Societe des Usines Chimiques Rhone-Poulenc v Commissioner of Patents

Societe des Usines Chimiques Rhone-Poulenc v Commissioner of Patents - [1958] HCA 27 - HCA 1958 case summary — Zoe

[8]

Section 33 of the old Act provided that an application for a patent should be for one invention only, and s. 65 provided that a patent should be granted for one invention only. The Act contained general provisions for the amendment of specifications before and after grant, but it contained no specific provision relating to specifications which claimed more than one invention. The matter was, however, dealt with by regulation. Regulation 11 of the Patent Regulations 1912 provided: - "(1) When a specification comprises several distinct matters, they shall not be deemed to constitute one invention by reason only that they are all applicable to or may form parts of an existing machine, apparatus, or process. (2) Where a person making application for a patent has included in his specification more than one invention, the Commissioner may require or allow him to amend such application and specification and drawings or any of them so as to apply to one invention only, and the applicant may make application for a separate patent for any invention excluded by such amendment. (3) Every such last-mentioned application may, if the Commissioner at any time so directs, bear the date of the original application, or such date between the date of the original application and the date of the application in question, as the Commissioner directs, and shall otherwise be proceeded with as a substantive application in the manner prescribed by the Act and by these Regulations." The new Act dealt itself specifically with the matter, incidentally taking away from the commissioner the discretion which reg. 11 had given him as to priority dates. By s. 51 it provided: - "(1) A person who has made an application for a patent may, at any time before publication of the complete specification, make one or more further applications in respect of an invention disclosed in the provisional specification or complete specification lodged in respect of the first-mentioned application." Section 45 (so far as relevant) provided: - "(1) Subject to this Act, the priority date of a claim of a complete specification is the date of lodgment of that complete specification. (4) The priority date of a claim of a complete specification lodged in respect of a further application made by virtue of section fifty-one of this Act, being a claim fairly based on matter disclosed in the provisional specification or complete specification lodged in respect of the original application, is the date which would have been the priority date of that claim if that claim had been included in the complete specification lodged in respect of the original application." The Patents Act 1955, by s. 5, amended sub-s. (4) of s. 45 so as to make the last words read "if that claim were a claim of the complete specification lodged in respect of the original application." Section 5 of the Act of 1955 also added to s. 45 a new sub-s. (5), which is of great importance in the present case, because it deals with cases (of which this is one) where an original application has been made under the old Act and what is commonly known as a "divisional application" has been made under the new Act. Sub-section (5) reads: - "Where, in respect of an application for a patent lodged under the repealed Acts, the Commissioner has required or allowed the applicant to amend the application and specification and drawings or any of them so as to apply to one invention only and the applicant has made an application under this Act for an invention excluded by the amendment, the priority date of a claim of the complete specification lodged under this Act, being a claim fairly based on matter disclosed in the provisional specification or complete specification lodged under the repealed Acts, is the date which would have been the priority date of that claim if that claim were a claim of the complete specification lodged in respect of the application under the repealed Acts." The applicant says that the present case falls within s. 45 (5), and that it is entitled to a grant of no. 757 with the priority date of 17th December 1951. There was nothing, so far as I can see, to prevent the applicant lodging no. 757 apart altogether from s. 45 (5), but it is only under s. 45 (5) that it can obtain the priority date which it desires. Section 49 (3) applies only where the original application has been made under the new Act.

[26]

wherein the chlorine substituent is in the 1- or 3-position and Y represents a halogen atom. This is the other process which I have described above, and which works by way of "Reaction B". Directions are then given for preparing the chlorophenthiazine compounds "employed as starting material in one or other of the two abovementioned processes", i.e. the process by Reaction A and the process by Reaction B. Then follow four "examples". The first three involve Reaction A: the fourth involves Reaction B. The specification then claims: - "1. A process for the preparation of new therapeutically useful phenthiazine compounds of the formula" (which is then set out again) "wherein the chlorine substituent is in the 1- or 3-position, which comprises the conversion of meta-chloro-diphenylamine by known methods for the conversion of a diphenylamine into a n-dialkylamino alkyl phenthiazine. 2. A process as claimed in claim 1 which comprises condensing 1- or 3-chlorophenthiazine or a mixture thereof with a 3-dimethylamino-1-halogeno-propane." Claim 6 is the only other claim that need be mentioned. This claim claims a product as distinct from a process, and is for "phenthiazine compounds of the formula" (which is again set out) "wherein the chlorine substituent is in the 1- or 3-position when prepared by the process (sic) hereinbefore particularly described and ascertained." For reasons which I have given, it is, in my opinion, of no consequence whether this claim 6 should be here read as including a claim for the product when prepared by Reaction B. Claim 6 was never amended (except that it was re-numbered and became claim 5), and in the specification on which the patent was granted the singular - "process" - is, as will be seen, correct. I am disposed to think, however, that in the specification as lodged, the singular appears by reason of a clerical error, and that the word should be read as "processes". Two distinct processes have been clearly described in the body of the specification.

[49]

The question of what constitutes a single invention within the meaning of ss. 33 and 65 of the old Act (s. 35 of the new Act) may, I think, be a very difficult question, and there appears to be very little authority on it. This is perhaps not surprising, for, while one would suppose that the question must not seldom arise, it is a question which arises in the office and is probably generally settled there to the satisfaction of the applicant and of the commissioner: that a patent relates to more than one invention is not a ground for revocation after grant. The present case is curious in that it is the applicant who seeks to maintain that his specification claimed more than one invention, and the commissioner who opposes that view: it will usually, I should imagine, be the other way round. There are two cases in Griffin - Jones' Patent [2] and Re Hearson's Patent [3] . In the former of these the Law Officer (Herschell S.-G.) said: - "It seems to me that the general object of the invention is the test by which the question must be decided I should always allow alternative devices for producing a particular object as one invention." [2] Reference may also be made to In re Z's Application for a Patent [4] and In re J's Application [5] . In the former case the Law Officer (Evans S.-G.) said: - "It is impossible to give a definition of what constitutes "one invention" which would be applicable to every case The question cannot be decided upon any strict principle. A certain amount of discretion must be permitted to the Comptroller; and unless he exercises that discretion in a way which is clearly unreasonable I do not think that the Law Officer ought to interfere with it" [6] . This passage cannot, of course, be pressed too far. The matter is not simply one for the discretion of the comptroller (or commissioner). Ultimately it is a matter of the application of a legal standard. The passage is useful, however, in bringing out that a particular specification may quite reasonably be regarded either as disclosing one invention only or as disclosing two or more inventions.

[52]

The conditions which I have stated are fulfilled in the present case in relation to nos. 6971 and 757. It is important that the original application was primarily for a process. It is true that the specification of no. 6971 as lodged begins by saying that "This invention relates to new phenthiazine derivatives", and proceeds immediately to give the formula of the substance which has been called "Largactil". But it gives a little later a "preferred process for preparing the new compounds" - a process involving Reaction A, and it later describes an alternative process, which is a process involving Reaction B. The first five claims are for processes, the second being for a process specifically involving Reaction A. The sixth and last is for the product. But it is not for the product simpliciter: it is for the product only when prepared by the "process" which has been "described and ascertained". The important point is that there is no claim apart from a process, and two processes - the Reaction A process and the Reaction B process - have been clearly described in the specification. The applicant has tied himself to a process or processes. He has defined his invention by reference to his process or processes. When all reference to one of the two processes which he has disclosed is eliminated by amendment the result is, in my opinion, correctly described by saying that his specification has been made to "apply to one invention only". And, when he makes an application for the process which has been eliminated by amendment from his original application, he is, in my opinion, "making an application for an invention excluded by the amendment". The case thus falls, in my opinion, within s. 45 (5) of the Act, and the applicant is entitled to a grant of no. 757 with 17th December 1951 as its priority date. It may, of course, be (though I could not say so on the evidence) that what have been called Reaction A and Reaction B are no more than obvious chemical equivalents. But the relevant amendments of the specification of no. 6971 did not proceed on that basis. They eliminated all reference to the process by Reaction B, and left the applicant prima facie unprotected in respect of the product prepared by a process which he had disclosed.

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