Emperor Sports Pty Ltd v Commissioner of Patents

Emperor Sports Pty Ltd v Commissioner of Patents - [2005] FCA 996 - FCA 2005 case summary — Zoe

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INTRODUCTION 1 Counsel for the parties informed me that the present appeals represent the first occasion on which the Court has been required to consider the provision, introduced by the Patents Act 1990 (Cth) ('the Act'), for post-grant re-examination at the request of the patentee or any other person That provision was introduced into the Australian patents régime in the form of s 97(2) of the Act, which commenced on 30 April 1991. The appeals raise important questions concerning the relationship between the obviousness/ inventive step issue, and the ex parte re-examining role of the respondent, the Commissioner of Patents ('the Commissioner'). 2 The provisions relating to re-examination of standard patents are found in Ch 9 (ss 96A‑101) of the Act. The Chapter does not apply in relation to innovation patents: s 96(A). 3 The applicant, Emperor Sports Pty Ltd ('Emperor'), is the patentee in respect of Patent No 662655 in relation to 'removable tags for use as indicators in sporting events' ('the Patent'). For the time being, it is sufficient to understand the Patent to be in respect of a device incorporating a tag which is removably attached (by means of 'Velcro', for example) to the clothing of a player, the removal of which by an opposing player counts against the wearer as an event in the sport, for example, by signifying that the wearer has been 'tackled' and must cease progressing forward. Again, for present introductory purposes only, it is convenient to conceive of the removal of the tag as having the same significance as a 'touch' in the game of touch football. 4 On 10 September 2003, pursuant to s 97(2) of the Act, the Australian Football League ('AFL') requested the Commissioner to re-examine the complete specification of the Patent. 5 On 1 October 2004, the Commissioner, through her delegate, decided to revoke the Patent ('the revocation decision'). Proceeding NSD 1542 of 2004, launched on 22 October 2004, is Emperor's appeal under s 101(4) of the Act against the revocation decision. 6 During the re-examination process, Emperor filed a statement of amendments dated 18 May 2004. In his reasons for the revocation decision the delegate addressed the complete specification as if those amendments had been made to it, while noting that he was not in fact determining their allowability, which, he said, was a matter distinct from re-examination. As will appear, I agree that the question of amendment is conceptually distinct. Emperor contends that the question of leave to amend should have been dealt as part of the re-examination process. As will also appear, I agree that the question of amendment should have been resolved prior to the making of the revocation decision. Emperor accepts, however, that the particular course followed by the Commissioner has not resulted in any injustice, because the decision to revoke was made on the assumption, favourable to Emperor, that the amendments had been made. 7 After they were advised of the revocation decision, Griffith Hack ('GH'), Emperor's patent attorneys, wrote to the Commissioner on 12 October 2004 stating that it was not clear whether the amendments had been made, and that no decision had 'ever issued refusing those amendments'. 8 On 19 October 2004, a Senior Examiner of Patents advised GH that he had decided not to allow the amendments ('the amendment advice'). 9 Appeal 1541 of 2004 was brought, also on 22 October 2004, under s 104(7) of the Act against what was said to be a decision refusing the amendments conveyed in the amendment advice. 10 A question arose whether the amendment advice amounted to a decision refusing the amendments, and therefore an appealable decision under s 104(7) of the Act. Accordingly, on 3 November 2004 a delegate of the Commissioner made a 'formal' decision that the amendments were not allowable, and refusing them ('the amendment decision'). Appeal NSD 1828 of 2004 was commenced on 24 November 2004 against the amendment decision. 11 The parties agreed that I should dismiss appeal NSD 1541 of 2004 (relating to the amendment advice) with no order as to costs, and that I am required to decide only appeals NSD 1542 of 2004 ('the revocation appeal') and NSD 1828 of 2004 ('the amendment appeal'). Accordingly, on the hearing I dismissed appeal NSD 1541 of 2004 with no order as to costs. 12 The revocation appeal is brought pursuant to s 101(4) of the Act and the amendment appeal pursuant to s 104(7) of the Act. The word 'appeal' is used in both subsections. In New England Biolabs Inc v F Hoffmann-La Roche AG (2004) 62 IPR 510, the Full Court stated (at [44]) in relation to s 104(7): 'The use of the word "appeal" by parliament does not confer appellate jurisdiction. There is no doubt that the nature of the appeal provided for in s 104(7) of the Act is one such as to confer original jurisdiction upon the court. The court approaches the matter for the first time exercising the judicial power of the Commonwealth, not in order to decide whether the executive decision maker was right or wrong, or otherwise to correct error in the executive decision, but to deal with a subject matter, a controversy, for the first time: Jafferjee v Scarlett (1937) 57 CLR 115 at 119-20,126; the Bayer case [a reference to Farbenfabriken Bayer Aktiengesellschaft v Bayer Pharma Pty Ltd (1959) 101 CLR 652] and Kaiser Aluminium & Chemical Corporation v Reynolds Metal Co (1969) 120 CLR 136 at 142.' These observations apply equally to an appeal, provided for in s 101(4) of the Act, from a decision to revoke a patent following an adverse report on a re‑examination under s 97(2).

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Provisions governing post-grant re-examination and amendment 13 Chapter 9 of the Act is headed 'Re-examination of standard patents'. Subsection 97(2) within that Chapter, provides: 'Subject to this section and the regulations, where a patent has been granted, the Commissioner may, and must if asked to do so by the patentee or any other person, re‑examine the complete specification.' Section 97 also provides for other occasions of re-examination of a complete specification, not presently relevant. 14 Chapter 9 of the Patents Regulations 1991 (Cth) ('the Regulations') is headed 'Re-examination', and deals with re-examination under various provisions of the Act. Regulation 9.2(1) provides that a request under s 97(2) for re‑examination must be in an approved form. 15 Regulation 9.2 relevantly provides: '2. A request must identify the documents on which an assertion is based that the invention, so far as claims in any claim and when compared with the prior art base as it existed before the priority date of that claim, is not novel, and: (a) for a standard patent - does not involve an inventive step; or (b) for an innovation patent - does not involve an innovative step. 2A. A request must state the relevance of each of the documents mentioned in subregulation (2).' 16 Pursuant to this regulation, in its request for re-examination dated 10 September 2003, the AFL identified eight United States patents and a statutory declaration of Perry Haddock dated 8 September 1993 filed in support of the application which resulted in the grant of the Patent ('the Cited Documents'). 17 In relation to the various forms of re-examination provided for in s 97, s 98 provides: '(1) On re‑examining a complete specification, the Commissioner must ascertain and report whether, to the best of his or her knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim: (a) is not novel; and (b) does not involve an inventive step (2) For the purposes of subsection (1), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area).' I discuss the notions of novelty and lack of inventive step below, but in the meanwhile a difference between s 98 may and s 45 may be noted. Section 45 relates to requests by applicants for a standard patent for pre-grant examination. The section requires the Commissioner to examine the request and specification, and to report, not only on the issues of novelty and lack of inventive step, but also on whether the specification complies with s 40, and whether, to the best of the Commissioner's knowledge, the invention, so far as claimed, satisfies s 18(1)(a)'s requirement that it be a manner of manufacture within the meaning of s 6 of the Statute of Monopolies. Subsection 98(1), on the other hand, makes it clear that a re-examination under s 97 is limited to the issues of novelty and obviousness.

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18 Section 99 provides that where the Commissioner reports adversely on a complete specification, the applicant or patentee may dispute the whole or any part of the report, whether or not steps are taken to amend the complete specification. 19 Subsection 101(1) provides that '[w]here the Commissioner makes an adverse report on a re-examination under subsection 97(2), the Commissioner may, by notice in writing, revoke the patent, either wholly or so far as it relates to a particular claim, as the case requires'. However, s 101(2) provides: 'The Commissioner must not revoke a patent under this section unless the Commissioner: (a) has given the patentee a reasonable opportunity to be heard; and (b) has, where appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection and the patentee has failed to do so.' (my emphasis) Subsection 101(4) provides that the patentee may appeal to this Court against 'a decision of the Commissioner under [s 101]'. 20 Chapter 10 (ss 102‑116) of the Act is headed 'Amendments'. Section 104, within that Chapter, provides: '(1) An applicant for a patent or a patentee, may, subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following: (a) removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise; (b) correcting a clerical error or an obvious mistake. (2) Where an applicant or patentee asks for leave to amend a patent request or complete specification, or any other filed document, the Commissioner must consider and deal with the request in accordance with the regulations. (3) Subject to the regulations, the Commissioner may allow an amendment subject to conditions. (4) The Minister or any other person may, subject to and in accordance with the regulations, oppose allowing an amendment. (5) The Commissioner must not allow an amendment that is not allowable under section 102. (6) On the allowance of an amendment, the amendment is to be taken to have been made. (7) An appeal lies to the Federal Court, against a decision of the Commissioner allowing, or refusing to allow, a requested amendment, other than a prescribed decision' (my emphasis) 21 Section 102, referred to in s 104(5), provides that certain amendments are not allowable. Importantly for present purposes, s 102 (1) provides that '[a]n amendment of a complete specification is not allowable if, a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed'.

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General provisions 22 The provisions for re-examination are to be understood against the background of the patents régime provided for in the Act. The definitions of 'novelty' and 'inventive step' in s 7, and the associated definitions of 'prior art base' and 'prior art information' in the Dictionary in Schedule 1 to the Act, are important in the present case. 23 Section 7 of the Act provided: '(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately: (a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act; (b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information; (c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1. (2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with either kinds of information mentioned in subsection (3), each of which must be considered separately. (3) For the purposes of subsection (2), the kinds of information are: (a) prior art information made publicly available in a single document or through doing a single act; and (b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of information; being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant to work in the relevant art in the patent area.' 24 The expressions 'prior art base' and 'prior art information' are defined in the Dictionary, relevantly, as follows: 'prior art base means: (a) in relation to deciding whether an invention does or does not involve an inventive step or an innovative step: (i) information in a document that is publicly available anywhere in the patent area; and (ii) information made publicly available through doing an act anywhere in the patent area; and (iii) where the invention is the subject of a standard patent or an application for a standard patent - information in a document publicly available outside the patent area; and (b) in relation to deciding whether an invention is or is not novel: (i) information of a kind mentioned in paragraph (a); and (ii) information contained in a published specification filed in respect of a complete application where: (A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and (B) the specification was published after the priority date of the claim under consideration; and (C) the information was contained in the specification on its filing date and when it was published. prior art information means: (a) for the purposes of subsection 7(1) - information that is part of the prior art base in relation to deciding whether an invention is or is not novel; and (b) for the purposes of subsection 7(3) - information that is part of the prior art base in relation to deciding whether an invention does or does not involve an inventive step.' 25 Chapter 3 of the Act provides for patent applications from the making of them to the acceptance of them. Section 44 provides that where a complete application for a standard patent has been made, the applicant may ask for an examination of the patent request and specification relating to the application. Section 45 provides that where an applicant so asks, the Commissioner must examine the request and specification and report on: (a) whether the specification complies with s 40; and (b) whether, to the best of the Commissioner's knowledge, the invention, so far as claimed, satisfies the criterion mentioned in par 18(1)(a) [that the invention is a manner of manufacture within the meaning of s 6 of the Statute of Monopolies]; and (c) whether, to the best of the Commissioner's knowledge, the invention, so far as claimed in any claim and when compared with the prior art base as it existed before the priority date of that claim: (i) is novel; and (ii) involves an inventive step; and (d) such other matters (if any) as are prescribed. 26 Subsection 45(1A) provides that, for the purposes of s 45(1)(c), the prior art base is to be taken not to include information made publicly available only through the doing of an act (whether in or out of the patent area). In this respect, pre-grant examination at the request of the applicant for the patent is similar to re-examination under s 97 (see s 98(2) set out at [17] above). Subsection 45(3) provides that the applicant must inform the Commissioner of the results of any documentary searches carried out by or on behalf of the applicant, or the applicant's predecessor in title, prior to the grant of a patent, whether conducted in Australia or elsewhere, for the purposes of assessing the patentability of an invention disclosed in the complete specification or in a corresponding application filed outside Australia. 27 Chapter 4 (ss 53-58) deals with publication of the making of an application for a patent. Chapter 5 (ss 59-60) provides for opposition to the grant of a standard patent. 28 Section 138, within Ch 12, provides that the Minister or any other person may apply to a prescribed court for an order revoking a standard patent. It is not disputed that if the Patent had not been revoked by the Commissioner following re-examination under s 97(2), or if the Court should reverse the Commissioner's revocation decision, the AFL would still be at liberty to apply under s 138 for a revocation of the Patent.

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The original specification 29 The first paragraph of in the specification of the Patent as granted reads as follows: 'The present invention relates to a device for use in sport, and in particular, to a device that includes one or more removable indicia, the removal of which indicates a certain result. The invention will in part be hereinafter described with reference to its use in a modified form of Rugby League football, however, it is to be appreciated that the invention is not limited to this particular field of use'. 30 The specification states that many sports involve an opponent making physical play at an attacker by bringing an attacker carrying a ball to the ground or otherwise contacting that player in order to halt his or her progress. Variations of many kinds of sports have been developed to remove or reduce the amount of physical contact, while retaining substantially the same rules or procedures for the sport. An advantage of removing or reducing physical contact is that risk of injury is reduced and aggression is minimised. 'This is particularly important when children are playing the sport, and thereby the social benefits of the sport can be enhanced without the attendant risks.' (p 2) 31 The alternative to greater physical contact is to touch the attacker with one or both hands, 'the sensation of touch being received by the attacker causing a halt to the attacker's progress.' (p 2) Disadvantages of this alternative are that progress halting often relies on the honesty of opponent and attacker, and where there is a referee, the referee must make judgments without proof that the required touching has occurred. 32 The specification gives as an example 'a modified version of Rugby League football, namely, the so-called game of "touch football"' (pp 2-3), and states (at p 3): 'The present invention provides a device for use in sport, including one or more indicia, the or each indicium being adapted for removable attachment to a user's garment, such that in use and when attached to a user's garment, the removal of the, each, or one or more further indicia indicates a predetermined result. The device of the present invention provides a rapid and clear means of signalling that the progress of a user of the device in a sporting game should be stopped.' 33 The specification states that preferably the or each indicium is adapted for removal by hand. 34 The specification describes a preferred form of the device, 'by way of an example only' (p 5) with reference to accompanying drawings. The specification also gives an example of the use of the device with reference to '[a] modified version of Rugby League Touch Football' (p 8). 35 There are twenty-seven claims defining the invention. Claim 1 is an independent claim and claims 2 to 11 are dependent on it. Claim 1 reads: 'A device for use in sport, including one or more indicia, the or each indicium being adapted for removable attachment to a user's garment, such that in use and when attached to a user's garment, the removal of the, each, or one or more further indicia indicates a predetermined result.' 36 Claims 12 and 13 are as follows: '12. A device for use in sport substantially as herein described with reference to the accompanying drawings.

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The specification as proposed to be amended 38 I turn now to the specification as Emperor would have it amended. 39 Generally speaking, the statement of proposed amendments filed on 18 May 2004 was intended to confine the invention by reference to use of it in the game of Rugby League or in the game of Australian Rules football. Thus, the passages set out at [32] would be amended as follows: 'The present invention provides a device for use in sport, when used in the game of Rugby League or Australian Rules football, the device including one or more indicia, the or each indicium being adapted for removable attachment to a user's garment, such that in use and when attached to a user's garment, the removal of the, each, or one or more further indicia indicates a predetermined result. takes the place of a tackle in the game. The device of the present invention provides a rapid and clear means of signalling that the progress of a user of the device in a sporting the game should be stopped.' 40 Amended claim 1 would read: '1. A device when used in the game of Rugby League or Australian Rules football, the device, including one or more indicia, the or each indicium being adapted for removable attachment to a user's garment, such that in use and when attached to a user's garment, the removal of the, each, or one or more further indicia takes the place of a tackle in the game.' (my emphasis) 41 Claims 2 - 16 are dependent on Claim 1 and each of them would begin 'A device when used in the game as claimed in ...'. 42 Claims 17 and 18, if amended as proposed, would read as follows: '17. A device when used in a game substantially as herein described with reference to the Example and/or in conjunction with the accompanying drawings. 18. A device as claimed in any one of claims 1 to 11 or 17 excludes Australian Rules Football when used in 'modified Rugby League' as herein defined.' 43 New claims 19 - 23 are expressed as method claims ('new' in the sense that all the existing claims are expressed as device claims). Claim 19 is expressed to be 'method of playing Rugby League, employing a device as defined in any one of claims 1 to 11 or 17 ….', and Claim 20 is expressed to be the claim 19 method with a qualification. Claim 21 has been referred to by counsel as an omnibus method claim (as claim 17 was referred to as an omnibus device claim.). Claim 21 reads: '21. A method as claimed in claim 19 or 20 that is substantially as herein described with reference to the Example and/or the accompanying drawings.' 44 Claims 22 and 23 are similar to claims 19 and 20 respectively, but with the substitution of 'Australian Rules football' for 'Rugby League'.

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The revocation decision 46 In the revocation decision, the Commissioner's delegate began by referring to the AFL's request for re-examination, the issuing of three adverse reports, and the proposing by Emperor of various amendments throughout the examination process. The delegate noted that, as leave to amend had not been granted, the specification still included the originally granted claims, 'without a successful resolution of the novelty and inventive step issues raised in the re-examination reports'. 47 The delegate proceeded by describing the specification (setting out the granted claims), referring to certain legislative provisions, and identifying the Cited Documents. So far as the statutory declaration of Perry Haddock of 8 September 1993 is concerned, the delegate observed that it related, not to public documentary disclosure, but to Mr Haddock's commercialisation and publicising of the invention after the filing of the provisional application. The delegate observed that s 98(2) of the Act (set out at [17] above) required him to disregard non-documentary disclosure for the purposes of the re-examination. There was no suggestion on the appeal that the delegate was incorrect to put to one side the Haddock statutory declaration on this basis. Accordingly, henceforward my reference to 'the Cited Documents' will be a reference to the eight United States patents alone. 48 The delegate noted that the examiner had found that granted claims 1 to 27 lacked novelty and any inventive step over all of the prior art US Patents, with the exception of one. He expressed his agreement with the position taken by the examiner, adding: '24. ... The prior art documents indicated, unquestionably disclose a device at least capable of use in sport, the device including one or more indicia being adapted for removable attachment to a user's garment. The subsequent conduct of the patentee after that first re-examination report appears to confirm my position. The patentee has not sought to defend the granted set of claims during the re-examination process, rather it has set about proposing several sets of amendments to the claims (on three separate occasions) to overcome the prior art raised. 25. Consequently, on the basis of the granted claims as they stand, I would revoke the patent under the provisions of section 101 of the Act.' 49 The delegate next referred to the several proposed amendments, and, as noted earlier, addressed the notionally amended claims as if they were part of the specification 'with the view of determining whether or not there is patentable subject matter that the patentee may introduce, rather than with the view of revoking this claim set or otherwise'. The delegate stated, however, 'It should be noted that I will not be determining the allowability of these amendments per se, as this is a separate consideration to the of re-examination'. As appears below, I agree that the allowability of the amendments called for separate consideration (and decision), but disagree that the delegate was entitled to decide to revoke the Patent without first resolving the amendment question. 50 The delegate set out the 23 proposed amended claims referred to above. 51 In relation to novelty, the delegate referred to 'the basic test for anticipation' as the 'reverse infringement test', and as depending on whether all of the essential integers of a claim were taken. The delegate concluded that claims 1 - 16 and 18 - 23 were novel over the prior art because 'the essential feature of the device when used in the game of Rugby League or the game of Australian Rules football is not disclosed in the documents cited' (at para 40). However, he thought that 'omnibus' amended claim 17, not being limited to a device 'when used' in a game of Rugby League or Australian Rules football, failed the reverse infringement test when compared with the Cited Documents, and therefore lacked novelty. 52 In relation to the question of inventive step, the delegate referred to subs 7(2) and (3) of the Act. He identified the problem to be solved, and, related to this, the 'person skilled in the relevant art', as 'a skilled but non-inventive worker in the field'. He noted Emperor's submission that this was likely to be somebody involved with Rugby League or Australian Rules football who has a good working knowledge of that game, such as a coach or former player, or a person such as a referee or fan who has an understanding of the rules, tactics and strategies of the game. The delegate did not agree that a fan would be a skilled but non-inventive worker. He thought, however, based on the nature of the problem to be solved, that the notional person skilled in the art would include a person with at least a good working knowledge of touch football, and may include someone with a solid understanding of American Football or soccer. He thought it arguable whether participants such as players, coaches or referees could truly be considered as persons skilled in the art, but accepted Emperor's submission that a coach, a referee or umpire or former player could be included, as could an administrator of the relevant sport. 53 The delegate noted that the 'fundamental point of contention' in the re-examination was whether the hypothetical person skilled in the art could reasonably be expected to have ascertained the Cited Documents. He referred to judicial considerations of the notion of 'ascertained' in: Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd (1999) 99 FCR 151 (Dowsett J) ('Dyno Nobel'); Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280 (HCA/FC) ('Firebelt'); E I Dupont de Nemours & Co v Imperial Chemical Industries Plc (2002) 54 IPR 304; and Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2003] FCAFC 29. The delegate did not accept Emperor's submission that these cases are authority for the proposition that obviousness depends on whether the hypothetical non-inventive person skilled in the art would, as a matter of course, have searched the patent literature and discovered the Cited Documents. He thought the question to be asked was whether someone from the broad spectrum of persons skilled in the art, 'ranging from coaches to administrators and the like', could be reasonably expected to have ascertained the Cited Documents (at para 67). 54 The delegate thought that while the hypothetical person skilled in the art may not have considered searching patent literature to remain informed (at para 69): '…I do not believe there is any evidence to suggest the person skilled in the art would only be limited to merely observing what others in the field are doing. It would not be unreasonable to expect the person skilled in the art to regularly maintain or update their knowledge through trade magazines and the like. I believe it is also reasonable to expect that the notional person skilled in the art, drawn from the group identified, would have searched patent literature to remain informed of events in the field, (following the notion of a diligent searcher from Dyno Nobel (supra). Furthermore, there is nothing before me to suggest that a person skilled in the art drawn from the group including coaches, referees, and administrators, would not be diligent in searching patent literature as a means of keeping up to date in the field.' 55 The delegate continued by stating at (at para 70): 'Having established it is reasonable for the skilled person to conduct literature searches as a means of remaining informed, it follows that person could reasonably have been expected to ascertain the cited prior art documents.' 56 The delegate thought that the claimed invention would not have been obvious to a skilled worker equipped with common general knowledge alone. However, he observed that all except one of the Cited Documents disclosed a device for use in a ball carrying sport, namely, a modified version of American football, and addressed the problem of identifying whether or not the ball carrier had been touched by an opponent. 57 The final paragraph of the delegate's reasons for the revocation decision was as follows: '100. In summary, given that the patentee has been unable to remove lawful grounds for objection, namely a lack of novelty and lack of inventive step, despite their best efforts in proposing a variety of amendments, and given that I do not believe there is patentable subject matter in the specification available to the patentee for the purposes of removing any lawful grounds of objection, I am left with no alternative but to wholly revoke this patent in accordance with section 101 of the Patents Act.'

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a preliminary issue 60 Regulation 9.5 provides that if the Commissioner makes an adverse report on a re-examination under s 97(1), and the patentee asks for leave to amend the complete specification to remove any lawful grounds of objection, 'the re-examination is completed when the decision is made whether or not the amendment is allowed'. 61 Emperor has raised the question whether reg 9.5 has the consequence that a re-examination under s 97(2) remains uncompleted until a decision is made whether or not to allow the patentee to amend. Emperor suggests that 'one potential consequence' of reg 9.5 is that it is necessary for it to apply for leave to amend the notice of appeal in the amendment appeal (NSD 1828 of 2004) to incorporate the grounds set out in the notice of appeal in the revocation appeal (NSD 1542 of 2004). 62 Emperor submits that Chapter 9 of the Act contemplates that the process of re‑examination includes a consideration and determination of any application by the patentee to amend the patent, and that the Commissioner's delegate wrongly treated the re‑examination and Emperor's application to amend as separate matters, which has led to the 'bifurcation of the appeal.' 63 In my opinion, the Commissioner was obliged to decide whether or not to grant Emperor leave to amend the specification prior to deciding whether to revoke the Patent, although the former decision might have been made immediately before the latter and the reasons for both decisions might have been included within the one document. 64 Emperor's reference to reg 9.5, however, is misconceived. Regulation 9.5 is expressed to apply to a re-examination under s 97(1), that is to say, where a request and complete specification relating to a patent has been accepted and the patent has not yet been granted. Therefore, reg 9.5 does not apply to post-grant re-examination under s 97(2) and can be put to one side. 65 The parties proceeded on the assumption that the Commissioner decided on 1 October 2004 to revoke the Patent. 66 The terms of s 101 were referred to at [19]. The condition which enlivens the Commissioner's power given by that section to revoke is her making an adverse report on a re-examination under s 97(2). Such a report was made. Subsection 101(1) provides that the power of revocation is a power 'by notice in writing [to] revoke the patent, either wholly, or in so far as it relates to a particular claim, as the case requires'. So far as the evidence reveals, the Commissioner gave no notice in writing other than the document dated 1 October 2004 headed 'Decision of a Delegate of the Commissioner of Patents', which the Commissioner sent to GH, and which included para 25 (set out at [48] above) and para 100 (set out at [57] above). Those paragraphs do not include such terms as 'I revoke the Patent' or 'I hereby revoke the Patent'. So far as the evidence reveals, there was no 'notice of revocation of patent' given to Emperor or GH in a form such as 'you are hereby notified that the Patent is revoked'. 67 The Commissioner subsequently took the position that the document of 1 October 2004 both recorded a decision to revoke and operated as a notice of a revocation effective on that date. Emperor took the position that the document had the former effect, but not the latter. Therefore it was, correctly, common ground that there was at least a decision to revoke within s 101(1) against which an appeal could be brought to this Court under s 101(4). 68 Section 101(2)(b) provides that the Commissioner must not revoke a patent under s 101 unless the Commissioner has, where appropriate, given the patentee a reasonable opportunity to amend the relevant specification for the purpose of removing any lawful ground of objection, and the patentee has failed to do so. Emperor has not contended that the Commissioner did not, by 1 October 2004, give it a reasonable opportunity to amend. Emperor did not seek any further opportunity to amend, beyond the opportunity it had been given. By that date, issue was joined between Emperor and the Commissioner as to whether Emperor's proposed amendments were effective to remove lawful grounds of objection, and it remained only for the Commissioner to decide whether to give leave to amend. On one view, even in actually revoking the Patent on 1 October 2004, the Commissioner would not have contravened s 101(2)(b), because that provision does not require that a decision on the application for leave to amend be made before it can be said that a reasonable opportunity to amend has been given. If on the other hand, a reasonable opportunity to amend is not given until a decision is actually made whether or not to give leave to amend, s 101(2)(b) prohibited the Commissioner from revoking until after 19 October or 3 November 2004. According to this latter view, if there was an actual revocation on 1 October 2004 it was effected in contravention of s 101(2)(b). Either way, however, there was an appealable decision to revoke made on 1 October 2004. 69 In the revocation decision, the Commissioner decided, first, that on the basis of the granted claims, she would revoke the Patent under s 101 (para 25 of the revocation decision), and, secondly, that the amendments, if allowed, would not remove lawful grounds of objection, so that she was left with no alternative but to revoke the Patent under s 101 (para 100 of the revocation decision). 70 Was the ground that to allow the amendments would be futile a ground on which the Commissioner would have been at liberty to decide on 1 October 2004, to refuse leave to amend? It was not, as the Commissioner correctly appreciated. 71 Section 104 deals, relevantly, with applications by patentees for leave to amend for the purpose, inter alia, of removing a lawful ground of objection to the specification, whether that objection is raised in the course of re-examination or otherwise. Subsection 104(2) provides that the Commissioner 'must consider and deal with the request in accordance with the regulations'. As noted earlier, s 104(7) provides, relevantly, that an appeal lies to this Court against a decision of the Commissioner refusing to allow a requested amendment. This right of appeal cannot be exercised unless the Commissioner has decided to refuse to allow the requested amendment. An applicant for leave to amend is therefore entitled to a decision on the application for leave to amend. 72 Regulation 10.2(1) requires the Commissioner to report on, relevantly, whether the proposed amendment of a complete specification is 'not allowable' under s 102 (or s 103) of the Act (s 102 was discussed at [21]) or under reg 10.3, or, if made, would not otherwise be allowable under the Act or the Regulations. Regulation 10.3 identifies other kinds of amendment that are 'not allowable'. Regulation 10.4 provides that the Commissioner must refuse a request for leave to amend if, relevantly, she 'reasonably believes that a proposed amendment is not allowable [except in circumstances not presently relevant]' (my emphasis). The words 'not allowable' are clearly referable to s 102 (and s 103) of the Act and reg 10.3. Regulation 10.5(1) provides, relevantly, that the Commissioner must grant leave to amend a complete specification if, relevantly, the report on the proposed amendments under reg 10.2(1) is not an adverse report. 73 It follows from the above analysis that the Commissioner has no discretion: she is required to allow or refuse amendments according to the circumstances referred to in s 102 (and s 103) and regs 10.2(1), 10.3, 10.4 and 10.5: cf New England Biolabls Inc v Commissioner of Patents (2001) 110 FCR 357 (and on appeal at (2004) 62 IPR 510 at [13]). The Commissioner's delegate seems to have correctly understood this to be the position: his error was not to consider and deal with the application for leave to amend before deciding whether to revoke. 74 The reason which the Commissioner gave on 3 November 2004 for refusing leave to amend was that the proposed amendments would claim matter not in substance disclosed in the specification as filed; cf s 102(1) referred to at [21] above. In terms of timing, the Commissioner was required to give that decision for that reason when, or more precisely before, giving her revocation decision on 1 October 2004. There would have been no objection to her including in her reasons for her revocation decision, as an alternative ground for that decision, her reasons for concluding that even treating the specification as amended as requested, the lawful grounds of objection remained and the Patent must be revoked.

[38]

87 If the original claim 1 is properly to be characterised as a 'device claim' then so is the amended claim 1, and if the amended claim 1 is properly to be characterised as a 'method claim' then so is the original claim 1. 88 The Commissioner submits that Wellcome is authority for the proposition that the words 'when used in' are the hallmark of a method claim. Those words did not appear in the specification in that case. Wellcome concerned claims for a known chemical substance in a container, together with a set of instructions for, what was previously unknown, its use for the treatment of an anaplasmosis in cattle. Importantly, the High Court stated (at 529): 'A further answer to the appellant's submission is that there is no distinction between the claim to the process and the claim to the substance when the substance claim is limited to its use in the process.' 89 Their Honours referred to the decision of Parker J in Adhesive Dry Mounting Co Ltd v Trapp & Co (1910) 27 RPC 341 ('Adhesive Dry Mounting'), and said (at 529-530): 'There, the first claim in the patent specification was a process claim. The second claim was either a claim to a pellicle or to the use of the pellicle in the process described in the first claim. Parker J observed that, if the second claim was a claim to the use of the pellicle in the process, it added nothing to the first claim for it was already included in that claim. Later, his Lordship said [(1910) 27 RPC at 353]: "The idea of using an old material for an entirely new purpose, not being analogous to purposes for which it has theretofore been used, may be good subject-matter, but such idea, however ingenious, can hardly justify a claim for the material itself".' 90 In this particular case, I construe the words 'for use in sport' and 'indicates a predetermined result' in the original claim 1 as limiting, and the words 'when used the game of Rugby League or Australian Rules football' and 'takes the place of a tackle in the game' as more limiting. In both cases, the passages from Wellcome and Adhesive Dry Mounting set out at [88] and [89] are applicable: the claim, in both the original and the amended form, is of a process, means or method, not of a physical device in itself.

[42]

Obviousness 97 Subsections 7(2) and (3) and the Dictionary's definition of 'prior art base' and 'prior art information' were set out at [23] and [24] above. 98 The leading authority in relation to the role of patent specifications in relation to obviousness prior to the enactment of these provisions was Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253. In that case, Aickin J said (at 294-295) that, generally speaking, information contained in earlier patent specifications did not form part of the common general knowledge of those skilled in the art, although there may be some fields of endeavour in which such persons study and make themselves familiar with all patent specifications as they become available for inspection. Evidence would be needed to show that such information formed part of the common general knowledge of persons skilled in the art. 99 The legislative provisions have altered the position, but, in my view, not so as to eliminate the need for evidence. By reason of s 7(2), the present invention must be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before 25 June 1992, whether that knowledge is considered separately or together with the information mentioned in s 7(3) (the terms of which were set out at [23]). 100 Whether the information in the Cited Documents: (a) formed part of the common general knowledge of a Rugby League or Australian Rules football coach, referee or administrator in the patent area before 25 June 1992; or (b) is information which such a person, confronted with the problem identified in the complete specification, could, before that date, be reasonably expected to have ascertained, understood and regarded as relevant, cannot be known in the absence of evidence. Without evidence, resolution of these issues is a matter of mere speculation. 101 In Firebelt, an infringement/revocation proceeding, the opening words of s 7(2) were construed as imposing an onus of establishing absence of inventive step upon the party challenging validity (at [31]). Although re-examination under s 97(2) takes place ex parte, s 7(2) similarly requires me (and required the Commissioner) to assume the presence of an inventive step in the absence of evidence establishing the matters referred to in ss 7(2) and (3). This approach finds support in the acceptance by the High Court in Firebelt (at [36]) of Burchett J's construction of the provisions in Tidy Tea Ltd v Unilever Australia Ltd (1995) 32 IPR 405 at 414, and in the approach taken in other inter partes proceedings; cf Mather v Lockwood Australia Pty Ltd [2001] FCA 1814at [91]-[97]; Dyno Nobel at [190]-[195]. 102 The Commissioner sought to distinguish a re-examination under s 97(2) from an opposition proceeding provided for in Ch 5 (ss 59, 60) and from a revocation proceeding provided for in s 138. Each of those proceedings is inter partes, whereas a re-examination under s 97(2) is ex parte. 103 Subsection 97(2) provides a simple and inexpensive procedure by which a third party (or the patentee) may have a patent examined again by the Commissioner. This saves the third party the expense of a revocation proceeding under s 138. It is not suggested that the post-grant re-examination procedure requires the Commissioner to ferret out testimony. It will be recalled that s 98(2) provides that in deciding, upon re-examination under s 97, whether a claim is not novel and does not involve an inventive step, the prior art base is to be taken not to include information made publicly available only through the doing of an act. In other words, the Commissioner is limited to considering the prior art as exposed in documents. 104 The report dated 29 August 1984 of the Industrial Property Advisory Committee, 'Patents, Innovation and Competition in Australia', to the Minister for Science and Technology, relating to the introduction of post-grant re-examination, stated (at 65): '… we consider that matters permitted to be raised in re-examination should be restricted to documentary or other recorded matter affecting novelty and obviousness of the invention. Other questions such as the requirements of a full description and proper claims, manner of manufacture, and entitlement to apply, should be left to court proceedings to resolve. The procedure should be ex parte, not involving the notifier as a party, and at the Commissioner's discretion (so as to avoid the need to undertake pointless re-examinations based on notifications which are vexatious or otherwise without substance). A report should be sent to the applicant in the light of matters notified, giving appropriate opportunity to reply to an adverse report before a final decision is made. The applicant or the Commissioner of his own motion should also be able to instigate re-examination. The Commissioner should be able to decide, as a result of re-examination, to grant, refuse, uphold or cancel a patent, or direct amendments. The applicant should have a right of appeal to a court from an adverse decision, but a notifier should have no corresponding right of appeal or review except such as is available elsewhere - for example, under the Administrative Decisions (Judicial Review) Act. The notifier would, of course, be able to take action in the courts in a revocation action, and should be confined to that course as the only one in which he can effectively contest the Commissioner's determination on its merits. A procedure for re-examination after grant of a patent has been available in the US since 1981. Evidence as to the efficacy of that procedure is inconclusive, although such information as is available suggests that the procedure may have contributed to the avoidance or settling of litigation in a significant proportion of the cases in which it was used. There seems to us to be merit in introducing a similar procedure in Australia so as to utilise the expertise in the Patent Office to decide appropriate questions in the hope that this may reduce the costs of, or in some cases avoid the need for, court proceedings.' 105 The paragraph last set out above directs attention to the position in the United States. There, the purpose of the re-examining statute (35 USC s 302) was described as follows in Congress (HR Rep No 96-1307 at 3-4): 'This new procedure will permit any party to petition the patent office to review the efficacy of a patent, subsequent to its issuance, on the basis of new information about preexisting technology which may have escaped review at the time of the initial examination of the patent application. Reexamination will permit efficient resolution of questions about the validity of issued patents without recourse to expensive and lengthy infringement litigation. This, in turn, will promote industrial innovation by assuring the kind of certainty about patent validity which is a necessary ingredient of sound investment decisions. The cost incurred in defensive patent litigation sometimes reaches $250,000 for each party, an impossible burden for many smaller firms. The result is a chilling effect on those businesses and independent inventors who have repeatedly demonstrated their ability to successfully innovate and develop new products. A new patent reexamination procedure is needed to permit the owner of a patent to have the validity of his patent tested in the Patent Office where the most expert opinions exist and at a much reduced cost. Patent Office reexamination will greatly reduce, if not end, the threat of legal costs being used to "blackmail" such holders into allowing patent infringements or being forced to license their patents for nominal fees. The reexamination of issued patents could be conducted with a fraction of the time and cost of formal legal proceedings and would help restore confidence in the effectiveness of our patent system.' (taken from Lipscomb's Walker on Patents (3rd ed) at 15.2, p505) 106 As might be expected of such a procedure, there are disadvantages flowing from its limited and ex parte nature. 107 I see no reason why the approach taken in pre-grant examination and in opposition proceedings should not be taken in relation to post-grant re-examination, that is, that it must be clear that a patent would be (or is) invalid before the Commissioner should refuse to grant (or should revoke) it; cf F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56 at [67] (opposition proceeding); Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 at 245 (examination stage). 108 I do not need, however, to resort to this approach in the present case for the simple reason that, in the absence of evidence, the Commissioner was not at liberty to decide whether a hypothetical person skilled in the art would have ascertained the existence of the Cited Documents. In the absence of evidence, the Commissioner was relegated to speculation. The Commissioner did not give effect to the opening words of s 7(2) of the Act noted at [23] above. 109 On the hearing of the appeal, both parties agreed that a person skilled in the art in the circumstances of the present case was a coach or a sports administrator. Although the matter did not, therefore, give rise to disputation in this case, identification of the hypothetical person skilled in the art might well also call for evidence.

[44]

Novelty 111 The only amended claim which the Commissioner thought was not novel because it was anticipated by the Cited Documents, was amended claim 17 (set out at [42] above). 112 The expression 'and/or in conjunction with the accompanying drawings' is apt to confuse. Amended claim 17 can be analysed as follows: A device when used in a game substantially as herein described (a) with reference to the Example and in conjunction with the accompanying drawings; or (b) with reference to the Example; or (c) with reference to the accompanying drawings. 113 The Commissioner's delegate correctly observed that the Cited Documents all disclosed a device for a ball carrying sport, which included one or more indicia being adapted to be removably attached to the user's garment, the removal taking the place of a tackle in the game. He thought that amended omnibus claim 17, which, unlike amended claim 1, was not limited by the words 'when used in the game of Rugby League or Australian Rules football', failed the reverse infringement test, and lacked novelty. 114 The words 'the Example' in amended claim 17 refer to the 'modified version of Rugby League Touch Football' which is described over 14 paragraphs of the specification from page 8, line 21 to page 11, line 15, under the heading 'example'. 115 The drawings which accompanied the specification are nondescript. They comprise two figures: one of a pair of short trousers with a material strip attached to one side, preferably by Velcro; the other of a belt with a pair of material strips attached, one to either side, again preferably by Velcro. 116 A claim may be narrowed by reference to an example or a description contained in the text of the specification: Raleigh Cycle Co Ltd v H Miller & Co Ltd [1948] 1 All ER 308 ('Raleigh') at 309H, 320H-321E, 327C-G; PhotoCure ASA v Queen's University at Kingston [2005] FCA 344 at [123]. 117 In my opinion, the words 'substantially as herein described' in amended claim 17 are not properly construed as referring in a general way to ball carrying sports of the kind referred to early in the specification, or even to 'the game of Rugby League or Australian Rules football' referred to there. 'A device when used in the game of Rugby League or Australian Rules football' is the subject of amended claims 1 to 16, while amended claims 18 to 21 are referable to Rugby League and amended claims 22 and 23 to Australian Rules football. 118 Amended claim 17 is intended to refer to something different. That 'something different' is identifiable when additional words in the claim are read: 'A device when used in a game substantially as herein described with reference to the Example ...'. (my emphasis) In my opinion, this part of amended claim 17 means: 'A device when used in a game substantially as described in this specification under the heading "example"', or, perhaps more accurately, 'A device when used in a game substantially as described in this specification incorporating as its essential features the essential features of the game described under the heading 'example'. 119 The 'modified version of Rugby League Football' given as the Example, by reason of its relationship to 'Rugby League', was not anticipated by the Cited Documents. Accordingly, amended claim 17 in its aspects (a) and (b) above was not anticipated by them. 120 In its aspect (c), however, amended claim 17 was anticipated by them. In that aspect, amended claim 17 reads: 'A device when used in a game substantially as herein described ... in conjunction with the accompanying drawings'. In this aspect, amended claim 17 relates to a ball carrying sport but lacks any narrowing tie to Rugby League or to Australian Rules football or to the modified version of Rugby League Football which is given as the Example. The accompanying drawings do not limit the claim further.

At a glance

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