Timtech Chemicals Pty Ltd v Osmose (Australia) Pty Limited

[2010] APO 4

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 2007101011 and 2007101012 in the name of Osmose (Australia) Pty Limited

Title:          Superficial Treatment for Wood and Wood Products (011)

Envelope Treatment of Wood and Wood Products (012)

Action:Opposition by Timtech Chemicals Pty Ltd to a request to amend the Register under Reg. 10.7(1)(a)(i) by Osmose (Australia) Pty Limited

Decision:          Issued  17 March 2010

Abstract

Clerical Error:  Applicant sought to remove a co-inventor from the Register for reasons of clerical error.  The attorney’s assistant inadvertently transcribed incorrect information into an electronic database.  The error was subsequently transferred to later cases. 

The incorrect entry of data, or incorrect transcription of any kind, which in itself is clearly a clerical error and which is subsequently repeated downstream is a consideration in the operation of Reg 10.7.  That is, an error that arises as a consequence of a clerical error, albeit remotely, is capable of correction.  There is no temporal limitation placed on the operation of Reg 10.7. 

Clerical error established.

Costs:  Costs awarded against Timtech.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Nos. 2007101011 and 2007101012 by Osmose (Australia) Pty Limited and an opposition by Timtech Chemicals Pty Ltd to Osmose’s request to amend the Register under Regulation 10.7 (1)(a)(i) – correcting a clerical error.  As the matters are identical the oppositions are joined into one decision.

BACKGROUND

1. Innovation patent applications 2007101011 and 2007101012 were filed on 17 October 2007 in the name of Osmose (Australia) Pty Limited (hereafter Osmose).  They claim divisional status from 2003302613 (PCT/AU2003/001621) which claims priority from 2002953128.

1. The patents were sealed on 1 November 2007 and certified on 14 January 2008.  A request to remove Kim Gary Watson as a co-inventor by substituting the Patent Request under s104 and correspondingly correcting the register under Reg.10.7(1)(a)(i) was made on 10 September 2008 and advertised for opposition purposes on 25 September 2008. 

1. On 22 December 2008 Timtech Chemicals Pty Ltd (hereafter Timtech) filed a Notice of Opposition to amendment of the patent request under Section 104(4) and to amendment of the register under Reg. 10(7)(4).  The Statement of Grounds and Particulars (SGP) was served on 19 March 2009.  Following a request by Osmose, the opposition under Section 104(4) was dismissed, as amendment of the Patent Request was impossible given the operation of Regulation 10.3(9).  The opposition under Reg 10.7 continued.  Evidence in Support was completed on 18 June 2009 and consisted of 2 Statutory Declarations dated the same made by Mr Mark Llewellyn Egerton (hereafter Egerton declarations), each accompanied by 3 Exhibits. 

1. Osmose completed Evidence in Answer on 30 June 2009 which consisted of a Statutory Declaration made by Mr Michael Molins dated 22 April 2009 (hereafter Molins declaration), accompanied by 2 exhibits.  No Evidence in Reply was served.

1. The matter was heard in Canberra on 17 February 2010 by telephone.  Timtech was represented by Mr Mark Egerton, patent attorney of Fisher Adams Kelly, Brisbane.  Osmose was represented by Mr Michael Molins, patent attorney of Molins & Co., Sydney.

Regulation 10.7 Correction of Register or patent

1. Reg 10.7 permits the correction of the Register or a patent in limited circumstances.  The present request is under Reg 10.7(1)(a)(i).  Reg 10.7(1) reads as follows:

   (1)       The Commissioner may, on a request being made in the approved form, amend:

(a) an entry in the Register for the purposes of:

(i)  correcting a clerical error or an obvious mistake;  or

(ii)  if a name or an address entered in the Register has been changed – changing the name or address; or

(b) a patent for the purposes of correcting a clerical error or an obvious mistake.

1. The leading authority on clerical error is R v Commissioner of Patents;  Ex parte Martin [1953] HCA 67; (1953) 89 CLR 381. Fullagar J at 406 stated that

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

Williams ACJ at 395 put it slightly differently:

A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different.

CHRONOLOGY OF EVENTS

1. The correction of the register was requested in order to rectify an alleged clerical error made when Kim Gary Watson was inadvertently included as an inventor on the patent request.  In the first instance the request for correction relied on the absence of Mr Watson as an inventor from the parent case as sole support for the clerical error.  Evidence in support for Osmose’s claim has since been provided in the form of the Molins declaration.  Mr Molins is the patent attorney responsible for, and having carriage of, the care and conduct of the Osmose family of patents and applications at hand.  Mr Molins is assisted by Ms Robyn Maxwell who prepares, subject to Mr Molin’s review and approval, all of the correspondence and forms for the lodgement of all patent applications filed by Molins & Co.  Much of the Molins declaration details administrative steps taken by Ms Maxwell.  He has described them on her behalf using information provided by her.  The declaration is summarized as follows:

• Ms Maxwell prepared 2007101011 (011) and 2007101012 (012) on-line divisional application forms.
• Both 011 and 012 were based on the complete standard parent application 2003302613 (613) which was in turn based on PCT/AU2003/011621 (621).
• All of the above cases stem from an original provisional application 2002953128 (128).
• In the course of prosecution, Mr Molins asked Osmose about the inventorship of the provisional application and the rest of the 128 family and was advised that the inventor of each member was Javier Romero only.
• The original provisional 128 application was filed with the correct inventorship information, solely in the name of Javier Romero.  The 621 PCT application was also correctly filed solely in the name of Javier Romero.
• After the filing of the 621 PCT application, a new datasheet was made for the 621 file cover (provided as Exhibit 1) which incorrectly provided both Javier Romero and Kim Gary Watson as inventors.
• Ms Maxwell believes that when creating the new datasheet a transcription error occurred when she referred to another PCT case with the same filing date, the same client and a similar number (PCT/AU2003/001620).  The 620 PCT case correctly listed both Javier Romero and Kim Gary Watson as inventors.
• When the standard parent 613 case and its 011 and 012 innovation divisionals were prepared the transcription error was transferred from the 621 datasheet into the computerised database by ticking Kim Gary Watson as an inventor.  The error was carried over into new datasheets for the 3 new applications in due course.
• The 613 standard parent was filed in the correct name because no patent request needed to be generated from the PCT application.  However, the original Notice of Entitlement generated from the database contained the error (provided as Exhibit 2)
• At the time of filing the 011 and 012 divisional applications the error had been transferred to both the physical datasheet and the computer database.  Ms Maxwell used the datasheets as a reference for filing details when applying online and so incorrectly added Kim Gary Watson as an inventor.
• Mr Molins did not notice the addition of the incorrect inventor before filing.

DECISION

1. Osmose have requested the removal of an inventor, Kim Gary Watson from the Register.  This request is predicated on the assertion that a clerical error was made in the prosecution of the patents at hand.  My decision will turn on whether a clerical error has been established.

10.  However, before considering the issue of “clerical error” I would like to briefly address two points made by Timtech in relation to the Evidence in Answer (EIA). 

11.  The first is an assertion that EIA has not been properly served.  Timtech submit that because the Molins declaration that constituted EIA was dated 22 April 2009, before the date of lodgement of Evidence in Support on 18 June 2009, the EIA should be struck out.  I do not agree.  There is no statutory requirement for the declaration to be made later than the EIS.  The content of the EIA is appropriate and was served approximately 2 weeks after service of EIS.  It is considered properly served.

12.  The second is an assertion that by preparing his declaration before receiving the EIS Mr Molins tacitly acknowledged that the initial substantiation of the clerical error made with the request to amend was insufficient.  Again I do not agree.  The SGP is dated 19 March 2009, well before the Molins declaration was made.  The SGP queries the reasons for the clerical error and it is therefore an easy leap for the applicant to prepare a declaration outlining these reasons.  In any case, the EIA was properly served and any perceived insufficiences, whether acknowledged or not, have now been addressed.

Has there been a clerical error? 

13.  The Molins declaration charts the origins of the extra inventor, Mr Watson, being mistakenly added to the Patent Requests of the present cases.  Javier Romero is consistently listed as the sole inventor in the older members of the patent family.  Mr Molins has declared that Ms Maxwell did not refer to these older applications, rather she incorrectly transcribed bibliographic data (two inventors) from a similarly (indeed sequentially) numbered PCT case with the same filing date, also by Osmose.  While regrettable I think this easy enough to do.  This flawed transcription was then easily transferred into subsequent cases via both an electronic database and datasheets. 

14.  The evidence further supports this scenario.  The 621 datasheet provided clearly indicates both Mr Romero and Mr Watson as inventors.  The 613 parent directly derived from the correct 621 PCT application was filed with the correct inventor because no new Patent Request needed to be generated as this is not a requirement for PCT cases.  Because the Notice of Entitlement needed to be generated from the administration system the error can again be seen to be carried through.  Mr Molins has further provided a clear declaration that before filing “my client informed me that the inventor of each member of the 128 family was Javier Romero only”. 

15.  Timtech contend that the Notice of Entitlement filed in support of the 613 parent (exhibit 2) cites both Mr Romero and Mr Watson as inventors, and that therefore the patentee was of the view that Mr Watson was indeed an inventor and that the correction to the register was to rectify an error of fact and not clerical error.  I do not agree.  Since the document is dated 31 May 2005 it is clear that it would have been generated subsequent to the transcription errors being entered into the administration systems. 

16.  Timtech further provide an alternative argument, being that the evidence suggests the amendment to remove Mr Watson as a co-inventor sought to remove a ground of invalidity under section 138(3)(a) due to the fact that Osmose had no entitlement to the invention from Mr Watson and that the amendment to rectify this defect does not constitute correction of a clerical error.  Timtech provide exhibit 3 which is a Notice of Entitlement in support of an unrelated application which states that Mr Watson was an employee of FMC (Chemicals) Pty. Limited (hereafter FMC).  Errors in entitlement are a ground of invalidity, and the correction of inventorship details will remove this invalidity.  Provided the amendment corrects a clerical error then it will be allowable. 

17.  Timtech have provided scant evidence that controverts Osmose’s explanation of clerical error.  What is provided is mere speculation.  I do note that the similarly numbered 620 PCT case lists both Osmose and FMC as applicants, however only Osmose were transcribed as applicants onto the new 621 datasheet.  This appears somewhat inconsistent with the incorrect transfer of the inventors from 620.  I think one would ordinarily expect that if the 620 PCT case were incorrectly used as the source of information for the 621 datasheet then further transcription errors would have occurred, such as in the applicant fields.  However, on balance I believe this to be outweighed by the explanation provided by Osmose and the lack of opposing evidence provided by Timtech.  On the whole, I find the explanation given a reasonable one and that the patentee has provided sufficient information on the source of the error.

18.  But is this a clerical error?  Timtech submit that the Commissioner of Patents should refuse the amendment because “the characteristic of a clerical error is that it arises in the mechanical process of writing or transcribing (R. v The Commissioner of Patents; Ex parteMartin 89 CLR 381)” and that this has not been established. In particular, they submit

That the “database error” described in the Statutory Declaration of Michael Molins did not constitute a clerical error.  The information in the database was correctly transcribed onto the patent requests for each of the Australian patent applications 2007101011 and 2007101012.  The fact that the information was wrong is irrelevant.  No clerical error occurred.  The attorney for the patentee seems to be invoking a section 223 approach to correcting the error.  That is, the attorney is identifying the database error that led to the erroneous listing of Gary Kim Watson as an inventor, rather than the clerical error that itself occurred in the process of preparing the patent request.  No such clerical error occurred in the process of transferring the inventor names to the patent requests.

19.  Timtech appear to be taking a very narrow approach to the meaning of “clerical error” for the purposes of Reg 10.7 in the light of Ex parte Martin [supra].  Ex parte Martin is a long standing authority and may not have specifically contemplated clerical errors arising indirectly from databases or otherwise.  However it would seem absurd to conclude that the incorrect entry of data, or incorrect transcription of any kind, which in itself is clearly a clerical error and which is subsequently repeated downstream is not a consideration in the operation of Reg 10.7.  That is, an error that arises as a consequence of a clerical error, albeit remotely, is capable of correction.  There is no temporal limitation placed on the operation of Reg 10.7. 

20.  I am satisfied that Ms Maxwell’s error in transcribing the inventors from the incorrect PCT application to the datasheets and database constitutes a clerical error for the purposes of Reg 10.7(1)(a)(i).  I am further satisfied that the resulting incorrect listing of the inventors in the present cases 011 and 012 is a direct result of this error and as such also constitutes a clerical error for the purposes of Reg 10.7(1)(a)(i). 

CONCLUSION

21.  Osmose have established the existence of a clerical error under Reg 10.7(1)(a)(i).  I direct that that the Register be amended to remove Gary Kim Watson as an inventor on both 2007101011 and 2007101102.

COSTS

22.  Osmose has successfully argued that the correction to the register be allowed.  In matters before the Commissioner, costs generally follow the event.  In this case, I see no reason to depart from this approach and award costs against Timtech under Schedule 8 of the Patent Regulations.

Nicole Howard
Delegate of the Commissioner of Patents

Patent attorneys for the applicant: Molins &Co, Sydney
Patent attorneys for the opponent   Fisher Adams Kelly, Brisbane: 

17 March 2010