ROCCO CARTELLA

[1987] APO 37

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 45118/85 in the Name of ROCCO CARTELLA

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In the Matter of an Application for an Extension of Time under Section 160(2) in which to Lodge a Complete Specification.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
Background
         Application No. PG6044, which was accompanied by a provisional specification, is entitled "Self Closing Hinge System" and was lodged on 17 July, 1984.  On 17 July, 1985 G.R. Cullen & Co., the attorney representing ROCCO CARTELLA, lodged a letter which identified the above number and which also stated that a complete specification was attached.  The completed application was then given the number 45118/85.  Subsequently on 24 June, 1987 the applicant lodged an application for extension of time under sub‑
section 160(2) for a period of 24 months within which to effect completion of patent application No. PG6044 by lodgement of a substitute complete specification, the latter accompanying the application for extension.
         The delegate of the Commissioner refused to allow the  extension and the applicant was offered an opportunity to be heard.  The hearing took place in Brisbane on 15 September, 1987 and was attended by Mr. C.H. Friemann of G.R. Cullen & Co.

The Application under Section 160
         The application under section 160 is supported by a statutory declaration made by Robin Thomas Kelly, patent attorney of G.R. Cullen & Co., who represents ROCCO CARTELLA.
         Mr. Kelly declares that on 13 July, 1984 he had a conference with his client in respect of a modification to application No. 79570/82 (now patent No. 545403).  The modification was not described in the specification of application No. 79570/82 and hence application No. PG6044 accompanied by a provisional specification was lodged on 17 July, 1984 to cover this modification.  Exhibit A to the declaration is a letter from Mr. Kelly to his client which concerns the conference and subsequent actions.
         Following a further conference with his client, which was also attended by Mr. H. Eichberger of G.R. Cullen & Co., on or around 10 July, 1985 Mr. Kelly declares that it was considered appropriate to lodge a further application under section 51 in respect of application No. 79570/82.  Exhibit C is a copy of a letter dated 23 July, 1985 which is from Mr. Kelly to his client in respect of the further application.
         The declaration continues as follows:

"I also received instructions to complete Provisional Application PG 6044 as set out in the letter of July 13, 1985."

I presume Mr. Kelly received these instructions at the conference on or about 10 July, 1985 because the letter dated 23 July, 1985 does not refer to earlier correspondence from ROCCO CARTELLA but does refer to the fact that it was appropriate to file a complete after provisional specification which was based on application No. PG6044.
         The section 51 application which was lodged on 16 July, 1985, became application No. 45071/85 and the complete after provisional specification is the complete specification of application No. 45118/85, i.e. the subject application.
         Mr. Kelly states that on 23 June, 1987 he had another conference with his client to discuss an official report which had been issued in relation to application No. 45071/85.  During this conference application No. 45118/85 was also discussed and upon perusal of the file of the latter Mr. Kelly noted that the complete specification filed in respect of completion of PG6044 did not correspond to the specification which he says he had instructed his secretary to type and file.  Exhibit E is a copy of provisional specification No. PG6044 which includes hand written amendments and eight hand written claims and which Mr. Kelly declares is the complete specification he instructed his secretary to type and file.
         Mr. Kelly, in another statutory declaration, points out that, apart from one page, exhibit E consists of the original pages from his file, and he attaches to this declaration the remaining original page.
         The last letter to the attorney expressing the Office position reads as follows:

"The application has now been fully considered, and the delegate of the Commissioner is not prepared to allow the application for the following reasons:

.S.160(2)(a) deals, inter alia, with the situation where by reason of an error or omission an act or step in relation to an application for a patent required to be done or taken within a certain time has not been so done or taken;

.here, there is clearly an application for a patent made by lodgement of a provisional specification (PG6044) on 17 July 1984;

.on the basis of the evidence lodged, there would appear to have been an error made, but not in relation to taking the act or step within the certain time, as provided by S.41(1);

.thus on 17 July 1985, within that certain time a complete specification was lodged,

which as far as the Attorney, the applicant and the Commissioner was concerned, completed the application (now 45118/85), thus avoiding lapsing provisions of s.41(2);

.the fact that the CAP lodged might differ in some respects from that which the applicant might have originally chosen to lodge is not relevant to the fact that the act or step in relation to the application for a patent was taken within the certain time, and was clearly accepted as having been taken by the Commissioner.  Thus there remains no point of applicability of the s.160 application.

The Act does include provisions (s.77 and s.49) whereby complete specifications may be amended, which is in fact, what is sought to be done in the present case.

The Applicant is entitled to be heard on the above matter upon application, or a decision on the written record may be requested."

In a letter dated 17 August, 1987 the attorney responded to this letter.  I will not summarise the submissions in the attorney's response as their substance was included in the submissions made at the hearing.  That response also contained a request to be heard at the next hearings sessions in Brisbane in the event that the official position was maintained.
Applicability of Section 160 to Section 41
         At the hearing Mr. Friemann argued that sub‑section 41(1) allowed the applicant a discretion to comply with the requirements of the sub‑section or not because it used the phrase "may lodge".  The exercise of this discretion he said, involves a deliberate, positive and conscious action to obtain the entitlement to a priority date which is earlier than the date of lodgement of the complete specification.  He argued that the situation where the "wrong" complete specification was lodged did not represent an exercise of the discretion to obtain an early priority date just as much as the situation where no complete specification was lodged within the 12 month period did not do so.  He concluded therefore that sub‑section 160(2) was applicable to extend the time in sub‑section 41(1) if there was evidence that the complete specification on file precluded an intention to obtain an entitlement to an early priority date.
         The extension of time has been applied for under sub‑section 160(2) of the Patents Act which reads as follows:

"160(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 ... 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."

Section 160 is a remedial section and should be applied where it appears to be applicable unless there is some clear indication to the contrary (Scaniainventor v. Commissioner of Patents 36 ALR 101). The Federal Court in the Scaniainventor case (supra, at page 104) came to the conclusion that "required to be done or taken" in sub‑section 160(2) means requisite or needed to secure an advantage or avoid a disadvantage. In sub‑section 41(1) the applicant may secure the advantage of an entitlement to have the priority date of the claims of the complete after provisional specification determined by sub‑section 45(2) provided the complete specification is lodged within 12 months after the date of the application. The Court also commented that it saw no reason why section 160 should not apply to extend the time for lodging a complete specification pursuant to sub‑section 41(1) (see page 105). Consequently, it is the view of the Office that sub‑section 160(2) is applicable to sub‑section 41(1) to extend the time specified therein for the purpose of lodging a complete after provisional specification. Accordingly, it has been Office practice to do so since the aforesaid judgement of the Federal Court issued.
         It may be that sub‑section 160(2) is also applicable to sub‑section 41(1) where a complete after provisional specification has been lodged within the 12 month period but a subsequent check makes it manifestly clear that the "wrong" specification has been lodged, whereby an act or step required to be done or taken within a certain time has not been so done or taken.  For example such a situation would arise if the provisional specification described a particular technology and the complete specification was directed to a quite different technology; clearly the complete specification in such circumstances would preclude any intention of the applicant to obtain an entitlement to an early priority date.  However, this is not a matter which I have to decide as the circumstances presently before me constitute a quite different situation.
Error or Omission/Act or Step
         Having decided that section 160 is available to extend the time specified under section 41, I will now consider whether by reason of an error or omission the act or step required to be done or taken within that time has not been so done or taken.
          Mr. Friemann said that the present situation involved an "error or omission" rather than "circumstances beyond the control of the person concerned" and he stated that the events which caused the "wrong" complete after provisional specification to be lodged were explained in Mr. Kelly's declaration.
         He argued that it was clear from the copies of the various specifications which were exhibited with Mr. Kelly's declaration, that it was never intended to complete application No. PG6044 with the complete specification presently on file.  He pointed out that this specification described and claimed essentially the same invention as the specification of the divisional application (No. 45071/85) which was drafted at about the same time.  In particular Mr. Friemann directed my attention to the fact that complete specification No. 45118/85 describes a "lockable hinge system" which includes a "locking means" whilst this feature is not described in the provisional specification.  He also stated that there was no question that the complete specification which was lodged with the application for an extension of time was not based on the provisional specification No. PG6044.
         In my view the fact that there are similarities between complete specifications Nos. 45071/85 and 45118/85 is not relevant in this action because Mr. Kelly clearly intended the specifications to be similar.  According to Mr. Kelly, application No. 45071/85 is a divisional application to "more concisely define the invention of Specification 79570/82" and application No. PG6044 covers a modification of the invention described in application No. 79570/82.
         A brief perusal of provisional specification No. PG6044 and the complete specification 45118/85 reveals that the claims define a self closing lockable hinge system which includes a "locking means".  I also note that whereas the broadest description in the provisional specification merely describes a self closing hinge system it is apparent that the "slotted sleeve",  described as part of the preferred embodiment, can function as a "locking means".  In my opinion, the differences between the broadest description in the provisional specification and the claims of the complete specification are not prima facie evidence that the "wrong" complete specification has been lodged because it is often the case that an applicant intends the specifications to be drafted differently.  In any case, it seems clear in the present circumstances that the disclosure of the complete specification on file is substantially based on the disclosure of the provisional specification PG6044 to the extent that there would be no difficulty in having a statement of claims of the complete specification fairly based in terms of section 40, and fairly based on the provisional specification, thereby entitling those claims to the early priority date.  In addition, I note that when the complete specification was lodged, it was accompanied by a letter signed by Mr. Kelly to the effect that it was being lodged in respect of PG6044.
         Consequently, in terms of sub‑section 160(2)(a), the act or step required to be done or taken within a certain time has been so done or taken.
Commissioner's Discretion
         Even where the terms of sub‑section 160(2) are met by an applicant for an extension, the exercise of the Commissioner's power under the section is discretionary.  A factor relevant to the exercise of such discretionary power concerns the public interest, i.e. whether there will be or may be prejudice to any person by reason of the extended period (Scaniainventor case, supra, at page 105).
The majority of the Administrative Appeals Tribunal (Norman Stibbard v. The Commissioner of Patents 7 IPR 337 at page 340) considered that section 160(2) does not contemplate what amounts effectively to antedating the lodgement of a complete specification so as to effectively defeat the interests of other inventors who have lodged their specifications more promptly.
         In the present circumstance the following information has been advertised to the world at large:

1.Application No. PG6044 was accompanied by a provisional specification entitled "Self Closing Hinge System".

2.Complete after provisional specification No. 45118/85 was lodged within 12 months in respect of PG6044 entitled "Self Closing Hinge System".

3.Complete after provisional specification No. 45118/85 was open to public inspection from 23 January, 1986.

If the present application for an extension of time was allowed it would amount to antedating claimed subject matter, which was not included in the claims of the complete after provisional specification presently on file, pursuant to the provisions of sub‑
section 45(2).  Because the complete specification has been published for a considerable time it seems to me that the antedating could effectively defeat the interests of other inventors who could from 23 January, 1986, legitimately claim the subject matter which is to be antedated.  Thus there may be prejudice to some person by reason of the extended period and this person may protect his interest by taking action under the provisions of sub‑section 160(5) or (6).  Therefore I consider the fact that the presently filed complete specification has been available to the public for a long period of time is a factor that counts against the applicant for the extension of time with regard to the exercise of my discretion in this matter.
Conclusions
         The conclusions apparent in the above discussions are as follows:

(i)the complete specification on file was lodged in respect of application NO. PG6044 and is capable of supporting a statement of claims which would be fairly based both on the complete specification and on the provisional specification and would therefore be entitled to the early priority date,

(ii)the circumstances overall are such that the Commissioner's discretion ought not be favourably exercised.

The first point is an impassable barrier in this action,  as in terms of sub‑section 160(2)(a), clearly the act or step required to be done or taken within a certain time has been so done or taken; thus firstly, the application did not lapse pursuant to sub‑section 41(2), and secondly, the complete specification on file was lodged in respect of application No. PG6044 and is entitled to the early priority (i.e. the date of lodgement of application No. PG6044). Concerning point (ii), I have given reasons earlier why I consider that the Commissioner's discretion should not be favourably exercised here, even if point (i) was not otherwise a barrier.  This is my view notwithstanding the provisions of sub‑sections 160(5) and (6), to which I have previously referred, as I do not think the burden of self protection in the present circumstances should be thrown on to an affected member of the public.
         Consequently I refuse the application under section 160.

(M. KENDALL)

Patent Attorneys for the Applicant:  G.R. Cullen and Co.

OFFICIAL NOTICES
DECISION OF THE COMMISSIONER OF PATENTS

Application:      No. 45118/85, Rocco Cartella

Title:             Self Closing Hinge System

Action:            Application under sub‑section 160(2) to extend the time in sub‑section 41(1) where the "wrong" complete after provisional specification is lodged within the 12 months period.

Decision:         Issued            ; sub‑section 160(2) is applicable to sub‑section 41(1) where the complete specification is lodged outside the 12 month period; the act or step required to be done or taken has been so done or taken; Commissioner's discretion ought not be favourably exercised; application refused.