Supreme Corq

[2001] APO 63

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 61249/00 in the name of Supreme Corq

Title:          Closure for a liquid container

Action:          Hearing in relation to an examiner's notification.

Decision:          Issued             .

Abstract

The applicant filed a petty patent under section 39(1)(b), proceeded to grant with the petty patent, then filed another petty patent application under section 39(2). While the first petty patent was within the scope of the claims of the first filed application, the claims of the second petty patent were not.

The first divisional application complied with the requirements of section 39(1), while the second divisional application complied with the requirements of section 39(2). However, the priority date of the claims is determined under regulation 3.12. Regulation 3.12 sets out that the priority date of a claim is the date that would have been the priority date of the claim if it had been included in the parent application. This involves notionally placing the claims in the parent specification to determine the priority date. In this case, the parent application was filed under the provisions of section 39(1)(b) and the claims would not have satisfied that provision. Therefore the priority date of the claims is the date of filing the parent application, as determined by regulation 3.12(1)(a).

As the claims of the application were found to have a later priority date than the grandparent, but were disclosed in the grandparent, the claims were found to lack novelty.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent Application No. 61249/00 by Supreme Corq; hearing in relation to an examiner's notification.

BACKGROUND

Supreme Corq filed petty patent application 61249/00 ("the application") on 22 September 2000.

The application claims divisional status from petty patent 721157 (44746/99) ("the parent").  The parent was filed on 26 August 1999 and was sealed on 22 June 2000.

Petty patent 721157 in turn claimed divisional status from patent 691497 (67838/94) ("the grandparent").  The grandparent was filed on 5 May 1994, was advertised accepted on 21 May 1998, and was sealed on 14 October 1999.  Patent 691497 claims an earliest priority date of 5 May 1993.

The applicant filed petty patent application 23870/99 on 22 April 1999.  This application was filed as a divisional of patent 691497.  Petty patent 721157 was originally filed as a divisional of this application, but was amended to claim divisional status from 691497 instead.

An examiner issued a first notification on the application on 18 October 2001.  In his first notification, the examiner objected that the claims of the application did not fall within the scope of the claims of the grandparent and were therefore not entitled to the priority date of the grandparent.  As a result, the claims lacked novelty in light of the grandparent.

Following a response from the applicant filed on 3 April 2001, the examiner issued a second notification on 19 April 2001. The examiner maintained his objection in the second notification, giving detailed reasons. The examiner's objections were based on an interpretation of section 39 of the Patents Act 1990 and Regulation 3.12 of the Patents Regulations 1991.

The examiner, in his second notification, allowed the applicant one month to respond to the notification but suggested that, in light of the nature of the invention, the applicant should consider making further representations at a hearing.

The applicant sought a number of extensions of time to respond to the examiner's second notification.  The justification for an extension was the same in each case:

"Due to the nature of the issues raised in the report, the applicant requires further time in which to respond."

Following a further request for an extension of time to respond to the examiner's notification, the Patent Office advised the applicant of the following by letter dated 3 September 2001:

"I refer to the above matter and note your request of 17 August 2001 for further time in which to respond to the Examiner's second notification of 19 April 2001.

As advised by phone, the Commissioner considers it in the public interest to have this matter dealt with finally and expeditiously.  Given the nature of the outstanding objections and the number of extensions previously granted, the Commissioner has set the matter for hearing on 1 November 2001 with a view to refuse the application.  A hearing notice is attached.  Please advise by 29 October 2001 whether you wish to be heard on the matter.

To prevent the application from lapsing in the meantime, an extension of time has been granted until 21 November 2001 to respond to the notification under section 50(2)."

I heard the applicant in Canberra on 1 November 2001.   Mr Paul Jones, patent attorney of Freehills Carter Smith Beadle, represented the applicant.

RELEVANT LAW

The savings provisions relating to petty patents are set out in schedule 2 of the Patents Amendments (Innovation Patents) Act 2000 and in the Patents Regulations. Under these provisions, the old law continues to apply to petty patents, save for certain exceptions that do not appear to be relevant here. The "old law" means the Patents Act 1990, and the regulations made under it, in force immediately before the Patents Amendments (Innovation Patents) Act 2000 commenced.

The application was made under section 39 of the old law:

(1)   Where a complete patent application is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a standard patent or a petty patent for an invention:

(a)        disclosed in the specification filed in respect of the first-mentioned application; and
(b)        where the first-mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal - falling within the scope of the claims of the accepted specification.

(2)A patentee of a petty patent may, in accordance with the regulations, make a further complete application for a petty patent or a standard patent in respect of an invention disclosed in the complete specification filed in respect of the application on which the first-mentioned petty patent was sealed.

Under regulation 3.11(3), a divisional application for a patent under subsection 39(2) of the Act must be made before the end of 3 months after the date of grant of the petty patent first mentioned in the subsection.

Regulation 3.12 of the old regulations sets out the priority dates for divisional applications filed under section 39:

(1)       …, the priority date of a claim of a specification is the earliest of the following dates:
(a)       the date of filing of the specification;
(b)       if the claim is fairly based on matter disclosed in 1 or more priority documents, the date of filing the priority the priority document in which the matter was first disclosed;
(c)       if:

(i)      the specification is a complete specification filed in respect of a divisional application; and

(ii)     the claim is fairly based on matter disclosed in the specification referred to in paragraph 39 (1) (a) or subsection 39 (2) of the Act ("divisional applications");

the date that would have been the priority date of the claim if it had been included in the last-mentioned specification.

…

Similar provisions for calculating the priority date of divisional applications are set out in regulation 3.12 of the new regulations, although the new regulations refer to sections 79B and 79C, which have replaced section 39.

DECISION

The parent (721157) was filed more than 3 months after a notice of acceptance of the grandparent (691497) was published in the Official Journal. Therefore, section 39(1)(b) requires the claims of 721157 to fall within the scope of the claims of 691497. There is presently no dispute that the claims of the parent are disclosed in the grandparent and are within the scope of the claims of the grandparent. The priority date of the claims of the parent is undisputed and is prima facie 5 May 1993.

The application (61259/00) was filed within three months of the petty patent being granted on the parent. Therefore section 39 (2) and regulation 3.11 of the old law are applicable. There is no dispute that the claims of the application are disclosed in the specification of the parent. However, the claims of the application do not fall within the scope of the claims of either the parent or the grandparent.

Mr Jones referred me to Emory University v Biochem Pharma Inc (No 2) 51 IPR 309. In this decision of the Federal Court, Lindgren J held that it was permissible to file a series of divisional applications. Lindgren J also observed that if the effect of section 39 was that the term of the patent could be subverted or that certain time limits could be subverted, this would not persuade him to construe section 39 differently. Lindgren J held that the words of the provision have a plain meaning to which effect must be given.

Mr Jones argued that the applicant had not subverted anything here. Section 39(2) was a specific provision that dealt with a divisional from a granted petty patent and the applicant had met the test set out in that provision and in regulation 3.11. He argued that section 39(1) was not applicable here, as it dealt only with divisionals from patent applications and not from patents. Petty patent 721157 had been filed under the provisions of section 39(1) and had met the requirements therein, while petty patent application 61259/00 had been filed under the provisions of section 39(2) and met those requirements. Emory University v Biochem Pharma clearly allowed for a chain of divisionals, and in this case each divisional application met the relevant test.

Mr Jones argued in the alternative that, if I were to find section 39(1)(b) had been subverted, then that was neither here nor there. Even if an absurd result was produced, if the language of the statute is clear, it is not open to me to read it down. In addition to Emory University v Biochem Pharma, Mr Jones referred me to two other cases on this point.

In Cooper Brookes (Wollongong) Pty Ltd v Commissioner of Taxation (Cth) 147 CLR 297, a decision of the High Court of Australia, Stephen J said (at 310):

“It can never be enough to justify judicial intervention that what has been enacted may seem to a court to lead to an irrational result.  As Lord Reid said in Cramas Properties Ltd v Connaught Fur Trimmings Ltd … ‘Of course we must go by the words of the Act and if they are only capable of one meaning then we must take that meaning however irrational the result.’”

In Commissioner of Police of the Metropolis v Curran [1976] 1 All ER 162, a decision of the House of Lords, Lord Salmon said (at 176):

“However ridiculous and unjust the results of the … Act may be, and this one produces peculiarly ridiculous and unjust results, it has been enacted by Parliament and it is our duty to enforce it.”

Although the examiner has said in his first notification that the claims of any application which is divided from 721157 must fall within the scope of at least one claim of 691497, in my view the correct position is as set out in the examiner’s second notification. The question here is one of priority dates, as determined by section 43 and regulation 3.12. Although the petty patent application may comply with section 39(2), it does not automatically follow that it is entitled to the priority date of the grandparent. In Emory University v Biochem Pharma, each application in the chain of divisional applications met the provisions of section 39(1)(b), and the question of priority date was not at issue.

The specification of petty patent application 61249/00 is a complete specification filed in respect of a divisional application.  Further the claims are fairly based on matter disclosed in the parent specification referred to in subsection 39 (2) of the Act.  Therefore, under regulation 3.12(1)(c), the priority date of the claims is the date that would have been the priority date of the claim if it had been included in the parent specification.

Mr Jones argued that the question of priority dates is solely one of fair basis, and has been since Federation. He argued that it was not a matter of reapplying the test in section 39(1)(b). The claims of the petty patent application were fairly based on both the parent and grandparent patents and were therefore entitled to the priority date of the grandparent.

The examiner’s argument, in his second notification, was that if the claims of the petty patent application had been included in the parent, which was filed under the provisions of section 39(1)(b), the claims would not have satisfied that provision. Therefore the priority date of those claims, if they had been included in the parent specification, would be the date of filing of the parent specification as determined by regulation 3.12(1)(a).

I prefer the examiner’s argument to that of Mr Jones.  In my view, the fair basis argument put forward by Mr Jones is too simplistic and does not give full effect to the words used in the regulations.  The regulation deliberately uses the wording that the priority date of the claims is the date that would have been the priority date of the claim if it had been included in the last-mentioned specification.  This involves notionally placing the claims in the parent specification to determine the priority date.  If it was purely a matter of fair basis, as put by Mr Jones, the drafter could have used similar language to that used in regulation 3.12(1)(b), by referring to the date of filing of the document in which the matter was first disclosed.

Despite the applicant's argument that an absurd result would not allow me to read down the clear meaning of the statute, Mr Jones argued that the examiner's interpretation of the law would itself produce an absurd result.  If I followed the examiner’s argument, the result would be that the date of the patent is earlier than the priority date of the claims.  Regulation 6.3 (f) and (g) of the old regulations determine the date of the patent as follows:

(f)for a patent granted on a divisional application made under subsection 39 (1) of the Act, the earlier of:

(i)the date of the patent of the first-mentioned application referred to in subsection 39 (1) of the Act; or

(ii)the date that would be the date of the patent if a patent had been granted on that first-mentioned application; or

(iii)if that first-mentioned application was itself a divisional application or was amended to be a divisional application before filing the later application — the date that would be the date of the patent if a patent had been granted on the divisional application;

(g)for a patent granted on a divisional application made under subsection 39 (2) of the Act — the date of the first-mentioned petty patent referred to in that subsection.

These regulations were introduced in the Patents Amendment Regulations 1999 (No. 3) 1999 No. 261.  The explanatory statement for this amendment to the regulations states:

"Item 2 of Schedule 2 substitutes existing paragraph 6.3(f) with new paragraph 6.3(f) to provide that the date of a divisional patent will be the date of filing of the first application in a chain of divisional applications. The existing regulation uses an evidentiary test, which has led to some uncertainty. The new regulation removes the uncertainty by replacing the evidentiary test with an objective means of determining the date of the divisional patent."

The "existing regulation 6.3(f)" referred to in the explanatory statement sets out that the date of the patent as follows:

"(f)      in the case of a patent granted on a divisional application - the date of filing of the complete specification in which the invention that is the subject of the application was first disclosed."

The main effect of regulation 6.3(f) and (g) is that the date of the patent of a divisional of a divisional will always be the date of the first application in the chain of divisional applications.

I am not convinced by the applicant's argument regarding the priority date being later than the date of the patent.  There are many circumstances possible under the Act and Regulations where a specification may include claims having a priority date later than the date of the patent.  Section 43 of the Act specifically allows for a specification to include claims having different priority dates.  Section 114 and regulation 3.14 are other provisions that allow for a priority date later than the date of the patent.  The present situation is merely another circumstance where the priority date may be later than the date of the patent.

In my view, my findings do not give rise to any inconsistency between the Act and the Regulations. Rather, they give effect to the plain meanings of subsections 39(1) and 39(2), while preventing any subversion of subsection 39(1)(b). It appears that the applicant has tried to get around the requirements of section 39(1)(b) by filing a petty patent under section 39(1)(b), proceeding to grant with the petty patent, then filing another petty patent application under section 39(2). If I were to accept the applicant's interpretation of the law, it would in effect make section 39(1)(b) obsolete as it could be circumvented in the manner attempted here by the applicant. While I note the applicant's submissions regarding an irrational result, for the reasons above I believe the clear meaning of the Act and Regulations give effect to section 39(1)(b).

Petty patent 721157, which was filed as a divisional application of patent 691497, complies with the requirements of section 39(1). Petty patent application 61249/00, which was filed as a divisional application of 721157, complies with the requirements of section 39(2). However, the priority date of the claims must be determined in accordance with section 43 and regulation 3.12.

The priority date of the claims of 61249/00 is 26 August 1999, the date of filing the parent application.  This is after the priority date of the claims of grandparent.  It is also after the publication date of the grandparent, which is 10 November 1994.  It follows that the claims of 61249/00 lack novelty in light of patent 691497.  The applicant has not disputed that, if the examiner's interpretation of the law is correct, the claims would lack novelty over the grandparent.

I have upheld the objection taken in the examiner’s second notification.  However, I am of the view that the claims could readily be amended so that they are within the scope of the claims of both the parent and grandparent patents and so be entitled to the earliest priority date of the grandparent.  Therefore I allow the applicant one month from the date of this decision to file amendments aimed at overcoming the objection.  Otherwise, I will refuse the application.

Brendan Bourke
Delegate of the Commissioner of Patents

Patent attorneys for the applicant  :  Freehills Carter Smith Beadle