SMITHKLINE BEECHAM PLC
[2000] APO 54
•9 August 2000
OFFICIAL NOTICE
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Application : No. 48821/99 in the name of SmithKline Beecham p.l.c
Title: Novel compound
Action: Objection under s.64(2) of the Patents Act 1990
Decision: Issued 9 August 2000.
Abstract
S.64(1) arises from Art. 4B of the Paris Convention, and removes any doubt (and any related possibility of action by way of prerogative writ) that the validity of conflicting patents is not resolved by reference to who was granted a patent first; rather, it is resolved by other criteria under the Act – particularly those of s.18.
The s.18 criteria do not operate when the priority dates of conflicting applications are the same. Where the inventors are different, s64(1) ensures a valid patent can be granted on both applications – consistent with in re Derings Application.
S.64(2) deals with the special situation of conflicting applications having the same priority date and same inventors – that is, the situation in In re two Applications by Henry Dreyfus – but is not a codification of that decision. In the application of s.64(2):
The criteria for s.64(2) do not rely upon tests developed under the old ‘prior claim’ concepts;
Any situation giving rise to an objection under s.64(2) must be so plainly evident that it is beyond reasonable argument;
To apply s.64(2) it is appropriate to ask the question – if the relevant claims were located in the same specification, would there be redundancy of claiming ? An objection under s.64(2) will only arise if the answer is Yes.
In the present case, there would be no redundancy if the claims were located in the same specification. Therefore no objection under s64(2) arises. Patent directed to be sealed.
PATENTS ACT 1990
DECISION OF A DEPUTY COMMISSIONER OF PATENTS
Re:Petty patent application 48821/99 in the name of SmithKline Beecham p.l.c, and an examiner’s objection under s.64(2) preventing a patent being sealed on the application.
BACKGROUND
This matter concerns an objection raised by an examiner under s.64(2) of the Patents Act 1990. The objection arises in the following way.
On 23 April 1999 the present applicant filed two applications with substantially the same specification, claiming priority from the same UK provisional applications. One of the applications (23928/99) was for a standard patent, and is still pending. The other (23938/99, now 713877) was an application for a petty patent, which has been granted.
On 20 September 1999 the applicant filed the present application for a petty patent as a divisional application based on the application for a standard application. It is common ground that the priority dates of the claims of this application derive from the same priority documents as both the application for a standard patent, and petty patent 713877, and that the inventors for the all are the same.
In the consideration of 48821/99 the examiner raised inter alia an objection under s.64(2), with reference to both 713877 and 23928/99. In response to the examiner’s 3rd notification, the applicant proposed a number of amendments dealing with other matters, and requested the application proceed to acceptance and grant despite the s.64(2) objection. The examiner accepted the application, but maintained the s.64(2) objection.
At this point, there are two matters that require some comment:
23928/99 has not yet been examined, let alone proceeded to the grant of a patent. Accordingly, under the terms of s.64(2) that application cannot be a barrier to the present application proceeding to grant. Thus, while it may have been appropriate to alert the applicant in the first notification to a potential future problem when prosecuting 23928/99, the maintenance of this issue as an objection at this time as against the current application is clearly contrary to the express terms of s.64(2). Prior to the hearing I advised the applicant of this. Otherwise I have not considered that application in this decision.
S.64(2) is considered in the examination of an application [Reg 3.18(2)(e)] – even though the issue is strictly a barrier to the grant of a patent, not to the acceptance of an application. The practice of the Commissioner (at least with respect to standard applications) is to allow the conflicting application to proceed to acceptance on the specific request of the applicant, and deal with the s.64(2) problem prior to sealing – often by way of surrender of the conflicting patent (which usually happens to be a petty patent). In this regard, it must be noted that prior to acceptance there is a right of appeal against decisions of the Commissioner [s.52]. However after acceptance there is no right of appeal as such; only a review pursuant to the AD(JR) Act. The Commissioner’s practice ensures that the applicant proceeds to an environment of reduced appeal rights at their own volition.
In the case of an application for a standard patent, there is a clearly defined period after acceptance for the applicant to deal with a s.64(2) problem. A request that the application be accepted in the face of a s.64(2) problem usually does not carry with it an assumption that if the request is acceded to the patent will be sealed without further consideration.
The situation is somewhat different with applications for petty patents. Grant of a petty patent normally follows directly from acceptance [s.62]. In the present case, the applicant requested the Commissioner to both accept and seal the application. In my view the request assumed that if the Commissioner accepted the application, she would seal it. It was not a request to accept the application, and then deal with the s.64(2) problem. That, together with the loss of appeal rights consequent on acceptance, leads me to conclude it was inappropriate for the application to be accepted with the s.64(2) matter remaining outstanding. Nevertheless, the application has been lawfully accepted; the Commissioner is functus officio with regard to consideration of the application prior to acceptance.
Consequent upon the objection being maintained (at least with respect to petty patent 713877) the matter was set for hearing – which was held in Melbourne on May 2. Mr Lyons of counsel represented the applicant. In brief, his submissions went through the history of the s.64 provisions; sought to establish the policy intent of s.64(2); argued that an objection under s.64(2) arose only in the circumstances of strict identity of claims; and that s.64(2) did not entail a prior claim test.
THE SPECIFICATIONS
The specifications relate to a pharmaceutical composition. Apart from the consistory statements and the statement of claims, the specifications appear to be identical. Mr Lyons conceded this. The issues concerning the s.64(2) issue are clearly apparent from the claims by themselves, which are as follows (in full) for both specifications.
48821/99 (the present application)
A pharmaceutical composition comprising 10, 12.5, 15, 20, 25, 30 or 40 mg of paroxetine methanesulfonate per unit dose, calculated on a free base basis, and a pharmaceutically acceptable carrier.
A composition according to claim 1 comprising 20mg of paroxetine methanesulfonate per unit dose, calculated on a free base basis.
A composition according to claim 1 comprising 30mg of paroxetine methanesulfonate per unit dose, calculated on a free base basis.
Petty patent 713877
A pharmaceutical composition comprising 1 to 200 mg of paroxetine methanesulfonate per unit dose, calculated on a free base basis, and a pharmaceutically acceptable carrier, characterised in that the carrier comprises a disintegrant.
A composition according to claim 1 comprising 10 to 50mg of paroxetine methanesulfonate per unit dose, calculated on a free base basis.
A composition according to claim 1 or 2 in the form of a tablet or capsule.
At this point I observe that there is no strict identity between any of these claims. However:
the specification of 48821/99 includes the statement “preferably the carrier comprises a disintegrant”; and 713877 includes a statement that gives as examples 10, 12.5, 15, 20, 25, 30 or 40 mg, preferably 20 mg. That is, what is claimed in each is stated as being a preferred embodiment in the other.
the specific quantities enumerated in claim 1 of 48821/99 are clearly within the range identified in claim 1 of 713877, and may arguably be in substance equivalent to the range specified in claim 2 of 713877.
claim 1 of 713877 characterises the carrier as a disintegrant, whereas claim 1 of 48821/99 is not so characterised – and my understanding is that disintegrant carriers are well known. [For the purpose of my considerations I think it is useful for me to assume that disintegrant carriers are common general knowledge in the art – on the understanding that if an objection under s.64(2) arises on the basis of this assumption, the validity of my assumption will need to be established.]
DISCUSSION
The present matter concerns the correct interpretation of s.64(2) of the Act. S.64 provides:
64. (1) Subject to this section, where there are 2 or more applications for patents for identical, or substantially identical, inventions, the granting of a patent on one of those applications does not prevent the granting of a patent on any of the other applications.
(2) Where:
(a)a patent application claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor; and
(b)the relevant claim or claims in each of the complete specifications have the same priority date or dates;
a patent cannot be granted on the application.
S.64(2) as been the subject of judicial consideration in 4 reported matters:
Sartas No 1 v Koukourou 30 IPR 479, @505-6
Wimmera Industrial v RGC Mineral 32 IPR 89 @ 93
Wimmera Industrial v RGC Mineral 34 IPR 367 @ 386-9
Great Western Corporation Pty Ltd v Grovehill Pty Ltd 46 IPR 389
The Great Western Decision was concerned with whether or not the earlier patent needed to be a patent in force, and is otherwise of no assistance to the present case. The two Wimmera decisions essentially follow from the Sartas decision. Ryan J, in the second Wimmera decision at pg. 387, alludes to the issues in the present case:
‘There has been considerable debate before me about the extent to which that principle and s.64(2) involve a prohibition on the grant of a second application in which the claims in the specification are “overlapping” as distinct from being completely identical. Gummow J in Sartas No 1 v Koukourou & Partners Pty Ltd [1995] AIPC 91-121; (1994) 30 IPR 479 seemed to favour a more stringent test for the invocation of s.64(2) when he said at AIPC 39,141; IPR 505-6:
‘Section 64 is directed to the commissioner who otherwise would be obliged by s.61 (standard patents) and s.62 (petty patents) to make a grant. As a general proposition, the concurrent existence of two or more applications does not prevent the grant on both of them where the applications are for identical or substantially identical inventions. A somewhat different situation applies where the application before the Commissioner claims an invention the subject of a patent already granted. A grant on the application is not to be made: (i) if the invention claimed in the application is “the same as” the subject of the existing patent; and (ii) if there is the same inventor, and the same priority date of the relevant claim or claims.
‘The phrase in s.64(2) “the same as” may be contrasted with that in s.64(1) “identical, or substantially identical”. In my view, while the same common concept is conveyed by the notions of a claim for an invention that is the same as another invention, and patents for identical inventions, the notion of “substantial identity” falls outside that which is conveyed by the phrase “the same’ in s.64(2). Substantial identity will not be sufficient to render one invention the same as another.’
It is noteworthy that Ryan J considered the issue of whether s.64(2) applied to overlapping claims was not clearly resolved by reference to the Sartas decision. Also, while Ryan J raised the issue, he did not go further than infer that Gummow favoured ‘a more stringent test’.
Subsequent to these decisions the commissioner produced guidelines for dealing with s.64(2) [part 17 of the Manual of Practice and Procedure]. The guidelines in large measure deal with situations involving claims of overlapping scope. Those guidelines state [in part 17.8]:
‘In order for it to apply, sec 64(2) requires that two applications claim the same invention. The test for whether the claims define the same invention is analogous to that used for novelty … - see Sartas No 1 v Koukourou & Partners Pty Ltd, 30 IPR 479 and [1995] AIPC 91-121
‘The test is to compare the claims in each of the respective specifications. There are two possible circumstances in which a sec 64(2) objection will arise. They are
(a)if there is a claim in each of the respective specifications having the same features, either explicitly or implicitly, when construed in the light of common general knowledge; or
(b)if there is a difference between the features of claims of the respective specifications, but the difference is in respect of a non-essential feature of the claim in which the feature occurs.
‘What is required for sec 64(2) to apply is that an invention which is exactly the same is claimed in each claim rather than that each claim be coterminous in the sense of claiming exactly the same alternatives.’
The present case arises because the applicant disagrees with the Commissioner’s approach to applying s.64(2). The applicant argues that to infringe against s.64(2) the claims must be the same – i.e. be coterminous. The examiner argues (following the guidelines) that s.64(2) applies when the claim is the same as an invention that is the subject of a patent, and that this is different to whether there is identity of claims. Ultimately, it is this difference of interpretation that needs to be resolved in the present case.
On a preliminary matter, Mr Lyons submitted that whatever the test for s.64(2) is, it cannot entail a prior claim type test. I agree. It is quite clear that one of the key changes introduced with the 1990 Act was the abolition of the ground of prior claim – it being replaced with the ‘whole of contents novelty’ approach to dealing with conflicting applications. It would be quite inconsistent with this abolition for the body of case law on prior claim to be maintained for the purpose of dealing with s.64(2). Accordingly I consider it both appropriate and necessary to approach the issue of construction of s.64(2) on the basis that ‘prior claim’ tests are not per se involved.
Another issue of relevance derives from a consideration of the appeal rights provided by the Act. The Act does not provide any appeal to the Federal Court, nor right of review by the AAT, for any matter arising under s.64(2). The only avenue to challenge a decision of the Commissioner against a decision under s.64(2) is the Administrative Decisions (Judicial Review) Act, which does not provide a merits review. It seems to me inherent from the lack of substantive appeal or review rights that any situation giving rise to an objection under s.64(2) must be so plainly evident that it is beyond reasonable argument.
History of the provisions
It is appropriate to explore the history of the s.64 provisions to some extent – particularly as Mr Lyons suggested that the provisions were a hang-over from when there was an objection of prior claim, and perhaps had little operative effect given the abolition of prior claim as an objection.
S.64(1) has existed virtually unchanged in Australian legislation since the Patents Act 1903. Indeed, its origin can be traced back to the UK Patents, Designs and Trade Marks Act, 1883, which uses similar wording in s.13. The motive for the provision is best explained by two quotes from Vol. 2 of Frost on Patents (4th edition) 1912.
‘When there were concurrent applications for a patent in respect of the same invention, it was formerly a recognised principle that the patent would be awarded to the inventor who ran quickest through the process and was ready first to obtain the Great Seal.’ (pg. 47)
‘Before the Act of 1883, where there was more than one applicant for a patent for the same invention, the applicant who first obtained the great Seal was held to be entitled to the benefit of it, and the patent of any other applicant, if granted at all, was dated subsequently.’ (pg. 73)
That is, prior to the 1883 Act, conflicting applications were resolved in favour of who was granted the patent first – not who applied first. Interestingly, Article 4B of the Paris Convention of 1883 requires conflicting applications be resolved by reference to priority, not the date of grant. It may thus be recognised that the purpose of s.64(1) is to give effect to the Paris Convention, and to remove any doubt (and any related possibility of action by way of prerogative writ) that the validity of conflicting patents is not resolved by reference to who was granted a patent first; rather, it is resolved by other criteria under the Act – particularly those of s.18. Consequently I do not agree with Mr Lyons’ submission that:
‘It is not, as a general rule, contrary to the policy of the Act, or public policy, that there may be multiple patents with identical claims for this is just what s.64(1) provides for – in the case of different inventors (or applicants) whether the priority dates be the same or different.’
One of the long-standing features of the system of establishing rights by reference to priority date, is the fact that any anticipating event must have occurred before the priority date. Thus, section 18(1)(b) provides:
18. (1) Subject to subsection (2), a patentable invention is an invention that, so far as claimed in any claim:
(b)when compared with the prior art base as it existed before the priority date of that claim:
(i)is novel; and
(ii)involves an inventive step; and
Consequently where there are two applications for the same invention, whichever has the earlier priority date succeeds. The question arises of what happens when two applications for the same invention have the same priority date. In re Dering’s Patent (1879) 13 ChD 393 was such a case, involving applications filed by different persons. In that case the Lord Chancellor found that patents should be granted to both. Relevantly, Earl Cairns LC stated:
‘I will assume now that to a greater or less extent those inventions are identical. Before the six months are out one of the applicants succeeds in getting his letters patent sealed. Now what is the position of the crown? Primâ facie, the crown ought to seal both patents. The contract with each of them on provisional protection was that he should have six months’ protection. Now if it is true that both have acted in good faith, what right have I to confiscate the invention of one because it happens to be identical with the invention of the other? Again, what harm could possibly happen by the seal being affixed to both patents? If one patentee by himself or licensee uses the invention, how can the other prevent him – what can the other say? He can only say, You are infringing my patent. The first would reply, I have a patent of the same date; to which the second would rejoin, My invention was patented before yours. And this statement he can only support by the production of a document bearing the same date as his adversary. It seems to me clear that neither can restrain or interfere with the other. Why should they not have become joint proprietors of this invention by agreement between themselves? I cannot see any reason why they should not, and if so, why they cannot in effect be made co-proprietors by the grant of separate letters patent.’
It may thus be seen that s.64(1), in combination with s18(2), accords with the situation in Dering’s Patent; neither patent is unpatentable under s.18(2), and a patent may validly be granted to both [64(1)].
There is however the special situation of Re two applications by Henry Dreyfus 44 RPC 291. This involved two applications, the first for invention ‘A’, the second for invention ‘B’. Both applications included a claim to A+B. After referring to Dering’s Patent, Inskip SG states (pg 293):
‘That decision is obviously a decision on very different facts from the facts of this case. It is difficult to see what else could have been done in that case. If such a case were to occur today, the Office would be powerless to reveal the contents of an unpublished specification to another applicant and the two grants would have to be made. That is not this case. Here the applicant deliberately filed the two Specifications containing identical claims. It was not done by ignorance or inadvertence, but with the full knowledge and intention.
‘The Patents Acts do not appear to contemplate for a situation such as has arisen in this case and I infer from the absence of provisions that it was not intended to allow one man to have two grants for the same invention. Why should he? If two, why not three? The result would be to cause confusion in matters which ought to be as clear as possible. A patent confers a monopoly. There is no sense in saying twice over that a man is to have a monopoly in respect of one and the same invention.’
Arrow Electric Switches Ld 61 RPC 1 involved a situation where the Dreyfus objection was said to apply. It concerned two applications related with one being a divisional of the other. The applications related to a novel switch, and a novel method of operating switches. Referring to these as ‘A’ and ‘B’, the situation involved one application containing claims to A, and A+B, and the other application containing claims to B. Morton J rejected the proposition that the situation was analogous to Dreyfus, as there was no claim in the second application to A+B . He stated
‘The parallel to the Dreyfus case would have been if in the present case the applicants had included a claim to the switch plus the operating means in both of their specifications.’
He went on to state”
‘It is true that if patents are granted on both specifications in their present form, and if any member of the public uses the switch plus operating means, he will be liable to an action for infringement under two separate patents. The same result would have followed even if claim 2 [ie the claim to A+B] had been struck out of the parent specification, and if a man chooses to use two patented articles without any licence, I think he has brought his fate upon himself if he exposes himself to an action under two separate patents.’
It has been suggested that s.64(2) is a codification of the Dreyfus situation. However I am unaware of any documentation associated with the implementation of the 1990 Act that would support this speculation. In any event, it is important to note that the ratio of the Dreyfus decision is predicated on the absence of relevant provisions in the Act, which is not the case with the Patents Act 1990. That is, while some may think that the Dreyfus decision gives a historical perspective to the existence of s.64(2), it is not determinative of that provision. It is also interesting to note that the situations in Dreyfus and Arrow Electric Switches both involved two distinctly different ‘inventions’ – in Dreyfus, two different processes; in Arrow Electric Switches, a switch and a process – which might be referred to A and B. In both cases the issue was centred on claims to A+B in both specifications – that is, claims of identical scope. In this regard, the present claims are not analogous to the factual circumstances of either case. In my view the Dreyfus and Arrow Electric Switches are of no assistance in interpreting s.64(2); I need to interpret the provision solely in the context of the Act, and the aforementioned decisions of the Federal Court.
Statutory provisions
As indicated above, the critical issue is the meaning of the phrase an invention that is the subject of a patent. The word subject has many definitions [the Macquarie Dictionary lists 27 primary meanings], and depending on the context could refer to something that is within scope, or could be a reference to the whole scope. This issue is fundamental to determining the scope of s.64(2). If it is a reference to ‘within the scope’, it will be appropriate to analyse the respective claims (having regard to common general knowledge) and ask whether differences relate to essential features. If it is a reference to ‘whole of scope’ the objection will necessarily be limited to a strict comparison of the claims – that is, whether the claims are redundant. Accordingly it is appropriate to review the Act vis-à-vis how similar phrases are used in the Act, noting that the phrase is not per se used elsewhere in the Act.
There are several provisions that refer to invention, particularly with some association with the words the subject of:
26(1) Objection cannot be taken … merely because the specification claims an invention that is not the subject of the request…. [This provision is associated with the criteria for allowability of amendments (s.102), and the consequences if an amendment is nevertheless allowed (s.114 relates).]
40(2)(b) A complete specification must … end with a claim or claims defining the invention. Here invention is used in the singular, even in the context of plural claims. That is, invention is associated with the full scope of a claim – not something falling within the scope.
40(4) The claims must relate to one invention only. Assuming this is complied with, there can only be one invention that is claimed – even if there are multiple claims. Again, invention as used here is inconsistent with being something that falls within the scope of a claim – as distinct from the full scope of a claim.
43(3) Where a claim defines more than one form of an invention, then, for the purposes of determining the priority date of the claim, it must be treated as if it were a separate claim for each form of the invention that is defined. Interestingly, this allows for a claim to define plural forms of an invention – with there still being only one invention. Again, invention as used here is inconsistent with being something that falls within the scope of a claim – as distinct from the full scope of a claim.
144(4) It is a defence .. that the patented invention is … the subject of a contract…’ clearly uses the subject of in the context of something falling within the ambit of the contract – not necessarily the whole scope of the contract.
171(1) The Governor General may direct that a patent, or an invention that is the subject of a patent application, be acquired. (See also the Dictionary definition of Compensable person). This provision provides a difference concerned with whether or not a patent is involved. Prima facie, this recognises that an application might contain more than one invention, but a patent should not.
Dictionary: "invention" means any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies, and includes an alleged invention. With respect to the subject of, this definition is does not, by itself, provide much assistance. However s40(2)(b) requires there be claims which define the invention. Combining these provisions, the subject of letters patent is that which is defined by the claims.
Having regard to these provisions (and particularly ss.40 and 43), it seems to me that the phrase an invention that is the subject of a patent is a reference to the claims simpliciter of the patent, and not to entities that fall within the scope of the claims.
I also note that the practice of the Commissioner was apparently based on the premise that the test for ‘same invention’ under s.64(2) “is analogous to that used for novelty”. However s.18(1), in specifying the patentability criteria, provides:
“… a patentable invention is an invention that, so far as claimed in any claim:…”
This phrase does not refer to an invention ‘the subject of’ the application or patent – but to an invention so far as claimed in any claim. This difference in wording supports a conclusion that the s.64(2) test of ‘same invention’ is not analogous to the novelty test.
Accordingly, for the purpose of s64(2) I do not believe it is appropriate to undertake a detailed analysis of the claims and enquire whether any differences relate to essential features, or to common general knowledge. Rather, I think the application of s.64(2) is reduced to the question: if the claims of the two specifications were located in the same specification, would there be redundancy of claiming ?
In reaching this conclusion, I note that it is consistent with ‘a more stringent approach’ as favoured by Gummow J (Ryan J, supra). Deciding s.64(2) matters without detailed claims analysis of essential features and common general knowledge is also consistent with the lack of appeal rights against decisions of the Commissioner under s.64(2), and with the abolition of prior claiming. Additionally, I note that the redundancy test is consistent with the factual situations in Dreyfus and Arrow Electric Switches, and that the public interest issues (especially the effects on third parties and licensees) as discussed in Dering’s Application, Dreyfus, and Arrow Electric Switches, are dealt with.
From this discussion I conclude as follows:
The criteria for s.64(2) do not rely upon tests developed under the old ‘prior claim’ concepts;
Any situation giving rise to an objection under s.64(2) must be so plainly evident that it is beyond reasonable argument;
To apply s.64(2) it is appropriate to ask the question – if the relevant claims were located in the same specification, would there be redundancy of claiming? An objection under s.64(2) will only arise if the answer is Yes.
APPLICATION TO THE PRESENT CLAIMS.
I now need to decide whether an objection under s.64(2) applies to the present application.. If the claims of the present application (48821/99) and the claims of Patent 713877 were located in the same specification, I am satisfied there would be no redundancy in the claims - there being no claims of identical scope. Accordingly I find there is no objection under s.64(2) to the sealing of a patent of application 48821/99. I direct a petty patent be sealed on the application.
D Herald
Deputy Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave (Melbourne)
0