Surefoot IP Holdings Pty Ltd v All Footings Solutions Pty Ltd

ROFE J: 1 The Applicant (Surefoot) is the patentee of Australian Patent no. 2012276281 entitled "Improved footing plates" (the Patent). The Patent claims priority from a provisional patent specification numbered 2011902537 (the Provisional). 2 In this proceeding, commenced on 4 June 2021, Surefoot seeks relief against the respondents (AFS) in respect of alleged infringement of claims 2, 3, 4, 5, 6 and 7 of the Patent. AFS has cross-claimed seeking revocation of all the claims of the Patent on various grounds including lack of inventive step and novelty, lack of support, lack of sufficient description and lack of utility and clarity. 3 On 1 October 2021, Surefoot filed a further amended Position Statement on Infringement (the amended PSI). On 15 October 2021, AFS filed a response to Surefoot's amended PSI. The parties have not yet filed evidence in the proceeding. 4 By way of an interlocutory application dated 30 November 2021, Surefoot seeks orders pursuant to s 105(1) of the Patents Act 1990 (Cth) (the Act) to amend claim 2 of the Patent to correct what it submits is a clerical error in that claim. 5 In compliance with r 34.41(1) of the Federal Court Rules 2011 (Cth) (FCR), on 24 September 2021, Surefoot's lawyers wrote to the Commissioner of Patents (Commissioner), notifying her of Surefoot's intention to make the amendment application, and enclosing a copy of the proposed application, the proposed amendment to the Patent and a proposed advertisement of the amendment for the Official Journal of Patents. 6 In a letter dated 1 October 2021, the Commissioner advised that she was prima facie satisfied that the proposed amendment met the requirements of s 102 of the Act, and that she did not seek to be heard in relation to the proposed amendments. 7 Notice of Surefoot's intention to amend pursuant to s 105 of the Act was advertised in the Official Journal of Patents Supplement published on 14 October 2021. Pursuant to r 34.41(4), Surefoot filed its amendment application on 30 November 2021. 8 AFS initially opposed the amendment application. Surefoot did not receive written notice from any person who is not a party to the proceeding indicating its intention to oppose the amendment application within 28 days of the advertisement of the amendment application. 9 On 31 January 2022, Surefoot filed short submissions in support of its amendment application. 10 The amendment application was set down for hearing on 15 February 2022. On 11 February 2022, the Court was advised that AFS no longer opposed the amendment application, and that the parties agreed that the issue of the costs of the amendment application should be reserved to be addressed at the same time as submissions on costs following judgment in the substantive proceeding. 11 On that basis I agreed to deal with the amendment application on the papers. 12 For the reasons set out below, I am satisfied that the amendment of the Patent as requested should be directed. In so doing I have relied on the evidentiary materials set out below and the succinct written submissions made on behalf of Surefoot.

The Patent and the proposed amendment 13 The invention described and claimed in the Patent relates to the provision of footings for posts or beams in buildings and structures. In particular, the invention relates to improved footing plates for posts, poles or upright beams in buildings and similar structures. 14 The Patent has 8 claims. Surefoot seeks to amend a clerical error in claim 2. I set out claims 1 and 2 below with the relevant words highlighted. 15 Claim 1 of the Patent claims: A footing plate including a planar web through which a plurality of tubes pass, said tubes being adjacent the edges of the planar web and being disposed at angles to the planar web, none of said angles being 90˚, said tubes being sized to permit the passage therethrough of pins for fixing into underlying ground, said planar web being provided with a downwardly extending flange on at least one of the edges of said planar web. (Emphasis added.) 16 Claim 2 of the Patent currently claims: A footing plate including a planar web from which a plurality of tubes originate and descend, said tubes being adjacent the edges of the planar web and being disposed at angles to the planar web, none of said angles being 90˚, said tubes being sited to permit the passage therethrough of pins for fixing thereof into underlying ground, the planar web being provided with a downwardly extending flange on at least one of the edges of the planar web. (Emphasis added.) 17 By its amendment application, Surefoot seeks to correct the word "sited" in claim 2 so as to read "sized".

Surefoot's submissions 18 Surefoot submits the amendment of "sited" to "sized" is consistent with the language used in: (a) the similarly worded claim 1; (b) the consistory clauses in each of paragraphs [3] and [4] of the specification; and (c) the Abstract. 19 Surefoot notes that there is no use of the word "sited" in the specification. 20 Surefoot submits that the context provided by the specification makes clear that the word "sited" should read "sized". Surefoot contends that the word "sited" is both a clerical error (involving a single-letter typographical error), and an obvious mistake, when the context provided by the specification as a whole is considered. 21 In the circumstances, Surefoot submits that s 102(3) of the Act applies, such that the other requirements in s 102 need not be met. 22 Surefoot submits that in any event, the requirements of s 102(1) of the Act are also met in the case of this particular amendment. The word "sited" in claim 2 would still be implied post-amendment as the requirement that the "said tubes" be "sized to permit the passage therethrough of pins for fixing thereof into underlying ground" would be understood as requiring that the tubes in fact permit such pins to pass through them. 23 Surefoot notes that in AFS's response to Surefoot's amended position paper on infringement, AFS accepted that its products take the relevant claim integer whether the amendment is made or not (as both 'sized' and 'sited' make practical sense). It also notes that no issue of invalidity appears to turn on the proposed amendment. 24 Surefoot submits that the nature of the error is one that appears to make little (if any) practical difference to the scope of the claim, and postulates that might be relevant both as to why the error was made in the first place, and why it was not noticed for some time.

The Act 25 Section 105 of the Act relevantly provides: (1) In any relevant proceedings in relation to a patent, the court may, on the application of the patentee, by order direct the amendment of the patent request or the complete specification in the manner specified in the order. … (4) A court is not to direct an amendment that is not allowable under section 102. 26 Section 102 of the Act relevantly provides: (1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together: (a) the complete specification as filed; (b) other prescribed documents (if any). … (3) This section does not apply to an amendment for the purposes of: (a) correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification; or …

Section 102(3): clerical error or obvious mistake 27 The onus to establish that the error is a clerical error or an obvious mistake lies with the patentee seeking the amendment: Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (2010) 88 IPR 1 at [14] (Bennett J) (Expo-Net). 28 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: R v Commissioner of Patents; Ex parte Martin (1953) 89 CLR 381 at 406 (Fullagar J) (Ex parte Martin). 29 In Expo-Net, Bennett J considered the issue of "obvious mistake" and at [13] approved the statement of Graham J in General Tire and Rubber Co (Frost's) Patent [1972] RPC 259 at 279 that an obvious mistake is one that "the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction". 30 In Garford Pty Ltd v Dywidag-Systems International Pty Ltd [2014] FCA 1039, Yates J discussed the nature of a "clerical error" and "obvious mistake" and said the following at [14] to [19]: 14 In The Queen v Commissioner of Patents; Ex Parte Martin (1953) 89 CLR 381, Williams ACJ said (at 395): … A clerical error, I would think, occurs where a person either of his own volition or under the instructions of another intends to write something and by inadvertence either omits to write it or writes something different. … 15 Fullagar J (with whom Kitto J and Taylor J agreed (at 408)) said (at 406), that the expression "clerical error" is of a "somewhat elastic character". After considering various dictionary meanings of the word "clerical", his Honour continued: … 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. … 16 In General Tire & Rubber Company (Frost's) Patent [1972] RPC 271, Graham J (at 279) considered an "obvious mistake" to be one which: … involves that the instructed public can, from an examination of the specification, appreciate the existence of the mistake and the proper answer by way of correction. 17 In reaching that conclusion, his Lordship distinguished between such a mistake and a mistake that had been "obviously made". His Lordship (at 278) explained the distinction as follows: It is the mistake which must be obvious and not the fact that it has been made. This implies, to my mind, that both the fact of mistake and the correction necessary must be clear to the reader's mind, and it is not enough if he merely appreciates the presence of a mistake. If, in a mathematical context, it is said "2 and 2 make 5", the reader would immediately say: "5 is an obvious mistake for 4". If, however, there is more than one possible correct answer to the question, particularly where the answers may depend on intention or judgment, the reader would say: "Obviously a mistake has been made but I cannot tell you what is the right answer". The wording of the section itself therefore, to my mind, shows an intention in favour of the first construction rather than the second. 18 In the course of considering that question, his Lordship observed (at 277) that, for the purpose of correcting an obvious mistake: … it does not matter that the claim may be enlarged by the amendment. 19 Both these cases accept that the correction of clerical errors and obvious mistakes may involve the making of very significant amendments to the specification and, in particular, the claims. Yet, such amendments are allowable if they are truly "clerical errors" or "obvious mistakes". 31 A mistake can be an obvious mistake even where trained minds have failed to notice that mistake for "quite a long time", as Russell LJ further explained in Farmhand Inc v Spadework Ltd [1975] RPC 617 (Farmhand) at 619-20: One is familiar, in all sorts of realms, with the fact that a person who may be in fact responsible for the production of a document may know perfectly well what he means to say and may well think he has said it, and is therefore the last person who is likely to notice that he has failed to say it by mistake. If one really set a standard… that a mistake cannot be an obvious mistake because a trained mind has failed to notice it, then of course… you could never have an obvious mistake in a patent, because some trained mind at some stage has produced that document and has not noticed the mistake… In some sense it may be true to say that the more glaring (and therefore the more unexpected) the mistake is, the less likely is anybody with a skilled mind to notice it. They simply would not believe that it could be there; and this is just that kind of mistake.

Section 105(1): discretion of the Court 32 Even where the requirements of s 102 are met, the word "may" in s 105(1) indicates that the Court has a discretion as to whether or not to allow an amendment. 33 The Court's discretion arising under s 105(1) to direct the amendment of a patent in relevant proceedings is broad and unfettered. However, it is generally exercised by reference to a number of guiding principles that seek to balance the right of the patentee to apply to amend its patent in an appropriate case, and the public interest in ensuring that an amendment application is made promptly, for proper purposes, and not so as to allow the patentee to obtain an unfair advantage were it to be allowed: Neurim Pharmaceuticals (1991) Ltd v Generic Partners Pty Ltd (No 2) (2019) 139 IPR 424 at [107] (Nicholas J). 34 In Les Laboratoires Servier v Apotex Pty Ltd (2010) 89 IPR 219, Emmett J (Kenny and Stone JJ agreeing) observed at [60] that there is no limitation in s 105 of the Act on the purpose for which an amendment may be directed. However, as Kenny and Stone JJ said at [76], guidelines have been developed in the authorities to assist in the exercise of the discretion. 35 The Full Court (Bennett, Besanko and Beach JJ) in the later case Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61 at [243] set out a non-exhaustive list of the factors relevant to the exercise of the discretion to grant or refuse amendments of granted patents, relevantly and in summary: • The discretion exists for the benefit of the patentee. • The onus to establish that amendment should be allowed is on the patentee. • Generally, a permissible amendment (ie one which is permitted under the Act) will be allowed unless there are circumstances which would lead the court to refuse amendment. • The patentee must make full disclosure of all relevant matters. • The Court's focus is on a patentee's conduct, not the merit of an invention. • Amendment should be sought promptly and where a patentee delays for an unreasonable period, the patentee has the onus of showing that it delayed on reasonable grounds, such as a belief, on reasonable grounds, that an amendment was not necessary. • Unreasonable delay is a circumstance likely to lead to refusal of the amendment. • In assessing delay, the time when the patentee was unaware and reasonably did not know of the need for amendment is not taken into account. The relevant delay is from when the patentee knows of the likely invalidity, or has its attention drawn to a defect in the patent, or is advised to strengthen the patent by amendment. That is, amendment will not be permitted in cases where a patentee knows or ought to know that amendment should be sought and fails to do so for a substantial period of time. Thus the reasonableness of the conduct of the patentee is a relevant consideration when assessing delay. • Mere delay is not, of itself, sufficient to refuse to exercise the discretion to amend. The fact of delay is, however, relevant to whether the respondent or the general public have suffered detriment. • If a patentee seeks to take unfair advantage of the unamended patent, knowing that it requires amendment, then refusal of the amendment is likely. • The proportionality of the asserted culpability of the patentee as compared with the effect of loss of protection for the invention should be considered.

Summary of the evidence 36 Surefoot relies on the following affidavits in support of its application: (a) one affidavit of Mr Kerry Parsons dated 25 November 2021. Mr Parsons is the sole director of Surefoot, as well as a director of Surefoot Systems International Ltd (SSI), the previous Patentee, Pandoe Pty Ltd and another company incorporated in Hong Kong, Surefoot Systems International Ltd; (b) one affidavit by Dr Steven Borovec dated 25 November 2021. Dr Borovec is Surefoot's patent attorney; and (c) two affidavits by Ms Virginia Beniac-Brooks dated 30 November 2021 and 27 January 2022. Ms Beniac-Brooks is the solicitor for Surefoot. 37 AFS filed an affidavit by its solicitor, Ms Robynne Sanders, dated 17 December 2021. 38 Mr Parsons' evidence was that on 22 February 2017, Neil Despotellis, who is listed as the inventor on the Patent, assigned his rights, title and interest in the Patent to SSI. On 19 March 2020, SSI assigned its rights, title and interest in the Patent to Surefoot. These changes in ownership of the Patent were recorded in the IP Australia database. 39 Mr Parsons' evidence was that prior to 24 September 2021, he was unaware of the fact that the word "sited" was used in claim 2 instead of the word "sized" elsewhere in the Patent 40 Dr Borovec gave evidence that on 30 August 2021, he was reviewing a draft of Surefoot's position statement on infringement and noticed that the word "sited" was used in claim 2 of the Patent instead of "sized". This was the first time that he noted the discrepancy between the word "sited" in claim 2, and "sized" in claim 1 and in the specification. On reviewing the Patent he saw that: (a) the word "sized" is used in the same phrase in claim 1, which reads "said tubes being sized to permit the passage therethrough of pins for fixing into underlying ground"; (b) each of paragraphs [3] and [4] uses the same wording as that used in claim 1 (although with the word "thereof" after the word "fixing"); (c) the Abstract uses the similar language "the tubes (14) being sized to permit the passage therethrough of pins"; and (d) the word "sited" is not used anywhere in the specification other than in claim 2. 41 For these reasons Dr Borovec's evidence was that he understood that the word "sited" in claim 2 should read as "sized". 42 Dr Borovec gave further evidence that the Provisional, filed 28 June 2011, did not use the word "sited". Claim 1 of the Provisional referred to "said tubes being sized to permit the passage therethrough of pins for fixing into underlying ground". The international application, filed on 28 June 2012, contained the word "sited" in claim 2. 43 An examination of the Provisional shows that it has five claims. Claim 2 of the Provisional is different to claim 2 of the Patent and claimed "a footing plate as claimed in claim 1 wherein the underside of said planar web is provided with at least one rib for strengthening said planar web". 44 Ms Beniac-Brooks gave evidence of a telephone call with Mr Robert Kelson, the patent attorney for the inventor and original applicant for the Patent, Mr Despotellis, in which he informed her that: (a) he is currently a principal at BKPTMC, a patent attorney firm; (b) between 2011 and 2015 he was a principal at Callinans, another patent attorney firm; (c) whilst at Callinans he acted for Mr Despotellis in preparing and filing on his behalf the provisional patent specification numbered 2011902537 from which the Patent claims priority, and an international application numbered WO2013/000022; (d) Callinans merged into Fisher Adams Kelly in November 2015; (e) he does not recall being aware that the word "sited" was used in claim 2; and (f) he does not know how the word "sited" came to be used in claim 2 of the international patent application and he considers that his happened as a result of a copying error and that it should read "sized", consistently with claim 1. 45 Ms Beniac-Brooks also gave evidence that she first notified AFS's lawyers of Surefoot's application to amend by letter dated 31 August 2021. 46 There was no evidence to suggest that Surefoot, its director, patent attorneys or legal advisers was aware of the purported error at any earlier time.

Consideration 47 The error with respect to "sized" appears to have arisen at some stage in between the filing of the Provisional and the international application. The evidence relied upon by Surefoot describes in high level detail the steps from preparation of the Provisional to Dr Borovec becoming aware of the error. On the basis of that evidence I am not satisfied that the error satisfies Fullagar J's description of a clerical error in Ex parte Martin. 48 I am, however, satisfied that the error is an obvious mistake. The existence of the mistake and the proper answer by way of correction can be appreciated from an examination of the Patent. The word "sited" only appears in claim 2, it is not used anywhere else in the specification. Claim 1, which is in similar form to claim 2, uses "sized"; and the consistory clauses at [3] and [4] of the specification use "sized". 49 It is not fatal to that conclusion that despite review by many "trained minds" in the course of prosecution, the error was not noticed until August 2021. The error is an obvious mistake of the kind described by Russell LJ in Farmhand. 50 Given my conclusions that the amendment falls within the scope of s 102(3), it is unnecessary to determine Surefoot's alternative submission that the amendment satisfies the requirements in 102(1). However, I note that even if the error were not an obvious mistake, the Commissioner has reviewed the proposed amendment and is prima facie satisfied that the amendment meets the requirements of s 102 of the Act. 51 There is no evidence of any disentitling conduct on the part of Surefoot. There is no evidence that Surefoot sought to take advantage of the unamended claim 2 of the Patent in any way prior to the amendment being made. The proceedings were commenced on the basis of the unamended patent, however, the amendment does not appear to affect the infringement or validity cases. 52 There is no real explanation of how the error occurred, or how it was overlooked for so long. However, since becoming aware of the error, Surefoot has moved promptly to notify AFS and the Commissioner of its intention to amend, and to commence the amendment process prescribed by the FCR. 53 No advantage has been gained by Surefoot as a result of its failure to notice the relevant error, or its assertion of the unamended claim. 54 There is no evidence that AFS, or any other person, has been prejudiced by reason of the Patent in its unamended form. No unfair advantage has been sought. There has been no unreasonable delay in seeking the amendment, and there are no other circumstances which would lead the Court to refuse to make the proposed amendments. 55 In all the circumstances I am satisfied that it is appropriate to allow the proposed amendment to claim 2 of the Patent pursuant to s 105(1) of the Act. I certify that the preceding fifty-five (55) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe.