Weiss v Lufft - [1941] HCA 19

LUFFT AND OTHERS

RESPONDENTS. Patents-Complete specification-Amendment-Amendment of claimsAmendment of

body of specification to accord therewithPatents Act 1903-1935 (No. 21 of 1903-No. 16 of 1935), secs. 36, 71, 78.

Where an inventor seeks to amend the claims in his specification by disclaim ing some features thereof, it is essential that he should also amend the body of his specification to make it conform with the amended claim. APPEAL from the Deputy Commissioner of Patents.

Adolf Weiss applied for letters patent No. 22525/35 dated 8th May 1935 for an invention entitled " Improvements in and relating MELBOURNE,

to rotary intaglio printing." On 11th September 1937 a request May 15, 16,

for leave to amend the complete specification under sec. 71 of the Patents Act 1903-1935 was left at the Patents Office, the reasons for the request being: 'That it is desired to amend the claims to limit the same to more clearly define the scope of the invention." In accordance with sec. 73 of the Act the request for leave to amend was advertised on 14th October 1937 and was opposed by Ernst Lufft and Stanley Lufft and R. Hoe and Company Incorporated.

The application for leave to amend was heard by the Deputy Commissioner of Patents, who disallowed the amendments.

Weiss appealed to the High Court. The relevant original claims, the amendments sought, the grounds of opposition, and the Deputy Commissioner's reasons for disallowing the amendments, are set out in the judgments hereunder.

Ellis, for the appellant. On the question of "disclaimer, correc- tion, or explanation", the amendments are principally explanations and disclaimers, with a few corrections. In SO far as the appellant

65 CLR 529

has grouped combinations of elements in claims, instead of leaving separate claims for those elements, that is a disclaimer, because it is narrower. As to the question whether the amended claims are "substantially larger or different," on examination each claim is related to, and is taken substantially from, the old claims particular, the "combination" method makes claims narrower, not larger. As to the question of ambiguity, the Deputy Commis- sioner was wrong in taking the view that the presence of irrelevant matter in the 'body " could invalidate the amended claims by pro- ducing ambiguity. It does not matter how widely you put matter in the "body" or "description," provided the claim is limited enough (In re Johnson &Johnson (Great Britain) Ltd. 1 ). If there is superfluous matter in the "body" it harms no-one. The specification should be read as a whole, and the court should not be astute to defeat a patent (Hinks &Son v. Safety Lighting Co. 2 ). The claims themselves are not ambiguous; it is permissible to have a wide claim and successively narrower claims (Halsbury's Laws of England, 2nd ed., vol. 24, p. 550). Cowper v. Paper Sacks Pty. Ltd. and The Commissioner of Patents 3 is distinguishable. If any claim is ambiguous, it does not necessarily affect another (Patents Act 1903-1935, sec. 61).

Dean,…

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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Details

Case: [1941] HCA 19
Decision Date: 4 June 1941

CaseChat Overview and Summary

The case of *Weiss v Lufft* involved an appeal to the High Court of Australia concerning an application to amend the claims of a complete patent specification. The applicant, Adolf Weiss, sought to amend his patent application for "Improvements in and relating to rotary intaglio printing" by limiting the scope of his claims. This application was opposed by Ernst Lufft, Stanley Lufft, and R. Hoe and Company Incorporated, and was subsequently disallowed by the Deputy Commissioner of Patents. Weiss appealed this decision to the High Court.

The primary legal issues before the High Court were whether the proposed amendments to the patent claims were permissible under the *Patents Act 1903-1935*, specifically whether they constituted a disclaimer, correction, or explanation, and crucially, whether they would render the invention substantially larger or different from that originally claimed. The court also considered the issue of ambiguity in the amended claims and the overall coherence between the body of the specification and the claims.

The High Court, in dismissing the appeal, reasoned that while amendments by way of disclaimer are permitted, it is essential that the body of the specification be amended to conform with any narrowed claims. The court found that the original specification was overly broad and detailed, describing a complete printing press when the invention was limited to specific improvements. The proposed amendments, particularly the substitution of original claims 1, 2, and 3 with a new claim 1, were found to be potentially ambiguous and did not adequately disclaim or explain the invention in light of the detailed description. Furthermore, the court held that it was not permissible to amend the claims substantially without also amending the body of the specification to align with the more limited invention now sought to be claimed.

Consequently, the High Court dismissed both the appeal and the cross-appeal. The appellant, Weiss, was ordered to pay the costs of the Deputy Commissioner and the respondents for the appeal.

Orders