SANDOZ LTD.

[1989] APO 38

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 replace that originally forwarded for the purposes of filing the new application.  A copy of the further letter and the specification enclosed with it is exhibited hereto as Exhibit JLM2.

4.The specification and formal filing papers were prepared for filing by clerks working under my supervision and these papers were despatched to the Patent Office under cover of a letter dated 21st June, 1988.

5.When reviewing this file, after receipt of the lodgement receipt of the application, I noted that the specification forwarded to the Patent Office on 21st June, included the incorrect specification, that is the specification forwarded with our client's original instructions of 26th May, 1988 and not the amended specification forwarded with their letter of 6th June.  I have no recollection as to how the error occurred but it is clear that I did not mark the documents on our file appropriately to indicate that a revised specification had been received and should be filed with the application, and that the specification originally received should be disregarded.

6.Thus the failure to lodge the correct specification was due to an error or omission on my part.  It was clearly the intention of Sandoz Ltd. to file the application with the revised specification."

Mr. Noonan at the hearing said that illness had prevented Ms. Moor from making a further declaration which would clarify this first declaration.  Thus subsequent to the hearing Ms. Moor made another declaration which explained in more detail the statements in paragraph 5 of her first declaration.
Objections and Written Submissions
         The examiner maintained an objection that the amendment cannot be considered to be for the purpose of correcting a clerical error or obvious mistake on the basis of the decision in the case of Farbenfabriken Bayer A.G.'s Application (1971) 40 AOJP 4333.  The examiner also pointed out that the request was not as prescribed because the statement of the reasons for the proposed amendment states the nature of the amendment but does not adequately set out the reason for the amendment.
         The attorney in response said the decision in the Farbenfabriken Bayer case (op. cit.) should not be regarded as authoritative because of the manner in which the Maere case (Maere's Application 1962 RPC 182) is discussed in this decision. The attorney also argued that the failure of the clerk to mark the documents on the file appropriately to indicate that a revised specification had been received was encompassed within the definition of clerical error in the Ex parte Martin case (The Queen v. Commissioner of Patents; Ex parte Martin 89 CLR 381).
         The examiner maintained the objection with respect to the clerical error and pointed out that Maere's case (op. cit.) emphasises that the clerical error can only occur "in" the document itself.  The attorney replied by pointing out that in Maere's case the word "in" occurred in the relevant provision of the British Patents Act whereas section 78(3), which is relevant to the present situation, does not state that the amendment has to be in the specification.
Submissions at the Hearing
         Mr. Noonan said it was Office practice to rely on the Ex Parte Martin case (op. cit.) in relation to clerical error.  However he argued that the judgement in this case should be viewed in the context that the error concerned had to be an error in writing or transcription because the relevant provisions of the Act related to the Register of Patents.  Thus Mr. Noonan submitted that I should not rely on the judgement in the Ex Parte Martin case for a definition of what constitutes a clerical error and instead I should adopt a broad interpretation.  For example he said the term "clerical error" in sub‑section 78(3) should be interpreted to include any error made by a clerk.  Mr. Noonan said that in any case there was an error in the present situation which fell within the definition of a clerical error in the judgement in the Ex Parte Martin case.  He repeated the view expressed in the written submissions that the failure of Ms. Moor to transcribe SANDOZ's instruction regarding the revised and amended specification onto Davies & Collison's file was an error which arose in the mechanical process of writing or transcribing (Ex Parte Martin case supra, page 406).  He also pointed out that the hearing officer in a recent decision had found that the clerical error did not have to be in the document concerned (Application by Behringwerke Aktiengesellschaft 7 IPR 59 at page 63). Mr. Noonan argued that the error in the present situation could be distinguished from that which occurred in the earlier office decisions (Dempster Brothers Inc.'s Application (1974) AOJP 4276 and Berg and Stromberg's Application (1985) APOR 15) because the present error occurred in the actual course of preparation of the specification itself.  Thus he submitted that the complete specification presently on file resulted from a clerical error and therefore the dispensation in sub‑section 78(3) allowed the proposed amended specification to claim new matter.
The Decision
         Sub‑sections 78(1) to (3) read as follows:

"78.(1)An amendment under this Part is not allowable at any time, if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as lodged.

(2)An amendment under this Part of a complete specification or a petty patent specification is not allowable after the specification has become open to public inspection if, as a result of the amendment ‑

(a)in the case of a complete specification ‑ a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; and

(b)in the case of a petty patent specification ‑ the claim of the specification would not in substance fall within the scope of the claim of the specification before amendment.

(3)Sub‑sections (1) and (2) do not apply in respect of an amendment for the purpose of correcting a clerical error or an obvious mistake."

Thus the provisions of sub‑sections 78(1) and (2) do not apply if the amendment is for the purpose of correcting a clerical error or an obvious mistake.  However Mr. Noonan admitted that the present situation did not involve an obvious mistake.  Mr. Noonan did not refer me to any case law with respect to his submission that I should adopt a broader interpretation of what constitutes a clerical error than that adopted by the High Court in the Ex Parte Martin case (loc. cit.) nor have I been able to find any precedents which support his submission.  Therefore I am bound to rely on the judgements in the Ex Parte Martin case with respect to what constitutes a clerical error.  In particular the judgement of Fullagar, J. which reads as follows:

"But the characteristic of a clerical error is not that it is in itself trivial or unimportant, but that it arises in the mechanical process of writing or transcribing."

In the decision in the Behringerwerke case (supra, page 64) the hearing officer relied on the fact that the wording of the present legislation differed from the wording of the relevant legislation considered in the Ex Parte Martin case (loc. cit.) because the words which required the relevant clerical error to be "in" the document to be amended were not present.  The hearing officer concluded that this change of wording allows amendment of a patent to correct a clerical error which took place in the preparation of a declaration, and similarly allows amendment of the Register of Patents to correct such a clerical error.  It does not follow from the decision in the Behringerwerke case, in my opinion, that a similar argument can be applied to an amendment proposed to a specification under section 77.  The judgement in the Ex Parte Martin case (loc. cit.) also provides no guidance as to whether sub‑section 78(3) relates to clerical errors "in" the specification.  However I am clearly of the view that the sub‑section is concerned only with clerical errors arising in the actual course of preparation of the specification itself and which can be directly corrected by amendment of that specification.  Thus the relevant consideration with respect to sub‑section 78(3) is whether the amendment is for the purpose of correcting a clerical error, in other words, the amendment must correct the error which is established to be a "clerical error".
         I now turn to the events which lead to the lodgement of the "wrong" specification.  A letter from SANDOZ which is dated 26 May 1988, instructed Davies & Collison to file a convention application and also enclosed several documents for the preparation of the application.  The documents enclosed included the text of a specification and a schedule which sets out details relating to the basic document, the inventor and the applicant.  The letter also instructed Davies & Collison to file the application one or two days before expiration of the convention year.  Mr. Noonan said that the practice of Davies & Collison was for Ms. Moor to prepare a worksheet from these instructions and to attach it to the file so that a typist‑clerk could prepare the documents for filing.  In a letter dated 6 June 1988 SANDOZ provided further instructions which read as follows:

"We refer to our letter dated May 26, 1988 with instructions for a new patent application.

Attached please find a revised and amended text which should replace in its entirety that originally forwarded for filing.

The new filing should thus be effected using this new version."

Mr. Noonan said it was not unusual for Davies & Collison to receive further instructions close to the proposed lodgement date which resulted in amendments to the specification.  According to Ms. Moor's second declaration her usual procedure in this situation is as follows:

"When a revised specification is received from a foreign client or associate in respect of a new Australian patent application yet to be filed, my usual practice is to clearly mark the specification originally received as "not to be filed".  I also mark the internal worksheet of filing instructions so as to indicate that when the specification is to be filed, the reporting letter to the client or associate should state that the revised specification was filed in accordance with the client's or associate's instructing letter of a specific date.  This internal work sheet contains various instructions and is temporarily retained on the top of the file as a reference for my typist‑clerks and for my own reference when checking the filing papers prepared by one of these clerks."

Ms. Moor failed to follow this procedure in the present situation and according to Mr. Noonan it was then inevitable that the "wrong" specification would be lodged.  Thus, in Mr. Noonan's opinion, the failure to transcribe SANDOZ's instructions on to Davies & Collison's file was the relevant clerical error in the present situation.  I consider there is insufficient evidence of Davies & Collison's office procedures for me to agree that there is a direct causal relationship between the failure to transcribe the instructions onto their file and the lodgement of the "wrong" specification.  In any event the failure to transcribe the instructions onto the Patent Attorney's file is not a clerical error which can be corrected by a proposal to amend the specification.
         I note from exhibit JLM‑2 to Ms. Moor's first declaration that the text which accompanied the letter from SANDOZ dated 6 June 1988 commences with page 1a.  The claims commence on page 15 under the heading "CLAIMS" and conclude on page 17 with the text of claim 13.  Thus the effect of the instructions in the letter dated 6 June 1988 was that Davies & Collison were to complete the text by attaching page 1 to, and formalising the claims pages of, the revised and amended text.  This required the relevant details to be added to a Form 10, the heading on page 15 to be changed to read "THE CLAIMS DEFINING THE INVENTION ARE AS FOLLOWS" and the date and the names of the applicant and its attorneys to be added after claim 13 on page 17.  SANDOZ's instructions were that the revised and amended text should "replace in its entirety that originally forwarded for filing".  I also note that some of the typeface which appears on page 1 and in the date on page 17 of the specification lodged on 21 June 1988 is different to the typeface which is used in the text of that specification.  Thus I conclude that Ms. Moor, and the clerks working under her supervision, inadvertently and contrary to SANDOZ's instructions, attached page 1 to, and formalised the claims pages of the unrevised and unamended text which accompanied the letter dated 26 May 1988.  Ms. Moor, as is to be expected, has no recollection as to how the error occurred, but irrespective of how the error happened, it is this particular error which lead to the lodgement of the complete specification presently on file.
         The hearing officer in the Farbenfabriken Bayer case (op. cit.) was satisfied that a mistake was made in enclosing the same specification with the first pair of instructing letters intended for use in the filing of separate applications for patents in Australia.  However the hearing officer found on the basis of the decision in Maere's Application (op. cit.) that the specification sought to be amended was wrong due to mishandling and that the mistake was not a clerical error.  Thus in the Farbenfabriken Bayer case the attorney responsible for lodgement of the "wrong" specification in Australia merely carried on the original mistake by correctly following the applicant's instructions.  Consequently the hearing officer found that the mistake was not to be found at some point within the specification because the specification as a whole was the mistake.  In contrast the present error occurred in the office of Davies & Collison, who were the attorneys responsible for lodgement of the specification.  Moreover the effect of the present error was that errors were generated on several pages of the specification which was lodged.  In the case of Dempster Brothers Inc.'s Application (op. cit.) the Australian attorney was supplied with the "wrong" specification and "correct" drawings for preparation of a Convention Application.  The hearing officer found that the actual source from which the specification was transcribed was incorrect, misjudgement having been used in selecting it and he said the error was an error due to mishandling.  In Berg and Stromberg's Application (op. cit.) an incorrect English translation of the basic Swedish document was forwarded to Australia by the Swedish patent agents and the Australian patent attorneys prepared and lodged a complete specification which was truly derived from that incorrect translation either directly from the translation or from additional sheets of that translation forwarded by the Swedish patent agents.  The hearing officer found the error was clearly a mishandling error and not a clerical error.  In both these cases the error arose in a document from which the complete specification was prepared whereas the error in the present situation arose in the preparation of the complete specification itself.  Thus in my view the error which was made in the present situation is clearly distinguishable from the mistake and errors which are described in these earlier decisions.  I also note that in all these earlier cases there was no amendment of the specification which would have had the effect of correcting the mistake or error.
         However the error which was made in the present situation will only comply with the requirements of sub‑section 78(3) if it is an amendment for the purpose of correcting a clerical error wherein the error is the kind of clerical error defined by the High Court in the Ex Parte Martin case (loc. cit.).  Fullagar J. with whom the majority of judges in the Ex Parte Martin case agreed, adopted the broadest approach to what constitutes a clerical error (supra, page 406).  Fullagar J. referred to the "New Oxford Dictionary" which defined a clerical error as "an error in writing anything out" and he also referred to "Webster" where the word "clerical" was exemplified by the phrase "clerical error" which was defined as "an error made in copying or writing".  Fullagar J. having noted that the expression "clerical error" was of a somewhat elastic character concluded as follows:

"the characteristic of a clerical error is ... that it arises in the mechanical process of writing or transcribing."

Thus Fullagar J. did not necessarily conclude that a clerical error is an error in writing anything out or an error made in copying or writing but he did conclude that the characteristic of a clerical error is that it arises in the mechanical process of writing or transcribing.  In the context of the Ex Parte Martin case the mechanical process of writing or transcribing is the mechanical act of writing or transcribing on a document and equally, it seems to me, transcribing to generate a fresh document.  In my view a clear instance of an error in such a process occurs where a clerk is instructed to write or transcribe on a particular document but instead, and contrary to instructions, writes or transcribes on a different document.  In the present circumstances Davies & Collison had clear instructions to prepare a specification from the revised and amended text but through inadvertence Ms. Moor, and the clerks working under her supervision, wrote or transcribed on the claims pages of the unrevised and unamended text.  I think this error constitutes a clerical error as defined by the High Court in the Ex Parte Martin case because the mechanical act of writing or transcribing was not performed on the text which Davies & Collison had been instructed to write or transcribe.  The request under section 77 proposes to replace the specification on file with a specification in which the act of writing or transcribing has taken place on the revised and amended text.  Consequently I am satisfied that no objection can be taken to the fact that the specification as proposed to be amended includes new matter because the amendment is for the purpose of correcting what I have found to be a relevant clerical error.

         According to the High Court the Commissioner has a discretion to refuse to allow amendments notwithstanding that they do not contravene the express prohibitions of section 78 (Farbwerke Hoechst Meister Lucius and Bruning v. Commissioner of Patents 123 CLR 654 at page 663). I note a hearing officer in the British Patent Office refused a request to amend what appeared to be a clerical error in a specification because the delay involved between discovery of the error and the request for amendment (12 months) was relevant to earlier opposition proceedings involving the specification (Heberlein and Company A.G.'s Application 1971 FSR 373). However the present clerical error was discovered soon after Davies & Collison received the lodgement receipt for application No. 18194/88 because the section 77 request was made within a month of the date of lodgement of the application. The section 77 request does not give the reasons for the proposed amendment, but merely states the nature of the amendment, thus I am not prepared to advertise the request for opposition purposes (section 82) until SANDOZ's request reflects the reasons for the proposed amendment.

(M. KENDALL)