stated that central to the circumstances upon which the extension application is based is the meeting between Mr Rokos, Mr Weingarth and their patent attorney on 8 May 2017. The outcome of that meeting was that Mr Rokos and Mr Weingarth understood they would not be able to obtain the grant of a commercially useful patent.
The applicants submitted that this erroneous belief arose from:
a)Mr Rokos and Mr Weingarth had a mistaken understanding of the patent process, particularly the ability "to engage with an examiner regarding the relevance of any cited document"[33]
b)Mr Rokos and Mr Weingarth were mistaken in their understanding of "the language of the claims which would be necessary to provide commercially useful patent protection" and "did not fully understand the potential amendments which could have been proposed"[34]
c)Mr Rokos and Mr Weingarth did not understand "we could make submissions and/or amend the claims so as to overcome the inventive step objection"[35]
d)The patent attorney misunderstood the patent protection needed for a commercially useful patent protection, and this "led to him advising us (erroneously) that it would be impossible to overcome the allegation of lack of inventive step"[36]
[33] Second Rokos declaration at [8].
[34] Second Rokos declaration at [9].
[35] Second Rokos declaration at [10].
[36] Second Rokos declaration at [11].
Consideration
The case of the applicants is simple. They assert that Mr Rokos and Mr Weingarth were inexperienced and simply relied on the advice of their patent attorney. That is a highly credible submission. The applicants accept that Mr Scully-Power was more familiar with the patent system, but he took no part in the critical decisions. Consequently it is the actions and beliefs of Mr Rokos and Mr Weingarth that are relevant.
The applicants assert that their patent attorney provided inaccurate and incomplete advice to Mr Rokos and Mr Weingarth. If true, this is very troubling. The only evidence to support this assertion is the recollection of Mr Rokos, some three years after the event. There is no independent or contemporaneous evidence to support the assertion. I note that the patent attorney sent a reminder to Mr Rokos on 18 May 2017. To my mind this does not cast light on what was said between the attorney and his clients.
The opponent advanced the possibility that Mr Rokos and Mr Weingarth made a commercial decision in 2017 not to file an application and subsequently changed their minds. This is not supported by Mr Rokos' evidence, or any evidence from the opponent. In the absence of evidence I consider this is a less likely explanation of events.
By his own admission, Mr Rokos did not understand the patent system. I infer that he and Mr Weingarth were not in a position to fully understand the information provided by their patent attorney. It seems to me far more likely that the patent attorney provided Mr Rokos and Mr Weingarth with information regarding their options, including the option to make amendments, and they simply misunderstood the information and formed the view that a commercially useful patent could not be obtained.
I am satisfied that the applicants had an intention to file a PCT application as a means to obtain patent protection in Australia. I am also satisfied that Mr Rokos and Mr Weingarth misunderstood the advice provided by their patent attorney. Their misunderstanding was the kind of flawed mental function or faulty reflection that is recognised in the cases as an error. The misunderstanding caused Mr Rokos and Mr Weingarth to decide not to file an application. When Mr Rokos became aware of the error, he acted quickly to cause an application to be filed. I am satisfied that an extension of time is appropriate in this case. The opposition is unsuccessful.
Costs
In this case the opponent has been unsuccessful. I see no reason why the applicants should not have their costs.
Dr S.D. Barker
Deputy Commissioner of Patents
0
8
0