NICATOR AB - [1986] APO 33

In the Matter of the Patents Act 1952
‑ and ‑

In the Matter of Applications Nos. 79188/82,
79189/82, 79402/82 and 79403/82 for
Patents by NICATOR AB
‑ and ‑

In the Matter of Examiners' Objections thereto.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         I propose to deal with all of the above applications in a single decision because the issue is the same for each application.
Background
         Patent Applications Nos. 79188/82 and 79189/82 were both lodged on 5 January, 1982; both applications are entitled "An Arrangement for Checking Dimensional Accuracy" and each has the date of lodgement as its priority date. Patent Application Nos. 79402/82 and 79403/82 were both lodged on 8 January, 1982; both applications have the date of lodgement as their priority dates and the former application is entitled "Deflection Unit" and the latter application is entitled "An Arrangement for Checking Dimensional Accuracy".
         The examiners in their reports on these applications have maintained objections that the inventions as claimed are prior published by and are not novel in the light of the respective equivalent French patent specifications. The French patent specifications were cited as follows:

79188/82  2481444
         79189/82  2481443
         79402/82  2481442, 2481443, 2481444
         79403/82  2481442
         In written submissions the attorney for the applicant has argued that the French patent specifications did not prior publish the applications because they were not available to the public before the respective priority dates. The applicant subsequently requested hearings on these matters and a hearing was held in Canberra on 29 August, 1986, which was attended by Mr F.P. Old, patent attorney of Spruson and Ferguson.
Submissions
         At the hearing Mr Old explained that a firm of Swedish patent agents had contacted Spruson and Ferguson on 21 December, 1981 asking whether certain Swedish patent applications were published in Australia. In response to this request Spruson and Ferguson sent a telex to the Patent Office on 24 December, 1981 asking for publication dates in Australia of the Swedish patent applications as well as the publication dates for the corresponding patent applications made in other countries.   He pointed out that French applications identified by Nos. 8107907 and 8107909 were included on the list of applications on the Spruson and Ferguson request. The Patent Office replied to Spruson and Ferguson in a form letter dated 5 January, 1982 which stated that none of the patent applications were available in the Patent Office library. Subsequently the Swedish patent agents instructed Spruson and Ferguson to lodge the present non‑convention applications.
         Mr Old said that in the examiners' reports all the French patents were stated to have been available in the Patent Office library on 23 November, 1981. He then submitted two arguments to the effect that none of the French patent specifications were published in Australia prior to the lodgement dates of the present applications because none of the documents were available to the general public.
         Firstly Mr Old pointed out that French patent specifications are not stored in the Patent Office library but are located…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1986] APO 33
Decision Date: 2 October 1986

CaseChat Overview and Summary

In the matter of applications for patents by NICATOR AB, the court addressed objections raised by examiners regarding the novelty of the inventions claimed in four separate applications. The applications, lodged between January 5th and January 8th, 1982, pertained to inventions related to dimensional accuracy checking. The examiners argued that the claimed inventions were not novel due to prior publication in French patent specifications. The applicant contested this, asserting that the French patents were not accessible to the public before the priority dates of the Australian applications.

The primary legal issue before the court was whether the French patent specifications constituted prior publications that could invalidate the Australian applications. The applicant argued that the French specifications were not available to the public, pointing to the location of the documents within the Australian Patent Office and the absence of specific identification information. The applicant relied on precedents suggesting that a publication is not effective if it is not accessible or known to the public.

The court found that the accessibility of French patent specifications within the Patent Office was irrelevant to the issue of publication. It noted that the Patent Office regularly advertised the availability of French specifications and that the public could reasonably be expected to find the specifications in the Patent Office library. The court held that once the French specifications were placed in the library, they were considered published, regardless of whether the specific identification information was immediately available. Consequently, the court ruled that the French specifications were indeed published on November 23, 1981, and thus prior to the Australian applications' priority dates. As a result, the court rejected all four patent applications on the grounds of lack of novelty.

Orders