Tate v Haskins

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.