R v Commissioner of Patents; Ex parte Martin - [1953] HCA 67 - HCA 1953 case summary — Zoe

CTHHCA

R v Commissioner of Patents; Ex parte Martin

[1953] HCA 67

High Court of Australia|1953-07-01|Before: Taylor JJ

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Court

High Court of Australia

Decision date

1953-07-01

Before

Taylor JJ

Source

Original judgment source is linked above.

Judgment (43 paragraphs)

[1]

High Court of Australia Williams A.C.J. Webb, Fullagar, Kitto and Taylor JJ. R v Commissioner of Patents; Ex parte Martin [1953] HCA 67

[2]

ORDER Order nisi for mandamus discharged with costs and the motion dismissed with costs.

[3]

We have before us two proceedings by Henry George Martin relating to letters patent granted to him under the provisions of the Patents Act 1903-1950. These letters patent are 136/148 granted to him on 15th June 1950, pursuant to application No. 21477 lodged at the Patent Office on 21st June 1945, and letters patent 136/296 granted to him on 16th June 1950, pursuant to application 30004 also lodged at the Patent Office on 21st June 1945. Letters patent 136/148 were granted for an invention for improvements in writing instruments. Letters patent 136/296 were granted for improvements in inks. Each letters patent contains a statement that Martin "has made a declaration in the prescribed form that he is the actual inventor of the said invention". Each letters patent also provides that it is subject to certain conditions, one of which is "that these letters patent shall be void if it is made to appear that the said patentee is not the actual inventor of the said invention". Each letters patent states that the letters are made patent this twenty-first day of June 1945, and to be sealed as of 21st June 1945. This date is of course in accordance with s. 69 of the Patents Act which provides that, subject to the provisions of the Act, every patent shall be dated and sealed as of the date of the application.

[15]

In these circumstances the only course open to Martin is to seek to amend the documents, not because they contain clerical errors, but so as to bring them into line with the true facts. In other words the only course open to him was the course he took, to request the commissioner to amend the applications and letters patent granted pursuant thereto under the powers conferred upon him by reg. 147. Some doubt was expressed as to whether this regulation might not be too wide and therefore beyond the regulation-making power. It was made under s. 108 of the Act which provides that "The Governor-General may make regulations, not inconsistent with this Act, prescribing all matters which by this Act are required or permitted to be prescribed or which are necessary or convenient to be prescribed for giving effect to this Act or for the conduct of any business relating to the Patent Office". The meaning of a similar section was recently considered by this Court in Morton v. Union Steamship Co. of New Zealand Ltd. [1] . It was said that "A power expressed in such terms to make regulations enables the Governor-General in Council to make regulations incidental to the administration of the Act. Regulations may be adopted for the more effective administration of the provisions actually contained in the Act, but not regulations which vary or depart from the positive provisions made by the Act or regulations which go outside the field of operation which the Act marks out for itself" [2] . A regulation in the same form as reg. 147 is contained in the English Patent Rules of 1890, 1903 and 1908. The regulation does not appear to me to be beyond power. The purpose of the Patents Act is to grant patents to those persons who are entitled to apply for letters patent for inventions and make the necessary applications. Section 10 of the Act provides that there shall be a Commissioner of Patents who shall be appointed by the Governor-General and who shall under the Minister have the chief control of the Department of Patents. The procedure for obtaining letters patent commencing with the application and culminating in the grant is intricate and involved and is such that errors may easily creep into documents and irregularities occur in procedure. It would be strange indeed if regulations made under a power to make regulations for giving effect to the Act or for the conduct of any business relating to the Patent Office could not provide that in cases not specially provided for in the Act the commissioner should have power to allow documents to be amended and irregularities in procedure to be corrected. Such powers would be incidental to the wide powers of administration conferred upon the commissioner by the Act. They would conduce to the more effective administration of the provisions actually contained in the Act.

[17]

Regulation 147 confers on the commissioner two powers: - (1) power to amend any document for the amending of which no special provision is made by the Act, if, and on such terms as, the commissioner thinks fit; and (2) power to correct any irregularity in procedure, which in the opinion of the commissioner may be obviated without detriment to the interests of any person, if, and on such terms as, the commissioner thinks fit. The powers are, I think, split into two because the Act makes special provision for amending some documents, and the regulation had to make the power of the commissioner to amend documents subject to these special provisions, otherwise the regulation would have been pro tanto inconsistent with the Act and to that extent at least invalid. But I do not think that the regulation means that if the Act makes special provision for the amending of a document in some respect the commissioner has no power to amend that document in respects which are outside the special provision. Section 39 provides that every application and specification shall forthwith be referred by the commissioner to an examiner who shall ascertain and report as to: (a) whether the title has been stated as prescribed; (b) whether the invention has been described as prescribed; and (c) whether the application and specification are as prescribed. Section 42 provides that, if the examiner reports adversely to the application or specification on any matter referred to in ss. 39 and 40, the commissioner may (a) require compliance by the applicant within a specified time with such directions for the amendment of the application or the specification as the commissioner sees fit to give; or (b) direct that the application instead of dating from the time when it was lodged shall date from such later specified date not being later than the date of compliance with the directions for amendment. These provisions of the Act relate to an examination of the application and specification by an examiner to ascertain whether they are in the prescribed form. The applicant is not concerned or notified unless the application or specification on its face fails to comply with the prescriptions of the Act or regulations. The Act does not make any special provision for an applicant, who discovers he has made a mistake in filling in the particulars required by Form A, applying to the commissioner to amend the application. It would be strange if there was no power in the Act or regulations to allow such an applicant to request the commissioner to amend the mistake and for the commissioner to grant the request. This would be one instance where a document was amended in a respect for the amendment of which no special provision was made by the Act. An instance where the Act makes special provision for amending a document, in this case the specification, is provided by s. 71. The amendments referred to in this section are matters of substance for the validity of the invention may depend upon the success of the request. They can be made before or after the grant of the letters patent. They relate to three specific forms of amendment. They do not relate to a mistake for instance in the form of request caused by the omission of the written consent of a joint holder or a mortgagor or mortgagee. Such a mistake could be corrected by the commissioner allowing the request to be amended under reg. 147. To my mind reg. 147 is directed to authorizing the commissioner to amend documents and correct irregularities in procedure where an application is made by a person entitled to apply for a patent for an invention and there is some mistake in the documents which relate to the application or some irregularity in the steps which are taken for the purpose of obtaining letters patent for the invention. The regulation does not in express terms limit the powers of the commissioner to the period between the lodging of the application and the grant of the letters patent and there does not appear to me to be any justification for making any such implication. The applications and letters patent of which Martin seeks an amendment are documents which came into being as part of the proceedings under the Act over which the commissioner has the general administrative control and they are therefore documents which can be amended pursuant to reg. 147.

[18]

During the argument the question arose whether the condition that the letters patent shall be void if it is made to appear that Martin is not the actual inventor of the inventions has any legal effect. The condition is an adaptation of an old condition inserted in letters patent granted to inventors by the Crown before the days of Patents Acts. The old condition said "if it is made to appear to us, our heirs or successors or any six or more of our Privy Council". The condition was imposed at a time when letters patent were only granted to actual inventors. If the person to whom the grant was made falsely represented to the Crown that he was the actual inventor whereas he was not, the grant was revoked by proceedings of scire facias. Scire facias was abolished by s. 86 (1) of the Patents Act which provides that no proceedings by way of scire facias shall be taken to repeal a patent. Section 86 is the section of the Patents Act which provides for the revocation of patents. Sub-section (3) provides that every ground on which a patent might at common law be repealed by scire facias shall be available as a ground of revocation. So it would seem that at least in proceedings for revocation the validity of the letters patent granted to Martin might be attacked for breach of the condition or in other words on the ground that the representation that he was the actual inventor was false. The proviso in which the condition is contained provides that the letters patent shall be void if it is made to appear that the patentee is not the actual inventor of the invention. The proviso does not state to whom it must be made to appear but it must refer to the Court in which the proceedings are taking place. The proviso also provides that the letters patent shall be, that is shall then become, void. Probably the letters patent could only be avoided for breach of the condition in proceedings for revocation and the ground could not be taken as a defence in proceedings for infringement. But this is by no means certain and it is not necessary or even wise to decide any of these questions in the present proceedings. The fact that Martin is at least in jeopardy gives him a sufficient interest to make the requests. It was also suggested during the argument that the effect of the condition may be to invalidate the letters patent ab initio so that they are already void and this invalidity cannot be cured by any subsequent amendment. But the condition is quite explicit that the letters patent shall be void if it is made to appear that the patentee is not the actual inventor of the invention and, if the mistake can be cured before it is made so to appear to the Court in proceedings for revocation or possibly for infringement, this ground of possible invalidity will disappear.

[27]

The material formally before the Court was to some extent elaborated by certain information put before the Court by counsel for the applicant and accepted by counsel for the commissioner. Before briefly summarizing the position, it is necessary to refer to certain forms which have been prescribed by the regulations made under the Act. Regulation 4 (2) provides that the forms contained in the Second Schedule may, so far as they are applicable, be used in any proceeding to which they are appropriate. The Second Schedule contains a number of forms which are appropriate, in various circumstances, to applications for letters patent. Two of these are material. The first is Form A. This form is appropriate to an application originating in Australia by an actual inventor or his assignee, agent, attorney or nominee. After the formal words of application, the form proceeds: - "And I do hereby declare that I am....................the actual inventor of the said invention". A marginal note indicates that there should be inserted in the blank space "The Actual Inventor ; the Assignee, Agent, Attorney or Nominee of the Actual Inventor". If, of course, the applicant is any person other than the actual inventor, the words, "the actual inventor of the said invention", ought to be deleted, but this obvious fact is not expressly indicated. Actually it is clear, in view of the marginal direction, that those words ought not to appear printed in the form at all. The second material form is Form A6, which is appropriate to an application under international or intercolonial arrangements - what is commonly called a "convention application" (s. 121). This form does not provide for any statement as to the capacity in which the applicant applies - whether as actual inventor, assignee, or otherwise. It merely provides for the applicant to declare that he has made a "foreign" application and to give the date thereof. This is so although, since 1921, the legal representative or assignee of a foreign applicant is entitled to the benefit of s. 121. Both Form A and Form A6 conclude with the words: "And I make this declaration conscientiously believing it to be true".

[35]

So far as s. 117 of the Act is concerned, I can see nothing wrong with the view which the commissioner took. He said: - "So far as the Register is concerned, no error, clerical or otherwise has been shown to exist. The entries prescribed by s. 20 have been made in the Register, and they accord with the particulars in the application and the letters patent granted thereon So far as "any proceedings" are concerned, I do not consider that I can regard the application for a patent as a proceeding at this stage: it ceased to be a proceeding when that for which it applied was granted". And he quoted a passage from the judgment of Luxmoore J. (as he then was), in In the Matter of an Application for a Patent by Imperial Chemical Industries Ltd., Fawcett and Walker [1] . There was in truth no relevant proceeding in the Patents Office at the relevant time. But, even if this be too narrow a view, the error in the application cannot, in my opinion, be described as a "clerical error". That expression is, no doubt, one of a somewhat elastic character, but it seems to me impossible to say that it covers such a mistake of substance as was here made. In the New Oxford Dictionary one meaning attributed to the word "clerical" is "Of or pertaining to a clerk or penman: esp. in "clerical error", an error made in writing anything out". According to Webster, one meaning of the word "clerical" is "Of or relating to a clerk or copyist", and an example given is "clerical error, an error made in copying or writing". Probably no one would deny that a clerical error may produce a significant, and even profound, effect as for example, in a case in which a writer or typist inadvertently omits the small word "not". But 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. There is no evidence that the mistake so arose in the present case, and it is very difficult to see how it could have so arisen. The mistake, however innocently made, consists in a simple mis-statement of fact, and that is the whole of the matter.

[38]

But, apart altogether from any question of the effect of s. 117 or the validity of reg. 147, it appears to me that the commissioner was entirely right when he said that it would surely be improper for him, by altering the application, in effect to create an error in the register, which he could not alter. The considerations which lie behind what the commissioner said serve indeed to reveal the reality of the position and the true nature of what the patentee seeks. The truth is that the amendment of documents is a course entirely inappropriate to the situation which has arisen, and a course which, so far as I can see, could not affect that situation in any way. It is a fact that letters patent have been granted, and they bear a certain date. It is a fact that those letters patent were granted on an application in which the patentee declared that he was the actual inventor of the invention to which they relate. It is quite impossible to undo or annihilate those facts. The application has completely performed its function, and done its work for better or worse. I should (though, of course, I express no opinion on the point) be reluctant, on the material before us, to think that what has happened provides a ground for saying that the patent is invalid. But either it is valid or it is invalid. If it is valid, no steps of any kind are necessary. If it is invalid, no steps of any kind can be effective. For it was in fact granted on the declaration in fact made, and nothing can alter those facts. What is really sought by the patentee here is to have something done which will create a state of falsity in the letters patent and in the register, by making it appear that the patent was granted on a declaration on which it was not in fact granted. The application contains an error of fact. But the letters patent and the register contain, as the commissioner said, no error of any kind. The effect of what is sought would be to correct the application, but to falsify the patent and the register. I cannot think that this can be done. If the power existed, it could not properly be exercised.