SANDOZ LTD. - [1989] APO 13

In the Matter of the Patents Act 1952
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In the Matter of Application No. 18194/88 for a Patent by SANDOZ LTD.
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In the Matter of a Request to Amend the Specification under Section 77
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In the Matter of an Examiner's Objections thereto.

DECISION OF AN ACTING SUPERVISING EXAMINER OF PATENTS:
Background
Patent application No. 18194/88 which was lodged on 21 June 1988 in the name of SANDOZ LTD. (SANDOZ) is entitled "Improvements in or Relating to Organic Compounds" and was advertised open for public inspection on 5 January 1989. The application is based on an application made in the Federal Republic of Germany on 23 June 1987. On 19 July 1988 SANDOZ lodged a request under section 77 to amend the complete specification however the examiner maintained an objection that the amendment was not allowable. Consequently the attorney requested a hearing and the matter was heard in Melbourne on 14 February 1989. Mr. G. Noonan, patent attorney of Davies & Collison, represented SANDOZ and he was assisted by Ms. D. Beadle.
The Request
The request to amend the specification under section 77 states the reason for the proposed amendments is as follows:

"To substitute a new specification and claims for those presently on file."

The request was accompanied by statutory declaration made by Jill Lorraine Moor.
The Proposed Amended Specification
Mr. Noonan conceded at the hearing that the specification as proposed to be amended included new matter and therefore the proposed amendment was only allowable if the amendment was for the purpose of correcting a clerical error or an obvious mistake. Consequently for the purpose of this decision there is no need to discuss in detail the changes proposed to the specification. The effect of the changes is to alter the description on pages 8, 12 and 13 so that it refers to the compound as useful in the treatment of Parkinson's disease and to introduce two new claims which define a compound for use as an antiparkinsonian and the use of the compound for the manufacture of a pharmaceutical composition for use in the treatment of Parkinson's disease. I am satisfied that the proposed amendments do not result in the specification not complying with section 40.
The Evidence
Ms. Moor states that she is employed by Davies & Collison as the supervising clerk in charge of Associate filings, that is the filing of Australian patent applications received from overseas associates and clients. She declares as follows:

"2.On 1st June, 1988 my firm received a letter dated 26th May, 1988 from Sandoz Ltd., instructing us to file a new patent application designated by their reference as Case 100‑7300. A copy of the said instructing letter is exhibited hereto as Exhibit JLM1.

3.On 10th June, 1988, my firm received a further letter dated 6th June, 1988 from Sandoz Ltd., which enclosed a revised and amended text of the specification and claims and included instructions that the revised and amended text should…

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

AGLC: SANDOZ LTD. [1989] APO 13
Case: [1989] APO 13
Decision Date: 7 June 1989

CaseChat Overview and Summary

The case involves Sandoz Ltd., which applied for a patent under the Patents Act 1990 (Cth) and subsequently requested to amend the specification. The application, originally lodged on 21 June 1988, pertains to "Improvements in or Relating to Organic Compounds." Sandoz's patent attorneys, Davies & Collison, prepared the specification based on instructions received from Sandoz. However, the incorrect specification was filed due to an error by Ms. Moor, a clerk at Davies & Collison, who failed to update the file with the revised specification received from Sandoz on 6 June 1988. Sandoz argued that this error constituted a clerical error under section 77 of the Act, allowing the amendment of the specification.

The key legal issue was whether the error made by Ms. Moor qualified as a "clerical error" within the meaning of section 78(3) of the Patents Act, which permits amendments to correct such errors. The examiner objected to the amendment, arguing that the error did not occur "in" the document itself as required by the decision in Farbenfabriken Bayer A.G.'s Application (1971) 40 AOJP 4333. Sandoz's attorney contended that the error in the Ex Parte Martin case (The Queen v. Commissioner of Patents; Ex parte Martin 89 CLR 381) should be interpreted broadly and that the failure to mark the file appropriately was a clerical error.

The court found that the error in this case was distinguishable from those in previous cases such as Dempster Brothers Inc.'s Application (1974) AOJP 4276 and Berg and Stromberg's Application (1985) APOR 15, where the errors arose from mishandling or incorrect documents. In this instance, the error occurred in the preparation of the specification itself, where Ms. Moor and the clerks under her supervision inadvertently attached the wrong pages to the claims section. The court held that this constituted a clerical error because it involved an error in the mechanical process of writing or transcribing, as defined by Fullagar J. in the Ex Parte Martin case. Therefore, the amendment was allowable under section 78(3) of the Patents Act.

The court also noted that while the Commissioner has discretion to refuse amendments even if they do not contravene section 78, the delay in this case was minimal, and the reasons for the amendment needed to be adequately stated. Consequently, the amendment request was allowed, subject to the inclusion of the reasons for the proposed amendment.

Orders