NORMAN STIBBARD

[1985] APO 35

In the Matter of the Patents Act 1952 - and - In the Matter of Application No. 43756/85 for Letters Patent by NORMAN STIBBARD - and - In the Matter of an Application under Section 160 to Extend the Time for Lodging the Complete Specification.

 

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Application No. 43756/85 in the name of Norman Stibbard was lodged at the Patent Office on 7 June, 1985, accompanied by a complete specification entitled "A Blind Or Curtain".

The application gave the address for service as:

"C/- Suite 1103, 307 Pitt St. Sydney, NSW 2000".

On 5 November, 1985, Spruson & Ferguson, Patent Attorneys, Sydney, lodged at the Office a notification changing the address for service in their favour.

They also lodged at that time an application made under the provisions of sub- section 160(2)(a) of the Act in terms:

"for an extension of time of four months from 7 February, 1985 to 7 June, 1985 to lodge the application and complete specification in respect of Application No. 43756/85."

That application was accompanied by a statutory declaration made by Norman Stibbard setting out the circumstances in which and grounds upon which the application is based.

On 25 November, 1985, the Senior Clerk Patents sent a letter to Spruson & Ferguson informing them, inter alia, that as the Patents Act does not specify any time limits for lodgement of an application accompanied by a complete specification, there is no "time" to which the provisions of section 160 could be applied. Following discussions between Mr. Fraser Old of Spruson & Ferguson and officers of the Patent Office, the applicant requested a hearing.

The matter was heard 3 December, 1985 at tie Patent Office, Canberra, with Mr. Old representing the applicant.

The Section 160 Application

The circumstances leading to the lodgement of the application under section 160 may be summarised from the statutory declaration of Norman Stibbard (and accompanying exhibits) as follows.

Mr. Stibbard conceived the idea towards the middle of 1984 of a shutter for shopfronts which would have clear portions (preferably formed of polycarbonate). On Monday, 9 July, 1984 he approached a Mr. C.E. Wilkinson (who he understood to be a patent attorney) in order to make arrangements to protect his invention. On (or shortly after), 15 January, 1985 he visited the offices of Mr. Wilkinson in order to sign various documents and to consider for approval a complete specification which the latter had prepared. At this stage I note that the application and declaration forms of 43756/85 have been signed by Mr. Stibbard and are dated 15 January, 1985 whereas the final page of the complete specification is dated 21 January, 1985. Following the signing of the forms, the approval of the complete specification, and the payment of Mr. Wilkinson, Mr. Stibbard expected that the application for a patent would be lodged within a matter of days. The evidence shows that Mr. Stibbard paid by cheque dated 30 January, 1985, which cheque was debited to his account upon presentation on 24 January, following his telephonic approval to honour the cheque. Later Mr. Stibbard discovered that his application for a patent had not been lodged by Mr. Wilkinson until 7 June, 1985. He alleges this to be the result of an error or omission -

"on the part of my agent, Mr. C.E. Wilkinson, who I erroneously believed to be a registered Patent Attorney."

The Submissions

At the hearing, Mr. Old made a number of submissions which I have presented only briefly in the following passages.

Firstly, Mr. Wilkinson, as of 24 January, 1985 was in possession of signed application documents, including the complete specification - he also had been paid by Mr. Stibbard at that time. However, for some reason or other, Mr. Wilkinson did nothing with the documents until 7 June this year - nor did he inform the applicant of his actions, and of the delay in lodgement. In this situation $i ere is-a gross omission, that is, that Mr. Wilkinson simply failed to lodge the application at the time when he had all the means of doing so.

Secondly, insofar as section 160 itself is concerned the Federal Court in Scaniainventor v. The Commissioner of Patents 36 ALR 101 (subsequently approved by the High Court in Australian Paper Manufacturers Ltd. v. CIL Inc. 37 ALR 289) has indicated that the section applies equally to section 41 regarding time for lodging complete after provisional specifications as to section 141, regarding time for lodging convention applications. The Federal Court pointed out that in the former situation the use of section 160 would have the effect of preserving the priority date obtained by filing of the provisional specification.

Notwithstanding the declaratory form of sub-section 141(1), it clearly requires the taking of a step within a specified time. In the present case the specified time is not governed by either section 41 or section 141, but by section 46 when read together with section 36 and sub-section 45(1). Thus section 36 specifies that, subject to the Act, an application dates from the date of lodgement : sub-section 45(1) specifies that subject to the Act, the priority date of a claim of a complete specification is its date of lodgement the relevant part of section 46 specifies that a patent is not invalid by reason only of the publication or use of the invention as claimed on or after the priority date concerned. Therefore whereas the times specified in sections 41 and 141 happen to be 12 months, the time specified in section 46 is one day, and so in order to secure an advantage or avoid a disadvantage, the applicant must lodge his complete specification before or on the date of which the publication or use of the invention in Australia is first carried out. But that is a requirement to do something by a certain time, i.e. the lodgement of the application.

Thirdly, the clear legislative intent of section 160 is to provide a mechanism Whereby the errors or omissions of agents can be corrected, and their Honours inthe Scaniainventor and A.P.M. cases (supra) were obviously of the view that section 160 is a broadly remedial section having applicability unless there is clearly a contrary indication. In this case section 36, sub-section 45(1) and section 46 are not amongst the exclusions set out in sub-section 160(8); consequently section 160 is applicable thereto.

Finally, Mr. Old submitted that in view of the gross omission made by Mr. Wilkinson and the possible consequences thereof to Mr. Stibbard, I should exercise my discretion favourably, giving the benefit of any doubt to the applicant.

Decision

Section 160 is in the following terms:

"160.(1) Where, by reason of an error or omission on the part of an officer or person employed in the Patent Office, an act or step in relation to an application for a patent or in proceedings under this Act (not being proceedinqs in a court) required to be done or taken within a certain time has not been so done or taken, the Commissioner shall extend the time for doing the act or taking the step.

(2) Where, by reason of -

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

(b) circumstances beyond the control of the person concerned, 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.

(3) The time for the doing of an act or the taking of a step may be extended under sub-section (1) or (2) although that time has expired.

(4) Where an application is made under sub-section (2) of this section for an extension of time for more than 3 months, the Commissioner shall advertise the application in the Official Journal.

(5) A person may, as prescribed, oppose the granting of the application.

(6) Where an extension of time is granted under this section, such provisions as are prescribed have effect for Vie protection or compensation of persons who availed themselves, or took definite steps by way of contract or otherwise to avail themselves, of the invention the subject of the application for the patent concerned by reason of the act or step in relation to which the extension was granted not having been done or taken within the time allowed.

(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 (1) of section 52B of this Act."

The question to be answered here is whether the lodgement of an application accompanied by a complete specification (having no basis for priority other than that specified by sub-section 45.(1)) involves what sub-section 160(2) describes as "an act or step in relation to an application for a patent ... required to be done or taken within a certain time". In Australian Paper Manufacturers Ltd. v. CIL Inc. (supra) the majority of the Full Bench of the High Court took the view that this question could be analysed by asking whether such lodgement involves an act or step:

(a) which is "in relation to an application for a patent",

(b) which can be described as to be done or taken "within a certain time", and

(c) which can be said to be "required to be done or taken" within that time.

Paragraph (a) is clearly satisfied : as made eminently clear by the High Court, there need not be a lodged application before any act or step arises to which sub-section 160(2) can apply. That is, the very first act by way of application for a patent in Australia will itself be an "act or step in relation to an application" in the terms of the sub-section.

In the circumstances of the present case, paragraphs (b) and (c) can be dealt with together, since if there is no "certain time" involved, the latter paragraph becomes irrelevant. I cannot agree with Mr. Old's submission that section 46, no matter with which other parts of the Act it is read, specifies a "certain time" for the lodgement of applications accompanied by complete specifications.

It is true that there is advantage to be gained from early lodgement thereof, but there is no certain time within which the Act requires such lodgement to be made. Whether or not the subject matter of such an application has been published or is otherwise not new at its time of lodgement is a matter of fact to be subsequently determined, in no way being related to a requirement that if the subject matter is not new, the application should have been lodged earlier. If Mr. Old's argument is taken to its extreme, an applicant might, for example, remove an objection of prior claiming by the claims of an application of earlier priority, on the basis that as he is obviously seeking a valid patent, and because of the requirements of the Act as set out in section 36, section 46 and sub-section 45(1), he has made an "error" in not lodging his own application at an earlier time, and consequently section 160 is applicable. This, of course, would be ludicrous.

Finally, it seems to me from a reading of the majority judgement of the High Court in the Australian Paper Manufacturers case (supra) and of the unanimous judgement of the Federal Court in the Scaniainventor case (supra) that their Honours were of the clear view that there must be a time limit actually specified by the section of the Act concerned before there can be said to be a "certain time". In this respect I take comfort from the comments of Fox ACJ, Franki and Northrop JJ in their judgement in the latter case:

"An ordinary application for a patent may be made or not; there is no time limit. A convention application is different, it is based on the earlier overseas application, and can only be made by a person who is the applicant there or derives title from him. Section 141(1) is concerned with enabling the overseas applicant to secure in Australia, if he acts during the relevant period, the priority date of his overseas application, if his later application in Australia is "fairly based on matter disclosed in the basic application"."

(See 36 ALR 101 at page 104).

Consequently, I am of the view that section 160 is not applicable in the present circumstances, and I refuse to grant the extension sought.

(J L Roveta)

Supervising Examiner of Patents

20 DEC 1985