RESPONDENT. OPPONENT, Patent-Opposition-Specifications-Disconformity-Not open to Commissioner after
acceptance--Discretion of Commissioner-When exercisable-Patents Act 1903- 1933 (No. 21 of 1903-No. 57 of 1933), secs. 42, 65, 86. SYDNEY, April 9, 10;
The provisions of sec. 65 of the Patents Act 1903-1933 prevail against the provisions of sec. 86 of that Act, and, as in infringement actions, SO in revocation proceedings, disconformity between the complete and provisional specifications is not a ground for holding a patent invalid.
Unless there be an amendment after acceptance, disconformity is a matter which is closed by acceptance. The discretionary power conferred upon the Commissioner by sec. 42 of the Patents Act 1903-1933 should be exercised, if at all, before acceptance of the complete specification.
On 27th July 1931 William Taren Tate lodged with the Commis- sioner of Patents an application for letters patent for an invention entitled "Improved apparatus for lining pipes with cementitious material." In the provisional specification which accompanied the application it was stated that the invention had been devised to provide a cheap and simple apparatus for lining pipes and tubes and the like with cement and especially for lining pipes of small bore, and it was particularly useful for lining pipe bends, assuring an even lining irrespective of the radius of the bend that this improved apparatus for lining pipes with cement in its simplest form was constituted of a rod made of a number of short lengths universally knuckled together and each having a plurality of radial arms thereon having bifurcated ends forming bearings for rubber-tyred rollers; the fore end of the rod had an eye or other device for shackling to a hauling cable and the rear end of the rod had affixed thereto a frustro-conical distributor or spreader having a plurality of radial guides protruding from the base rearwardly of the spreader and affixed thereto or to the rod was a frustro-conical lining finisher whose end radii approached nearer equality than the radii of the spreader and the small end of which was entered into the base of the spreader the rollers on the radial arms neatly fitted the bore of an unlined pipe while the base of each spreader and the finisher was the diameter desired of the lined pipe that a cable for drawing the apparatus through the pipe had a plurality of guide shoes thereon spaced at equal distances therealong to keep the cable and the apparatus centrally in the pipe, the guide shoes being constituted of a boss having a plurality of spokes set at an angle to constitute a conical frame the outer edges of which formed rubbing and guiding surfaces that the pipe was lined from the flange end and had a hopper affixed thereto having a delivery chute the same bore as the pipe and having a feeding chute and devices, e.g., a ram, to force cement into the pipe; at the spigot end of the pipe a finishing guide…
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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AGLC
Tate v Haskins [1935] HCA 40
Case
[1935] HCA 40
Decision Date
CaseChat Overview and Summary
This case involved an appeal by William Taren Tate against the Acting Commissioner of Patents' refusal to grant letters patent for an invention described as "Improved apparatus for lining pipes with cementitious material." The dispute arose from a perceived disconformity between Tate's provisional and complete specifications, particularly concerning the inclusion of "dehydration orifices" in the latter. Gerald Haskins, the respondent, had opposed the grant of the patent on grounds of lack of novelty and prior publication.
The High Court was required to determine whether disconformity between a provisional and a complete patent specification, particularly after the complete specification had been accepted and amended, could be a ground for refusing a patent grant at the opposition stage. The court also considered the scope of the Commissioner's discretionary powers under the Patents Act 1903-1933 in relation to such disconformity.
The court held that, under section 65 of the Patents Act 1903-1933, disconformity between the complete and provisional specifications is not a ground for holding a patent invalid. While section 40 requires an examiner to report on whether the invention in the complete specification is substantially the same as that in the provisional, section 42 grants the Commissioner discretion to require amendment, post-date the application, or proceed to acceptance despite any reported disconformity. The court reasoned that this discretion should be exercised *before* the acceptance of the complete specification. Once accepted, and particularly after amendments have been allowed under section 79, disconformity is generally a closed matter, unless it arises from fraud. The Commissioner's refusal to grant the patent on the grounds of disconformity at the opposition stage was therefore considered erroneous.
The appeal was allowed, and the matter was remitted to the Commissioner. The court ordered that the respondent pay the appellant's costs, as well as the Commissioner's taxed costs for his appearance at the appeal hearing.