F Hoffman-La Roche & Co Aktiengesellschaft v Commissioner of Patents

High Court of Australia|1971-07-01|Before: Gibbs J

For the reasons given I hold that it is at the least not possible to say that it is clear that proposed claims 2, 3 and 4 in the specification as proposed to be amended are not fairly based on matter disclosed in the first basic application. The same result follows in relation to all the proposed claims whose priority dates are in question.

It was submitted on behalf of the respondent that although the Appeal Tribunal exercises an independent discretion under the Act due weight ought to be given to the opinion of the Commissioner or the Supervising Examiner as that of a skilled and experienced person, in the same way that weight is attached to the opinion of the Registrar or Deputy Registrar in Trade Mark cases - see Eclipse Sleep Products Inc. v. Registrar of Trade Marks [1] ; and Joseph Bancroft & Sons Co. v. Registrar of Trade Marks [2] . Although I am inclined to agree with this submission as a generality it does not afford me much assistance in the present case where there is no conflict of testimony as to a fact of a technical kind, and no scientific question really in controversy.

The only other authority to which I need refer is Glaxo Group Ltd.'s Application [3] , in which the issue arose as to whether a claim to a process of reacting a steroid, of a certain general formula in which a number of radicals were identified, with a phosphoric acid compound under specified conditions, was fairly based on a provisional specification which referred to the reaction but described the group of steroids in general terms. It was held that the claim was fairly based on matter disclosed in the provisional specification and Lloyd-Jacob J. said [4] :

The interval of time between the filing of the two specifications is intended to provide an opportunity for the development and precise expression of the invention foreshadowed in the provisional and where as here the provisional expresses the invention in terms of general applicability to a specified series of steroids, reference in the complete to new introductions in such steroid series confirms the general applicability, conforms with the expression of the invention in the provisional, and finds the justification for its presence, not in any particular characteristic of its own, but in its membership of the class of substances to which the applicants' process was stated to be applicable. On behalf of the respondent it was said that this case was distinguishable because it relates only to process claims and further because the decision depended on the expert evidence given before the Tribunal in that case and it may be added that the remarks of the learned judge as to the purpose of an interval of time between the filing of the two specifications may not be appropriate to the case of a basic application. However, the approach of Lloyd-Jacob J. in that case to the question whether the claim was fairly based appears to me to be consistent with that which I have made in the present case. 1. [1968] R.P.C. 473. 2. [1968] R.P.C., at p. 480.

I, therefore, hold that the objection of the supervising examiner on the ground that some of the priority dates indicated by the appellant were not the priority dates of the claims as determined by the Act was not well-founded.

The second question in issue is whether the proposed amendments were made for the purpose of removing a ground of objection. If the proposed amendments were not made for that purpose the supervising examiner was right in holding that they were not allowable, although it would be open to the appellant to seek leave to amend in accordance with the procedure laid down in Pt VIII of the Act.

This question may be considered by taking as an example proposed claims 43 to 46. Proposed claim 43 is a claim for a process for the manufacture of preparations having activity on the central nervous system, incorporating the compounds described in proposed claim 1. It is identical with claim 6 of the specification as originally lodged, except that claim 6 states no priority date and proposed claim 43 shows 24th January 1962 as the priority date. The supervising examiner has allowed this amendment. However, proposed claims 44 to 46 are for processes incorporating the compounds described in proposed claims 2, 3 and 4 respectively and they all show 8th February 1961 as the priority date. Quite apart from the question of the correctness of the priority date, the supervising examiner has held these amendments to be not allowable.

The examiner objected to the complete specification in its original form on the ground that the claims were not priority dated. To remove this objection, it was of course necessary to show the priority dates. On behalf of the respondent it is submitted that this objection could have been removed, so far as it related to claim 6, simply by adding a priority date, as in fact was done (with the addition of a renumbering of the claim) by proposed claim 43. However, the submission on behalf of the appellant is that claim 6 covered some processes (those within proposed claims 44 to 46), for which the earlier priority date could be claimed and others whose priority date was that of the lodgment of the complete specification. It was, therefore, said that the objection could not have been removed simply by adding to claim 6 a reference to 24th January 1962 as the priority date, because some of the processes within claim 6 were entitled to an earlier priority date. Accordingly it was submitted that it was right to add the new proposed claims showing the earlier priority date, although it was conceded that in strictness proposed claim 43 should have excluded the claims that fell within proposed claims 44 to 46.

The view taken by the supervising examiner in upholding the objection depends on the fact that after the proposed amendments have been made and the new proposed claims 44 to 46 have been added the original claim remains unaltered except for the inclusion of the priority date. This fact, it was said, shows that the ground of objection is completely removed simply by adding the priority date.

However, in my opinion, the purpose of the proposed amendments was to remove the ground of objection in the Examiners' adverse report. To remove that objection it was necessary to state a priority date. If the appellant in making an amendment were restricted to the mere addition of a date it would be in an evident difficulty. If it showed the date as 24th January 1962, it would, in respect of some subject matter, be asserting a priority date later than that to which it claimed to be entitled. If it showed the date as 8th February 1961, it would, in respect of some subject matter, be asserting a priority date earlier than that which it could hope to sustain and would be inviting a further objection on the ground that the claim was wrongly dated. The way of escape from this difficulty was to split the claims and to attribute appropriate priority dates to the different subject matters. The purpose of inserting, by amendment, the proposed claims 44 to 46 was, therefore, to remove the objection that claim 6 was not priority dated. If, at the same time, claim 6 had been amended by excising the subject matter that fell within proposed claims 44 to 46 this could hardly have been controverted. But the failure to amend claim 6 in that way does not alter the purpose for which the amendments were made. The objection that they were not made for the purpose of removing a ground of objection therefore fails.

I allow the appeal. I declare that the objections based on s. 47 (2) and s. 49 (4) of the Act are not lawful objections to the grant of the application, and order that the direction of the supervising examiner given on 17th June 1966 be vacated.

High Court of Australia Gibbs J. F Hoffman-La Roche & Co Aktiengesellschaft v Commissioner of Patents [1971] HCA 3

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