NICATOR AB

[1986] APO 33

In the Matter of the Patents Act 1952

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In the Matter of Applications Nos. 79188/82,

79189/82, 79402/82 and 79403/82 for

Patents by NICATOR AB

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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 elsewhere in the building.  He also said that the door to the area of the office in which the French patent specifications are stored had a notice on it which reads as follows:
         "No Admittance ‑ Door to be kept closed at all times."
Thus he asserted that French patent specifications are located in an inaccessible part of the Patent Office and he considered that this location was as inaccessible as the Inner Library of the British Museum (Otto v. Steel (3 RPC 109)).
         Secondly Mr Old argued that the Patent Office had informed Spruson and Ferguson that French applications Nos. 8107907 and 8107909 were not available in the Patent Office library on 5 January, 1982, therefore he considered that the French patents which corresponded to these applications (Nos. 2481443 and 2481442 respectively) were not available in the Patent Office library.  He also asserted that a similar argument applied to French application No. 8107908, which corresponds to French patent No. 2481444, because its application number lies between the application numbers which were the subject of the request from Spruson and Ferguson.  Mr Old then referred to a letter from the Patent Office which reads as follows:

"1.Foreign patent specifications are received and filed in order of their publication number, which in general is different to their applications number.  This is the case for French specifications.

2.Appropriate concordances to obtain the publication number from an application number (such as those produced by INPADOC) are not available until a date somewhat after publication of the relevant specification.

3.Your request of January 1982 was in respect of (inter alia) 2 French patent application numbers.  I am advised that the relevant INPADOC information needed for the identification of the French publication number would not have been available in this Office prior to the end of January 1982.   Consequently it was not possible at the time of your request to determine that the French applications had been published in Australia."

He also referred to another letter from the Patent Office which reads as follows:

"The INPADOC information you are enquiring about is dispatched quarterly from Vienna, Austria, and usually takes between four and six weeks to arrive in our office.  I am unable to say precisely when the information did arrive but I expect it would have been late January or early February 1982."

Mr. Old concluded by stating that the French patent specifications cited by the examiner did not prior publish the present applications because the statement of Lindley L.J. in Harris v Rothwell (4 RPC 225 at page 232) applied to them. This statement reads as follows:

"But if, as in the Plimpton cases and in Otto v. Steel, it be proved that the foreign publication, although in a public library, was not in fact known to be there, the unknown existence of the publication in this country is not fatal to the patent."

Decision
The location within the Office of French patent specifications in late 1981 does not seem particularly important: it has been office practice for many years to advertise in the Official Journal that the Patent Office library is open to the public. It has also been office practice to include in the advertisement the number of the latest French specification and the number of the latest "Bulletin Officiel" held in the Patent Office library on a particular date. The High Court concluded that such an advertisement in the Official Journal is notice to the world at large (Board of Control of Michigan Technological University v. Deputy Commissioner of Patents 40 ALR 577 at page 588); thus the Patent Office advertises the fact that French patent specifications can be viewed by the public. The French patent specifications in the present matter can be distinguished from the book in the Otto v. Steel case. In that case Pearson J. concluded that the book was not accessible to the public because it was kept in a place where the public could not find it easily. However the French patent specifications in the present matter are kept in the very place where everyone in search of them, or in search of information on the subject to which they relate, would expect to find them, and to which he would go for information (Harris v. Rothwell (supra) page 231). Therefore I consider that French patent specifications are available to the public in the Patent Office library irrespective of where the specifications are stored.
        French patent specification Nos. 2481442, 2481443 and 2481444 were perforated with the date they became available for public inspection (23 November, 1981) soon after they were received in the Patent Office.  An advertisement in the Official Journal dated 24 December 1981 advised that the latest French patent specification available in the Patent Office library was No. 2481500.
        It appears that neither Spruson and Ferguson nor the Swedish patent agent knew the French patent number on 24 December, 1981 and so the request lodged by Spruson & Ferguson at that time was based on the French application numbers.  Unfortunately the INPADOC information which listed the patent number corresponding to these application numbers did not arrive in Australia until "late January or early February 1982".  A similar concordance in the French Patent Office "Bulletin Officiel" arrived in the Patent Office on 22 February 1982.  Thus the question I have to decide is whether a French patent specification is available to the public when it is placed in the Patent Office library or whether it is only available to the public when the Patent Office has sufficient information to identify the French patent number from an alternate manner of identifying the specification.
I consider that after 23 November, 1981 a member of the public could have obtained a copy of the French patent specifications if the request had identified the documents by the numbers 2481442, 2481443 or 2481444. In my opinion the response from the Patent Office dated 5 January, 1982 merely demonstrates that there was no means to determine the French patent number from an alternative identification of the specifications and does not demonstrate that the French patent specifications themselves were not available to the public. The fact that Spruson and Ferguson did not know the French patent number seems to me to be irrelevant to the issue of whether these specifications are published. This is because a patent specification is part of public knowledge if it is available from the Patent Office library however unlikely it is to be looked at and irrespective of the language in which it is written (The General Tire and Rubber Co. v. The Firestone Tire and Rubber Co. (1972) RPC 457 at page 482). In the Harris v. Rothwell case the Court of Appeal found that the invention was prior published by two German specifications which had been advertised as open to public inspection in the Patents Journal, a situation similar to the present. In the quotation relied on by Mr Old, Lindley L.J. was contrasting the situation of the German specifications with the situation of foreign books whose availability had not been advertised. Thus I am satisfied that French patent specifications Nos. 2481442, 2481443 and 248144 were published in Australia on 23 November, 1981.
        Mr Old conceded that the subject matter described in the French patent specifications would prior publish the subject matter claimed in the present applications if I found that the French specifications were published on 23 November, 1981.
        Therefore I refuse application Nos. 79188/82, 79189/82, 79402/82 and 79403/82.

(M. KENDALL)