[Home] [Databases] [WorldLII] [Search] [Feedback] Administrative Appeals Tribunal of Australia

You are here: 

Re  Norman Stibbard  and the  Commissioner of Patents  [1986] AATA 249 (29 August 1986)

ADMINISTRATIVE APPEALS TRIBUNAL

Re:  NORMAN STIBBARD 
And: THE  COMMISSIONER OF PATENTS 
No. N86/42
AAT No. 2833
Patents

COURT

CATCHWORDS

Words and phrases: "required to be done or taken" "within a certain time"

Patents Act 1952 (Cth.) ss 35, 36, 41, 50, 59, 90, 100, 160, 176

Australian Paper Manufacturers Ltd v C.I.L. Inc [1981] HCA 64; (1981) 148 CLR 551

Scaniainventor v  Commissioner of Patents  [1981] FCA 84; (1981) 36 ALR 101

Lhetovaara v Acting Deputy  Commissioner of Patents  [1981] FCA 218; (1981) 39 ALR 103

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191

In Re Horner (1896) 65 LJ Ch. 694

Ex p. Voisey. In re Knight (1882) 21 Ch.D442

British United Shoe Machinery Co. v A Fussell & Sons Limited (1908) 25 RPC 631

Attorney-General v Adelaide Steamship Co. Ltd (1913) AC 781

Sanofi v Parke Davis Pty Ltd (1983) AIPC 90-112

Re Toyo Pulp Co Ltd and Deputy  Commissioner of Patents  (1978)

HEARING

ORDER

DECISION

2. However, the applicant made an affidavit in which he claimed that he signed an application and a complete specification in respect to the claimed invention on or shortly after 15th January, 1985 and left them with an agent whom he believed to be a patent attorney, with instructions to lodge the same. The applicant received an invoice dated 31st December, 1984 from the agent for the costs of a patent search, the costs of preparing a complete patent specification, patent office fees and other costs amounting to $850, and paid the same by cheque presented 24th January, 1985. The applicant deposed that he presumed the patent application would be lodged within "a matter of days", following the signing of the necessary forms.

3. A letter from the agent to the applicant dated 22nd August, 1985 led the applicant to infer that the patent application was lodged on 7 February, 1985, as explained in paragraph 10 of his affidavit. The applicant claimed that it was an error or omission of the agent that the application was not lodged on that date but rather on 7th June, 1985 and hence claimed that the extension should be granted retrospectively to that date. We were given to understand that the applicant began selling products according to the invention on or about that date and hence his patent application would, if granted, result in the grant of an invalid patent, unless the application under section 160 of the Act succeeded.

4. Neither the Tribunal nor the Patents Office had any evidence, other than that of Mr Stibbard, concerning his dealings with the unregistered agent and this decision proceeds upon the basis of accepting Mr Stibbard's affidavit as to the matters stated therein. It perhaps should be observed that the Tribunal is not entirely satisfied that there was an error or omission on the part of the unregistered agent, rather than on the part of Mr Stibbard in the reliance he placed on the statements made to him. The agent was not a registered patent attorney, but we are content to approach this matter upon the assumption that an error or omission on the part of the applicant or his agent is prima facie established.

5. The question then to be decided is whether or not such omission or error suffices to enable an extension of time to be granted pursuant to section 160(2) of the Act. Section 160(2) of the Act is in the following terms:-

"160.(1) . . .

(2) Where, by reason of -
(a) an error or omission on the part of the
person concerned or of his agent or
attorney; or

(b) circumstances beyond the control of the
person concerned,

an act or step in relation to an application
for a patent or in proceedings under this Act
(not being proceedings in a court) required to
be done or taken within a certain time has not
been so done or taken, the Commissioner may,
upon application by the person concerned, but
subject to this section, extend the time for
doing the act or taking the step."

Australian Paper Manufacturers Ltd v. C.I.L. Inc (1981)
[1981] HCA 64; 148 CLR 551

Scaniainventor v.  Commissioner of Patents  (1981) 36
ALR 101

Lhetovaara v. Acting Deputy  Commissioner of Patents 
[1981] FCA 218; (1981) 39 ALR 103

Parkdale Custom Built Furniture Pty Ltd v. Puxu Pty Ltd
[1982] HCA 44; (1982) 149 CLR 191

In re Horner (1896) 65 LJ Ch 694

Ex p. Voisey. In re Knight (1882) 21 ChD 442,

7. Mr Catterns submitted that for the purposes of section 160(2) of the Act, the step required to be done which was not done, was the step of lodgment of the complete specification, not the application for Letters Patent. He pointed out that pursuant to section 45(1) of the Act priority dates flow from the date of lodgment of the complete specification. Secondly he submitted that for the purposes of section 160(2) of the Act, the words "required to be done" should be interpreted as meaning "required if the applicant wishes to obtain an advantage". Thirdly, he submitted that the words "within a certain time" in the sub-section do not mean a prescribed or a specified time, but mean a time which can be given certainty, a time capable of being calculated or determined, either prospectively or retrospectively. He submitted that the certainty of the time can be established at the time of hearing of the application under section 160 when the Commissioner or his delegate decides if the time is capable of ascertainment. Mr Catterns pointed out that time can be decided in the light of hindsight and on the question of the meaning of a "certain time" referred to the cases of In re Horner and Ex p. Voisey (cited earlier). He also pointed out that section 36 relating to the dates of application commenced with the words "Subject to this Act".

8. Mr Garnsey referred the Tribunal to the Patent Co-operation Treaty and the Paris Convention as evidencing the importance to the international patent system of maintaining the certainty of priority dates. Of course priority dates are of fundamental importance under the patent system and affect the questions of novelty and obviousness arising under sections 59 and 100 of the Act. While the Patent Co-operation Treaty has significance for Part IVA of the Act, Mr Catterns reminded us of the comments of the Federal Court at page 106 in the decision of Scaniainventor (cited earlier), concerning reliance on the terms of the Paris Convention in construing the Act. The Paris Convention has not been enacted as part of the municipal law of the Commonwealth.

9. Counsel for the respondent further submitted that the time postulated on behalf of the applicant was not a "certain time" within the meaning of section 160(2) of the Act nor was there any act or step required to be done or taken by the applicant under the Act in regard to his application for a patent which would ground a successful application. So far as section 36 of the Act was concerned he argued that the words "Subject to this Act" subtending section 36 were apt to cover such questions as the date where cognating is permitted under section 50, and the case of late payment of fees under section 176(3).

10. There is no dispute as to the authority of this Tribunal to review Mr Roveta's decision, a matter considered in Lehtovaara (cited earlier). It may be correct that time may be extended retrospectively so as to confer an earlier priority date than the actual date of lodgment of a complete specification, but we do not find it necessary to decide this, although the extension of time sought in Scaniainventor had a retrospective effect as to priority, but limited to retroactively restoring a priority depending upon a foreign basic application.

11. With all respect to Counsel's carefully presented argument, we are unable to accept the proposition that the step of lodging the complete specification by a date some four months anterior to its actual lodgment was a step required to be done or taken within a certain time within the meaning of section 160(2) of the Act. Section 35 requires the lodgment of a complete or a provisional specification accompanying an application for a standard patent. That happened in this case. Section 41 requires the lodgment of a complete specification to be made in any event within twelve months of the lodgment of the application and provides for lapse of the application if that does not eventuate. However there is no requirement under the Act or conferment of a benefit by the Act or the Regulations which arises due to or in consequence of the failure to lodge a specification at a time anterior to the actual date of lodgment of the application.

12. It is true that a benefit may arise dehors the Act, namely, that the alleged invention will not fail for lack of novelty or obviousness because of prior publication or common general knowledge, but that is not linked with a period provided for in the legislation, but with the promptitude of the alleged inventor to make application and lodge a complete specification.

13. The words of Stephen J., as he then was, in the context of a Convention Application in Australian Paper Manufacturers Ltd v. C.I.L. Inc. (cited earlier), at pages 556-557 bear the limitation expressed above, where he said:-

"Whenever the doing of some act is linked with a period
within which it is to be done it can with perfect
accuracy be described as being required to be done
within that period; the particular consequence
attaching to a failure to do the act within the
specified period is irrelevant to the aptness and
propriety of the use of the word 'required' to link and
explain the connexion between the act and the time
limit. Legislation may provide that an act may only be
done, if at all, within some prescribed period, the
doing of it later being either prohibited or being
declared to be ineffective and a nullity; or again,
where the provision in question confers a benefit, the
doing of the act within the period may be a condition
of obtaining the benefit. But in either case the word
'required' will aptly describe the nature of the link
between the doing of the act and the time for the doing
of it. In the case of provisions of a quite different
nature, prohibiting the doing of a particular act
within a given time, the concept of affirmative
requirement may be inapt; but so long as the provision
is either permissive of the doing of an act or else
confers a benefit or right as a result of doing it,
being in either case linked with a period within which
it is to be done, 'required' can aptly be used."

"But the requirement to which s. 160(2) refers is a
requirement with respect to both the act to be done (or
step to be taken) and the time within which the act is
to be done (or the step is to be taken)".

15. In the Tribunal's opinion the decision under review should be affirmed.

I have had the advantage of reading the reasons for decision of the majority and agree both with them and with the terms of the proposed decision. I would however wish to add a few words concerning the operation of s. 160 of the Act.

2. In Australian Paper Manufacturers Limited v C.I.L. Inc. [1981] HCA 64; (1981) 148 CLR 551, Mr Justice Murphy said:

"It is a reasonable principle of interpretation that
where an Act which grants monopoly rights is ambiguous,
the ambiguity (whether relating to substance or
procedure) should be resolved in favour of the public
and against the extension of monopoly."

4. Mr Justice Murphy had occasion to refer again to the above dictum in Sanofi v Parke Davis Pty. Ltd. (1983) AIPC 90-112. This case concerned an application under s. 90(1) of the Act for an order extending the time within which the appellant might petition for an extension of the patent on the ground of inadequate remuneration. Murphy J said at 38,647:

"I agree with the majority in the Federal Court (Chief
Judge Bowen and Justice Ellicot) that sec. 90 should be
read as conferring jurisdiction to allow further time
to present a petition up to but not beyond the date of
expiration of a patent. The division of opinion in the
courts below on whether sec. 90 authorizes a court to
allow presentation after the patent has expired, shows
that the section is ambiguous."

6. It is true that in both cases Murphy J dissented from the majority, at least so far as their findings went. It would not appear however on a reading of the decisions that the dictum to which I have referred was dissented from by the majority of judges. Certainly it was not necessary to express any such dissent in order to arrive at their results. Mason A-CJ., Wilson and Dawson JJ. in Sanofi would have guarded against any over liberal interpretation of s. 90 by the imposition of appropriate restrictions and conditions in the exercise of the discretion which they found to exist. Implicit here is a recognition that there should not be an unrestricted extension of monopoly. Although different results were achieved, the reasoning of the majority is closer to rather than distant from that of Murphy J. The way in which he has expressed the principle, I would respectfully agree, presents a useful aid to interpretation in cases like the present one.

7. Section 160 has been the subject of extensive judicial examination in recent years. The text writers (see for example Ricketson: The Law of Intellectual Property, 1984, at paragraph 47.62) tell us that it was for a number of years applied liberally by the Commissioner. However this Tribunal in Re Toyo Pulp Co. 2 ALD 177 pointed out deficiencies in the terms of the section which led for a time to more restrictive interpretations. There were proposals for the amendment of the section in the Patents Amendment Bill 1980, particularly in clause 15 of that Bill. A further Bill in 1981 also sought to carry out further improvements. However neither Bill was proceeded with. The two decisions of Australian Paper Manufacturers and Scaniainventor referred to in the majority's reasons have done something to broaden the scope of the application of the section, at least so far as it relates to Convention Patents. In my view, this Tribunal should not take that broadening process any further.

8. The present application turns on the ambiguity of meaning inherent in the phrases "required to be done or taken" and "within a certain time". Although it must be now accepted that the word "required" is to be broadly interpreted to mean "requisite or needed" in order to secure an advantage or to avoid a disadvantage, I agree that such an interpretation must be restricted to requirements within the scope or structure of the Act. To extend it to a need or an advantage outside the Act would be unnecessarily to extend the acquisition of a monopoly and to disadvantage actual or potential competitors (the "lonely inventor" referred to in the majority's reasons). As far as I am aware, not even any of the proposed amendments of s. 160 would have led to such a result.

9. Wide as the Commissioner's power is under the section, extending as it does from steps necessary for the validity of an application to steps necessary for the obtaining of an additional benefit, it cannot be said to extend to steps taken or steps that should have been taken outside the structure of the Act. It can extend only to those cases where an initiating process has come into existence and has been filed, either with the Commissioner in the case of a standard patent, or in the form of a foreign basic application in the case of a Convention Patent. In other words, before there can be an act or step in relation to an application for a patent, that application must exist. It does not exist (at any rate for the purposes of s. 160) until either of the initiating steps to which I have referred has taken place. In the present circumstances I do not consider that the Commissioner would have jurisdiction to proceed and accordingly no question of reviewing his discretion arises.

10. I would also affirm the decision under review.