Pacific Knowledge Systems Pty Ltd
[2011] APO 85
•4 November 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Pacific Knowledge Systems Pty Ltd [2011] APO 85
Patent Application 2009266403
Title:Method and system for generating text
Patent Applicant: Pacific Knowledge Systems Pty Ltd.
Delegate: P M Spann - Deputy Commissioner of Patents
Decision Date: 4 November 2011
Hearing Date: Heard by written submissions
Catchwords: PATENTS – examiner’s objections – requests for leave to amend the specification and other filed documents – whether amendments allowable – whether the specification as proposed to be amended would claim matter not in substance disclosed – whether documents filed in relation to the application constituted the filing of a further complete application – whether documents filed to enter national phase can be amended to make them a patent request - requests for leave to amend refused.
Representation: Patent applicant: Dr M Bates, patent attorney, and Ms J Inge, solicitor, 1 Place Patent Attorneys + Solicitors, Sydney.
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009266403
Title:Method and system for generating text
Patent Applicant: Pacific Knowledge Systems Pty Ltd.
Date of Decision: 4 November 2011
DECISION
I refuse the requests for leave to amend filed on 21 December 2010 and 12 July 2011.
REASONS FOR DECISION
This matter concerns certain requests for leave to amend the patent specification and other documents in relation to the application, whether documents filed in relation to the application constituted the filing of a further complete application and whether I should exercise the Commissioner’s power to refuse the requests pursuant to subsection 104(5) and subregulation 10.4(a).
Background
Patent application 2009266403 is a PCT application. It was filed by Pacific Knowledge Systems Pty Ltd as an international application under the Patent Cooperation Treaty (PCT/AU2009/000134) on 6 February 2009 and claims priority from Australian provisional application 2008903403, filed on 2 July 2008.
On 21 December 2010 the applicant’s attorney, Dr Bates, filed a number of documents. These were a cover sheet, a request for national phase entry in relation to PCT/AU2009/000134, a payment form for the national phase entry fee of $340, a request to amend the complete specification “with the specification, claims and figures attached”, a statement of proposed amendments itemising the substitution of the pages of the description, claims and figures and the substitute pages to which the statement refers.
Notably the request to enter national phase included the unusual statement:
“We have amended this National Phase Entry application to meet the Inventor’s and applicant’s requirements.
Priority for these amendments resides in an additional filing of Australian Provisional Application 2010904545: Method and system for generating text as filed on the 12 October 2010.
Please see the amended claims, specification and figures as National Phase Amendments with the current pending PCT application.”
It is also relevant that the documents filed on 21 December 2010 do not include anything that, on its face, appears to be a patent request (in the approved form or otherwise).
IP Australia processed the national phase entry and treated the proposed amendments as in anticipation of examination. Consequently, once examination was requested, the examiner considered the application and the proposed amendment and reported, in addition to other substantive grounds of objection, that:
“The proposed amendments (items 1 to 3) as a whole is not allowable because, as a result of the amendments, all the claims would claim matter which was not in substance disclosed in the specification as originally filed. As an example, independent claims 1 and 28 now feature ‘derived attribute’ (its definition is found in Table 1 - page 25 of the proposed description), which was not in substance disclosed. As another example, dependent claims 5, 6 and 7 feature ‘text condenser attribute’ (its definition is found in Table 1 - page 26 of the proposed description), which was not in substance disclosed. As yet another example, independent claims 37 and 38 now reference figures that were not in substance disclosed.”
There followed a series of communications between Dr Bates and officers of IP Australia about means of overcoming the objection raised above, including the potential filing of divisional applications. Disagreement has however arisen with Dr Bates as to the understanding of the law as it applies to PCT and divisional applications. On 12 July 2011 he filed a request to amend in the following terms:
“1. Convert Patent Application No. 2009266403 lodged on 21 Dec 2010 for "Method and system for generating text" to a Divisional Application by amending the earlier patent request as follows:
Patent Application No. 2009266403 takes priority from both:
1) PCT/AU2009/000134 which has priority from AU Provisional 2008903403 dated 02.07.2008; and
2) Australian Provisional Application 2010904545 dated 12 October 2010PCT/AU2009/0000134 was alive at the time of filing the earlier request.”
Subsequently on 21 September 2010 he filed a letter that in my view sets out the following contentions:
i.what was filed on 21 December 2010 was a patent request and complete specification that has proceeded as application number 2009266403;
ii.that application is distinct from PCT application PCT/AU2009/000134; and
iii.what is sought is an amendment of 2009266403 so that it claims divisional status from PCT/AU2009/000134.
In response to this letter I advised the applicant that I intended to determine whether the requests for leave to amend filed on 21 December 2010 and 12 July 2011 should be refused and provided the opportunity for the applicant to be heard. The applicant’s attorneys filed its submissions on 10 October 2011. In summary these included:
i.Substantive argument as to why the matter claimed as a result of the proposed amendment is in substance disclosed in the specification as filed;
ii.Argument that the correspondence filed on 21 December 2010 in its totality provided the material particulars required to constitute a “patent request”;
iii.An indication that the request for leave to amend filed on 12 July 2011 was intended to amend the correspondence filed on 21 December 2010 to be a patent request with an accompanied complete specification and claiming divisional status from PCT/AU2009/0000134; and
iv.A proposal to amend the request for leave to amend filed on 12 July 2011 as follows:
“a)replace the text currently appearing In the box following the wording "I request that" with:
i. [I request that] the pages titled Fax, Request for National Phase Entry into Australia, Statement of Proposed Amendments No. 1 lodged on 21 Dec 2010 be replaced with the attached completed Patent Request form (Annexure A), and
ii. the words "National Phase entry for" on the cover page of the patent specification lodged on 21 Dec 2010 be replaced with the words "Divisional application for" Complete Standard Patent from Application No:
PCT/2009/000134
b)The amendments in paragraph 21 a) above are requested in order to convert the correspondence lodged on 21 Dec 2010 to a patent request. The requested amendments also result in the removal of the claim for priority from Australian provisional patent application 2010904545 dated 12 October 2010”
Was a patent request and complete specification filed on 21 December 2010?
10.Subsection 29(1) of the Act provides that a person may apply for a patent by filing, in accordance with the regulations, a patent request and such other documents as are prescribed. Sub-section (4) requires that a request in relation to a complete application be in the approved form and accompanied by a complete specification. A request in the approved form means in a form approved by the Commissioner of Patents. While use of a form prepared by IP Australia is not required, the information content of the standard form is that which the Commissioner has approved and must be complied with. For a patent request this includes the words “patent request” or similar words that indicate that an application for a patent is being made.
11.However, more significantly, section 30 and regulation 3.5 provide that the filing date of an application is the date on which the following information is filed:
(a) information in English that indicates that what is filed is intended to be an application for a patent;
(b) information that allows the identity of the applicant to be established or allows the applicant to be contacted by the Patent Office;
(c) information that appears to be a description.
12.Consequently, if information is not provided which indicates that what is filed is intended to be an application, it follows that what was filed cannot be treated as a patent application and be given a filing date. Here what was filed was clearly not, on any reasonable interpretation, something intended to be an application. It was something very clearly intended to meet the national phase entry requirements of section 89(3) which are necessary for further processing of a PCT application, and a request for leave to amend that application.
13. The best argument put by the applicant’s attorneys appears to be that the material particulars required of a request were met because the name and address of the applicant, an address for service and a patent specification were filed. The flaw in this logic is obvious. The name and address of the applicant and their address for service are common to most Patent Office forms. Similarly specifications and parts of specifications are filed in a number of different circumstances and particularly with requests for leave to amend. It does not mean that such information should be taken as a patent request and certainly cannot be retrospectively treated as such when it later suits the applicant to have the information treated that way. Accordingly I do not find that the information filed by the applicant on 21 December 2010 constituted anything that could be considered a patent application for the purpose of section 29 and for which a filing date could be attributed pursuant to section 30. Since under section 79B and regulation 6A.1 a divisional application must be made under section 29, it should also be clear that a further or divisional application was also not filed on that date.
Can the information filed on 21 December 2010 be amended to make it an application for the purpose of S29?
14.Under section 104 an applicant may, subject to the Act and regulations, ask the Commissioner for leave to amend a patent request, complete specification or any other document for any purpose. Unlike amendments to specifications few substantive restrictions to amendments of other filed documents are explicitly provided in the legislation and they are directed to patent requests. Consequently I am required to consider the fundamental meaning of section 104 and the words “leave to amend”.
15.Looking at the applicant’s submission it is apparent that the applicant’s attorney considers that section 104 provides within the term “amend” an apparently unlimited opportunity to replace a previously filed document with something different and to retain the filing date of the earlier document. This extends, in the latest iteration, to the substitution of a national phase entry request and request for leave to amend with a patent request and complete specification. However it should be obvious that, if this were permitted, it would undermine the fundamental principles of the patent system including, in this case, the circumvention of the filing date provisions of section 30 and associated regulations. I consider such an interpretation of the legislation to be absurd and clearly not its meaning or intent.
16.To “amend” is to alter, to improve or to correct or rectify (Macquarie dictionary). It does not in my view extend to the change or replacement of a document such as to make it something different entirely or, in the present context, something that amounts to the filing of a new document. So, while a letter requesting national phase entry might, for example, be amended to correct an error in the applicant name or the address for service, a change seeking to make it a patent request is not an amendment and is not allowable. It is also the case that if such an amendment was allowable it could not have retrospective effect. It would generally only have effect at the date the Commissioner allowed the amendment. For this reason it is rare that the amendment of a document, other than a patent request or specification, will be necessary or useful. It also means that the attorney’s pursuit of the unusual amendments in this case appear to be wholly futile, both not in being allowable and, in any event, not having the effect that is presumably desired. In this regard I do not understand why, when the need to file a divisional application became apparent, such an application was not filed in the normal way.
17.It follows that I will refuse the request for leave to amend filed on 12 July 2011 either as originally filed, as explained in paragraph 15 of the attorney’s submissions dated 10 October 2011 or as proposed to be amended in those submission. As originally filed it might have been taken simply as a proposed amendment to a patent request to claim divisional status from another application. This type of amendment is generally allowable. However that is predicated on the existence of a patent request that can be amended. Here, as indicated above, no patent request was filed on 21 December 2010 and therefore the amendment also could not be allowed if interpreted this way.
18.If, in the alternative and contrary to the applicant’s submission, the proposed amendment was taken to be to the patent request on file, that is the PCT request filed on 6 February, the proposed amendment of the request might be allowable. However, if so, that amendment would be of no effect since the application would thereby claim divisional status from itself and there would be no further application such as to enliven section 79B. Accordingly an objection to the application would arise on that basis. Such an amendment would also not resolve any issue with the allowability of amendments filed on 21 December 2010.
Would the specification as proposed to be amended claim matter not in substance disclosed?
19.An amendment proposed under section 104 is not allowable according to section 102 if, as the result of the amendment, the specification would claim matter not in substance disclosed in the specification as originally filed. It is perhaps surprising that the applicant, having pursued the course indicated above, has now submitted that the subject matter clamed by the specification as proposed to be amended is in any event disclosed in the specification as filed. More so because of the admission that, “Priority for these amendments resides in an additional filing of Australian Provisional Application 2010904545”, a provisional from which the current application does not claim priority. Nevertheless I will now consider the request for leave to amend filed on 21 December in the light of the objection to allowability raised by the examiner and those submissions.
20.The specification here concerns a method and system for generating text and particularly syntactically correct text for a test report based on information contained in a knowledge base and on the test results. An example is a blood test result prepared for a medical practitioner. Claim 1 of the original specification is in the following terms:
“1. A method of generating information from a plurality of data items, the method comprising the steps of:
populating an aggregate data item with at least one of the plurality of data items; and
generating the information using the aggregate data item. “21.For illustrative purposes claims 1 and 5 as proposed to be amended are:
“1. A method of generating information from a plurality of data items, the method comprising the steps of:
(a) populating an aggregate data item with at least one of the plurality of data items; and
(b) generating the information using the aggregate data item,
wherein the aggregate data item is a form of derived attribute,wherein a derived attribute is a data item constructed from the data items using a formula such that one or more high level concepts is extracted from the data items thereby allowing a condensed volume of more relevant data to be considered in generating the information, and
wherein the method of generating information is performed by a decision support system,
and wherein the information so generated falls into one or more of the following groups:i. textual information;
ii. a machine instruction. “
“5. The method defined by anyone of the preceding claims wherein the derived attribute is one or more of the following:
(a) an aggregate data item;
(b) a text condenser attribute;
(c) any other result of preprocessing data that extracts one or more high level concept data items from a plurality of data items thereby reducing data complexity.”
At page 25 and 26 of the specification as proposed to be amended a table sets out a number of definitions including:
“Derived attribute” - A data item that is not present in the original data presented to the knowledge base for interpretation, but is constructed from this data using some formula.
“Text Condenser Attribute (TCA)” – A new tool in some embodiments that is a form of Derived Attribute that defines a set keywords (or ‘key terms’) along with a set of Key concepts or ‘derived matches’.
22.As indicated above, the examiner raises, as examples, the derived attribute in claims 1 and 26, the text condenser attribute in claims 5, 6 and 7, and omnibus claims 37 and 38 as matter not in substance disclosed. The submissions however point, at least in relation to the “derived attribute” and “text condenser attribute”, to parts of the original specification in which a disclosure is said to be made. For the “derived attribute” this is said to be the statement, “The textural information may be some other decision support outcome derived from the data items” and reference at page 19 to “a derived data item”. This “assigns a value corresponding to the desired report section ordering”. In the case of the “text condenser attribute”, I am told essentially that this is an example of a “derived attribute” and is in substance disclosed because “derived data items” are disclosed.
23.The test to be applied when considering whether a claimed invention is in substance disclosed is that same as when determining whether the claim is “fairly based” (see United-Carr Incorporated's Application [1971] RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353). From Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 it is clear that what is required is a real and reasonably clear disclosure of the claimed invention in the specification [Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [1958] HCA 27; (1958) 100 CLR 5, Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79].
24.While the specification as filed and as proposed to be amended includes generic and conceptual language that is somewhat difficult to construe, my view is that there is clearly not a real and reasonably clear disclosure of the invention now sought to be claimed. In particular the description in the original specification of “aggregate data items” which might fall within the general definition of a “derived attribute” does not thereby disclose the broader class of “derived attribute” with the features and use claimed. Similarly nothing provides descriptive support for the application of a “Text Condenser Attribute” which is very different from the “aggregate data items” and “a derived data item” originally disclosed. Finally I also agree that clearly omnibus claims 37 and 38 would, as a result of the proposed amendment, claim matter not in substance disclosed. Therefore, for at least these reasons, the proposed amendment dated 21 December 2010 is not allowable.
Conclusion
25.I have found that a patent request and complete specification was not filed on 21 December 2010 and that an amendment to convert the documents filed on that date to be a patent request and complete specification is not allowable. Consequently the request for leave to amend filed on 12 July 2011 is not allowable and should be refused.
26.I have also found that the request for leave to amend filed on 21 December is not allowable and consider that I should refuse that request. That is not to say that a further request to amend could not be made to seek to overcome the examiner’s objections as to patentability and, if made, will be considered on its merits.
P M Spann
Deputy Commissioner of Patents
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