Peter John Ward v Embrey Attachments and the Stanley Works - [2008] APO 17

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Patent: 770238 in the name of Peter John Ward

Title : Cutting or Crushing Apparatus

Action: Oppositions by Embrey Attachments Pty Ltd and The Stanley Works to the patentee’s application under section 223 for an extension of time to file search results under section 45(3) and to a request for leave to amend under section 104.

Decision : Issued 12 June 2008

Abstract

Section 223 extension of time granted.

The patentee has provided a full and frank disclosure to establish a causative error to enliven section 223. Their agent’s failure to implement a system for monitoring foreign applications with corresponding Australian applications meant that there was no warning to alert practitioners to forward foreign search results to the Australian patent office to comply with section 45(3). The patentee only became aware of this failure with the Commissioner’s letter of 4 May 2006 and took steps shortly after to apply under section 223 for an extension of time.

Section 45(3) contemplates that foreign search results can be provided after grant and therefore there is a real purpose to the extension. While it is a lengthy extension, the public always had access to the material and could have challenged the patent at any stage. The public interest is therefore not as disadvantaged as Embrey has alleged. In contrast the patentee would be severely disadvantaged because the provisions of section 102(2C) preclude amendments to avoid prior art which was not disclosed under section 45(3).

Section 45(3) was an important change to the Patents Act and the NZ agent should have instigated a system to ensure compliance. However his failure to do this was contrary to his client’s intentions who was unaware of the oversight. In such circumstances, the client should not bear the consequences of the agent’s error and the balance of interests is therefore in granting the extension.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent No. 770238 in the name of Peter John Ward and oppositions by Embrey Attachments Pty Ltd and The Stanley Works to the patentee’s application for an extension of time under section 223 to file search results under section 45(3) and to a request for leave to amend under section 104.

BACKGROUND

Patent Application 770238 was filed in the name of Peter John Ward (“Ward”) on 18 August 2000 under the provisions of the PCT claiming priority from two NZ provisional applications (NZ 335930 and 505442 filed on 19 August 1999 and 29 June 2000 respectively). The Australian application entered the national phase on 18 March 2002 and on 3 October 2002, the applicant requested examination. At that time, the applicant also provided some search results to comply with the provisions of section 45(3). These results consisted of an international search report and an international-type search report conducted by the Australian Patent Office as well as an independent search by the applicant through commercial patent databases.

On 5…

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: [2008] APO 17
Decision Date: 12 June 2008

CaseChat Overview and Summary

The parties in this matter were Peter John Ward (the patentee) and two opponents to the patentee's application under section 104 to amend the claims of his Australian patent application 770238 and two subsequent applications under section 223 to extend the time to file search results under section 45(3) of the Patents Act 1990. The opponents were Embrey Attachments Pty Ltd and The Stanley Works. The legal issues before the court were whether there was a causative error to enliven section 223 and whether the Commissioner should exercise her discretion to grant the extension. The court found that there was a causative error to enliven section 223, namely the patentee's NZ agent's failure to implement a system for monitoring foreign applications with corresponding Australian applications which meant that there was no warning to alert practitioners to forward foreign search results to the Australian patent office. The patentee attempted to remedy the problem as soon as he became aware of it from the Commissioner's letter of 4 May 2006. The court found that the balance of discretionary factors was weighted towards granting the extension, in particular that section 45(3) contemplates that foreign search results can be provided after grant and therefore there is a real purpose to the extension. The court granted the patentee an extension of time under section 223 until 29 August 2006 to file search results under section 45(3).

Orders