FEDERAL COURT OF AUSTRALIA

Fina Research SA v Halliburton Energy Services Inc [2003] FCA 251

PATENTS – opposition proceedings – amendments to patent application – PCT application translated to English from German – whether an error in translation is a “clerical error” or “obvious mistake” for the purposes of s 102 of the Patents Act 1990 (Cth) – where the same error occurs twice in translation.

PATENTS – opposition proceedings – amendments to patent application – amendment seeking to exclude an element of invention – whether amendment allowable because of subs 102(1) or subs 102(2)(b) of the Patents Act 1990 (Cth)

WORDS & PHRASES – “clerical error”

Patents Act 1990 (Cth), ss 40, 88, 89, 102, 104, 234, 235

R v Commissioner of Patents; Ex parte Martin (1953) 89 CLR 381 discussed

In Re Segelman (dec’d) [1995] 3 All ER 676 referred to

Wordingham v Royal Exchange Trust Co Ltd [1992] 2 WLR 496 referred to

Sumitomo Corp v Credit Lyonnais Rouse Ltd [2002] 4 All ER 68 referred to

Kawasaki Steel Corporation v Broken Hill Pty Co Ltd (1988) 13 IPR 168 referred to

Re: Distillers Co Ltd’s Application (1953) 70 RPC 221 at 223 referred to

W J Voit Rubber Corp’s Application (1965) AOJP 1752 referred to

RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 referred to

Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (1999) 48 IPR 625 referred to

ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (2000) 106 FCR 214 referred to

FINA RESEARCH SA v HALLIBURTON ENERGY SERVICES INC & COGNIS DEUTSCHLAND GmbH & HENKEL KOMMANDITGESELLSCHAFT AUF AKTIEN & BAROID DRILLING FLUIDS INC & COGNIS DEUTSCHLAND GMBH & CO KG

N 552 OF 2000

MOORE J

26 MARCH 2003

SYDNEY

THE COURT ORDERS THAT:

1.         Subject to further order and order 2, the amendments to claim 1 as allowed by the delegate in his decision of 5 May 2000, not be allowed so that claim 1 reads:

1. Use of selected esters which are flowable and pumpable within the temperature range of from 0 °C to 5 °C of monofunctional alcohols having from 2 to 12 carbon atoms and olefinically mono- and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms or mixtures thereof with minor quantities of other, especially saturated, monocarboxylic acids as the oil phase or at least of a substantial part of the oil phase, of invert drilling muds suitable for an environmentally acceptable exploitation of off-shore natural oil and/or natural gas deposits, which drilling fluids contain, in a continuous oil phase, a dispersed aqueous phase and emulsifiers, weighting agents, fluid-loss additives and optionally other common additives together with an alkali reserve, with the proviso that strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine are excluded from the concomitant use and the amount of lime, if present as an additive, is limited to a maximum content of about 2 lb/bbl of oil fluid.

2.                  The amendment to add the word “thickeners,” after the word “emulsifiers,” in claim 1 be allowed.

3.                  Subject to further order, the amendment to substitute the word “mud” for “fluids” in the specification be allowed.

4.                  The appeal otherwise be dismissed.

5.                  Costs reserved.

6.                  All parties to file and serve submissions on the question of costs within 10 days of the date of this judgment and any submissions in reply within a further 5 days.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

1                     This judgment deals with residual issues in a proceeding under the Patents Act 1990 (Cth) (“the 1990 Act”).  The proceeding is an appeal under s 60 against the dismissal of an opposition to the grant of a patent. The patent concerns drilling mud used when drilling for gas and oil.  The opponent was Fina Research SA (“Fina”), which is the applicant in this appeal.  The original respondents and patent applicants were Baroid Drilling Fluids Inc and Henkel Kommanditgesellschaft auf Aktien which assigned their interests in the patent application to Cognis Deutschland GmbH and Halliburton Energy Services, Inc.  Those four companies together with Cognis Deutschland GmbH & Co KG (which is said to be the assignee of the interests of Cognis Deutschland GmbH in the patent application) are all respondents to this proceeding.  It is, for present purposes, unnecessary to distinguish between them.  The patent application was filed on 11 December 1989 and has, at all material times, been treated as a PCT application (under Pt 1 of ch 8 of the 1990 Act) based on a German application filed on 19 December 1988 (“the original German application”). 

2                     The hearing of the appeal commenced on 3 February 2003.  Several days were taken up by lengthy openings by counsel for Fina and counsel for the respondents.  When counsel for Fina sought to read an affidavit from its first witness, Professor Kagi, there was an objection to his evidence in its entirety.  On the morning of 7 February 2003 I gave a ruling concerning Professor Kagi’s evidence effectively rejecting it on the grounds of relevance.  After a short adjournment, counsel for Fina indicated it did not wish to pursue the appeal in so far as an objection to the grant of the patent was based on grounds of novelty and obviousness nor pursue an amendment to the notice of appeal to raise an issue about manner of manufacture.  However it was common ground that there remained issues to be resolved concerning amendments.

3                     The delegate of the Commissioner allowed certain amendments to the patent specification over the opposition of Fina.  In its notice of appeal, Fina contended these amendments could not and should not have been allowed.  Fina’s opposition to those amendments in this proceeding did not extend to the substitution of the word “mud” for “fluids”.  Fina accepted that that amendment was fairly based on the original English translation of the original German application.  The contentious amendments allowed by the delegate and pursued in this proceeding can conveniently be grouped in two ways.  First, the respondents sought to amend the specification (as they did successfully before the delegate) to deal with what is asserted be an error in the translation of the original German application.  Secondly, the respondents sought to amend the specification (as they did successfully before the delegate) to exclude the use of montan wax in several of the claims, in a way I discuss later.

4                     In this proceeding the respondents also initially sought to amend the specification by altering the description of the lime content in one of the examples of mud formulation conformable with the invention and altering the description of another example and also the description of the lime content in that example.  However ultimately these amendments were abandoned in this proceeding on the footing that the matter would be referred back to the Commissioner. No point was taken about amendments being sought in this proceeding by oral application.

5                     It has been common ground in this proceeding that by operation of subs 234(3) of the 1990 Act, this proceeding, as an opposition to the grant of a standard patent which would have been maintained under Part V of the Patents Act 1952 (Cth) (“the 1952 Act”), is to be dealt with under that Part because it continues to apply.  However it also has been common ground that other provisions of the 1990 Act are relevant and, in particular, operate on any request for leave to amend a specification: see subs 235(1).

6                     Notwithstanding that the present patent application was filed before the 1990 Act was enacted, both parties proceeded on the basis that s 88 of the 1990 Act should be treated as regulating the application for present purposes.  That section relevantly provides:

(1) Subject to this section, a PCT application must, for the purposes of this Act other than this Part, be treated as a complete application under this Act for a standard patent.

The present application was based on the original German patent application which was a PCT application with an international filing date.  However Fina’s submission concerning whether the amendments could be made involved a contention that once an English translation of the German application was filed, s 89 operated on the application by substituting the English translation for the PCT application (in this case in German).  That section relevantly provides:

(3) An applicant is not entitled to ask that any action be taken, or that he or she be allowed to take any action, under this Act in relation to a PCT application unless: 

(a)               if the application was not filed in the receiving Office in English – a translation of the application into English, verified in accordance with the regulations, has been filed; and

(b)               in any case – the prescribed documents have been filed and the prescribed fees paid”. 

7                     As to what amendments are not allowable, s 102 provides:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed. 

(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:

(a)               a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)               the specification would not comply with subsection 40(2) or (3).

…

(3) This section does not apply to an amendment for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification.

8                     The purposes for which an amendment might be sought and how it might be dealt with is addressed in s 104 which 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. 

It can be seen that by operation of subs 102(3) the preceding two subsections do not apply if the amendment is for the purpose of correcting clerical error or for the purpose of correcting an obvious mistake.  These two purposes are also identified in par 104(1)(b) as bases for seeking the amendment of a complete specification.

9                     Before dealing with the substance of the amendments and how ss 102 and 104 might apply, it is convenient to deal with what is effectively a threshold legal issue raised by Fina concerning the amendments said by the respondents to arise from the translation.  Fina submitted that by operation of subs 89(4), the English translation when filed becomes a substitute for the PCT application (in German) and the latter document is taken to have been amended by the former.  Regulation 8.2 of the Patents Regulations 1991 would require a translation into English with a certificate of verification (at least if a PCT application had not been filed in English and has not been published in English under Article 21 of the Patent Cooperation Treaty).  Thus the verified English translation becomes the description and claims in the application irrespective of whether the translation accurately reflects what appears in the document originally filed (the PCT application in German).  The next step in the argument, and the critical step as I understand it, is that the English translation becomes, for the purposes of s 102, the complete specification.  It is by reference only to the English translation that one assesses whether the amended specification would claim matter not in substance disclosed in the specification as filed (which, by operation of subs 88(4), is the English translation) as contemplated by subs 102(1).

10                  However even accepting that this analysis is correct (and it involves one contention which is controversial and dealt with later in these reasons) I do not see how an applicant is precluded from referring to a document or documents existing before an application is made (even an application arising from the substitution contemplated by subs 89(4)) for the purpose of demonstrating there has been a clerical error or obvious mistake.  If demonstrated, subs 102(1) or subs (2) do not apply.  It is necessary, at least ordinarily, to resolve the question of whether there has been a clerical error or obvious mistake before addressing the operation of subs 102(1) or subs (2).  A typical clerical error would arise when the application was being completed and filled out by, for example, reference to a final draft and a word or sentence in the draft was accidentally omitted from the application.  To demonstrate clerical error one would need to compare the final draft with the completed application.  If an error occurring during the process of translation can constitute a clerical error (or obvious mistake), I do not see why it would not be possible to have recourse to both the translation and the text in the original language to ascertain whether it has occurred.  In my opinion, neither the language or purpose of subs 89(4) excludes this approach.

11                  It is next necessary to determine whether subs 102(1) or subs (2) apply to the amendment to deal with an alleged translation error. The respondents submitted that these provisions are not applicable because the alleged translation error was a “clerical error” or “obvious mistake” for the purposes of subs 102(3) and par 104(1)(b).

12                  The question of what constitutes “clerical error” was considered by the High Court in R v Commissioner of Patents; Ex parte Martin (1953) 89 CLR 381.  A patentee sought to amend the application and patent so as to describe himself not as the actual inventor but as assignee of others.  This description appeared in the patent because in the application for letters patent the applicant inadvertently declared in his application he was the actual inventor.  Section 117 of the Patents Act 1903-1950 (Cth) empowered the Commissioner to correct any clerical error on the Register.  One issue was whether this section authorised the amendments sought.  All members of the Court who addressed this question considered it did not.  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.  In the present case there is no evidence that [the patentee] intended to insert [in the relevant form] that he was the assignee of the actual inventor or inventors and by inadvertence failed to do so.

13                  The question of what was a “clerical error” was also addressed by Fullager J (Kitto and Taylor JJ agreeing).  His Honour noted (at 404) that it was a matter for comment that no evidence had been given by the person actually and directly responsible for the mistake as to how it came to be made.  As to the meaning of the expression “clerical error”, his Honour said (at 406):

That expression is, no doubt,one of a somewhat elastic character, but it seemsto me impossible to say that it covers such a misstate 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.

14                  In the context of the rectification of wills, there is English authority that for the purposes of subs 20(1) of the Administration of Justice Act 1982 (UK) (which authorises the rectification of a will if the testator’s intentions have not been carried out as a consequence of, amongst other things, “clerical error”) a clerical error can arise if the solicitor preparing a will failed to delete a proviso: In Re Segelman (dec’d) [1995] 3 All ER 676 or repeated a clause from an earlier will which should have been excluded: Wordingham v Royal Exchange Trust Co Ltd [1992] 2 WLR 496.  Such an error can arise in the drafting of a will or transposition of a clause in an earlier will.

15                  The translation of a document from one language to another should not alter its meaning.  In Sumitomo Corp v Credit Lyonnais Rouse Ltd [2002] 4 All ER 68 the Court of Appeal had to consider whether copies of documents (the copies being translations of documents in English into Japanese commissioned by solicitors) were privileged.  The Court said (at [44]):

We agree with the judge that in the context of legal professional privilege there is no relevant distinction to be drawn between a translation of an unprivileged document in the control of the party claiming privilege and a copy of such a document.  Each derives solely from the original document, and each is directed at reproducing the sense of, and the information contained in, the original document as exactly and precisely as is reasonably practicable.  Neither the process of copying nor the process of translation involves the addition of anything to or the subtraction of anything from the sense of the original document or the information contained in it.  In particular, neither process in itself introduces any element of confidentiality which does not or did not exist in the original document.  The fact that, unlike a copy, a translation is not a ‘replica’ of the original document in the sense in which Lord Grabiner used that term does not seem to us to be a relevant distinction for present purposes.

[Emphasis added]

16                  The reference to what Lord Grabiner (senior counsel forSumitomo Corp) had said about a replica emerges from an earlier part of the judgment (at [33]):

He submits that for the purposes of legal professional privilege a translation is not to be treated in the same way as a simple copy.  A translation is, he submits, entirely different in nature from a copy.  He points to the skill required of a translator (translation from Japanese being a process which, as he tells us and as we can well believe, requires a particularly high degree of skill) and to the fact that no two translations will necessarily be identical.  In contrast, the purpose of a copy is to reproduce, so far as is practicable, the precise terms and form of the original.  In that sense and to that extent, a copy is no more than a replica of the original document.  Lord Grabiner points out that the question whether or not a copy is accurate can be determined simply by comparing it with the original document (assuming the original document to be still available), whereas in the case of rival translations the question

which version should be preferred may well be an extremely difficult question to answer.

17                  These observations are apt to describe, more generally, what constitutes a translation.  The process of translation should not involve the addition or subtraction of anything from the sense of the document in the language from which is being translated.  That is not say, however, that two skilled translators will necessarily produce translations that are exactly the same.  The resultant translations may be equally correct.

18                  Nonetheless, if in the present matter, the evidence supports a finding that the translator who translated the original German application (being the translation file for the purposes of subs 89(3)) inadvertently overlooked some German words and failed to translate them then this could constitute a “clerical error”.  That is because the process of translation is intended to be a transposition of text in one language to text in another language without alteration of the meaning.  If text is ignored or overlooked then the transposition will, in this respect, be flawed.  In my opinion it is no different, in principle, to the clerical transposition of text in one language from a document to another document in the same language where a word is omitted or wrongly added.  While, in my opinion, the expression “clerical error” should not be construed narrowly, if the evidence does not establish the translator has overlooked German words then it is more difficult to conclude that any “clerical error” was involved.  More likely all that is involved is the question of the best or most appropriate way of translating particular words, phrases or sentences.

19                  I now turn to the evidence.  In this case, as noted by Fullager J in R v Commissioner of Patents; Ex parte Martin (supra), no evidence was led from the person who translated the original German application, Dr Fricke.  That is, there was no evidence from the person who may have been able to say, directly, he overlooked certain words when translating the German text of the original German application into English or otherwise explain what might be viewed as discrepancies in his translation.  However evidence was led by the respondents from Mr Roger Tunn who described himself as a translator in the English and German languages specialising in the translation of German language patent documents.  His expertise was not challenged.  His evidence took the form of comparing text in the original German application with the translation of Dr Fricke and expressing a view about the translation.  He did so first in relation to text appearing on page 5 of the original German application.  He noted the German text:

 “… … die Mitverwendung wesentlicher Mengen an starken hydrophilen Basen wie Alkalihydroxid und/oder Diethanolamin verzichtet wird.”

and said:

            Dr Frick’s translation translates these words at page 6 as:

“…. … strong hydrophilic bases such alkali metal hydroxide and/or diethanolamine are excluded from use”. 

The words “die Mitverwendung wesentlicher Mengen an” have not been translated.

20                  Mr Tunn gave similar evidence about other text (part of claim 1) appearing later in the German application:

“A similar translation error appears in claim 1 of the Fricke Translation.  The International Application contains the following words:

“… …die Mitverwendung wesentlicher Mengen an starken hydrophilen Basen wie Alkalihydroxid und/oder Diethanolamin verzichtet wird.”

“Dr Fricke’s English translation is: 

“… … that strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine are excluded from the concomitant use”. 

Dr Fricke has translated the German phrase “die Mitverwendung” with the words “the concomitant use” but has omitted any translation of the German phrase “wesentlicher Mengen”. 

21                  A little later in his affidavit (in the context of responding to expert evidence of Fina which was not read), Mr Tunn sets out claim 1 in the original German application and expresses a view about how it should be translated into English (by comparing it with a translation of the related German patent which Mr Tunn did in 1989):

Claim 1 of the German source document (i.e. the International Application) substantially reproduces the statement of invention on page 5 and reads as follows:

“1.       Verwendung ausgewählter, im Temperaturbereich von 0 bis 5ºC flieβ- und pumpfähigen Monocarbonsäuren mit 16 bis 24 C-Atomen oder deren Abmischungen mit untergeordneten Mengen anderer, insbesondere gesättigter Monocarbonsäuren als Ölphase von Invert-Bohrspülschlämmen, die für die umweltschonende off-shore-Erschlieβung von Erdöl-bzw.  Erdgasvorkommen geeignet sind und in einer geschlossenen Ölphase eine disperse wäβrige Phase sowie Emulgatoren, Beschwerungsmittel, fluid-loss-Additive und gewünschtenfalls weitere übliche Zusatzstoffe zusammen mit einer Alkalireserve mit der Maβgabe enthalten, daβ auf die Mitverwendung wesentlicher Mengen an starken hydrophilen Basen wie Alkali-hydroxid und/oder Diethanolamin verzichtet wird und ein gegebenenfalls vorliegender Kalkzusatz auf den Höchstbetrag von etwa 2 lb/bbl Ölspülung begrenzt ist”.

My translation of this claim as it appears in the 1989 Translation is as follows:

“1.       The use of selected esters – flowable and pumpable at temperatures of 0 to 5ºC – of monofunctional alcohols containing 2 to 12 C atoms and olefinically mono- and/or polyunsaturated monocarboxylic acids containing 16 to 24 C atoms or mixtures thereof with small quantities of other, in particular saturated, monocarboxylic acids as the oil phase or as at least a substantial part of the oil phase of invert drilling muds which are suitable for the environmentally safe offshore development of oil and gas sources and, in a continuous oil phase, contain a disperse aqueous phase and also emulsifiers, weighting agents, fluid-loss additives and, if desired, other standard additives together with an alkali reserve, with the proviso that significant quantities of strong hydrophilic bases, such as alkali hydroxide and/or diethanolamine, are not used and any addition of lime is limited to a maximum of about 2 lb/bbl oil mud”. 

22                  In my opinion, this evidence falls short of establishing clerical error.  As to the words on page 5 of the original German application, the evidence goes no further than saying certain German words have not been translated.  That could be because they were overlooked by Dr Fricke or he elected to translate those and surrounding words in a particular way but in a way Mr Tunn does not accept.  The repetition of the “error” in claim 1, at least in part (by not translating the words “wesentlicher Mengen” but, on this occasion, translating the words “die Mitverwendung”) would suggest that Dr Fricke had a particular way of translating the contentious words, rather than that he overlooked them.  It would be curious that he failed to see, or overlooked, the same expression twice.  That is, it is improbable that in the process of translation he twice failed to see the words “die Mitverwendung wesentlicher Mengen” or saw them but did not translate them at all or only some of them.  This is a conclusion I consider I can more comfortably reach because Dr Fricke was not called to give evidence about the “clerical error” he made.  In my opinion, the proposed amendment does not concern a clerical error and subs 102(3) does not operate to render inapplicable subs 102(1) and subs (2).

23                  Similarly, and for essentially the same reasons, the proposed amendment does not concern an obvious mistake with the same result.  The error is, at best, an error of translation.  It is difficult to conceive of how an error of translation would be a mistake for the purposes of subs 102(3) in circumstances where the impugned translation (containing what is said to be the obvious mistake) was filed in accordance with a statutory provision which requires a verified translation (where the method of verification is prescribed).  In any event, even if it is a mistake it cannot be said to be an obvious one.  The relevant authorities (though limited in number) are conveniently gathered together in Kawasaki Steel Corporation v Broken Hill Pty Co Ltd (1988) 13 IPR 168.  The means of correction, as well as the presence of a mistake, must be obvious.  The evidence of Mr Tunn (which identifies the alleged mistake and also the means of correcting it) does not exclude the possibility of other ways of correcting the mistake (if it be a mistake).

24                  Accordingly it is necessary to consider subs 102(1) and subs (2) in relation to both groups of amendments referred to in [3] above.  The first are the amendments flowing from what has said to be the mistranslation.  Claim 1 in the English translation as filed was in the following terms:

1. Use of selected esters which are flowable and pumpable within the temperature range of from 0 °C to 5 °C of monofunctional alcohols having from 2 to 12 carbon atoms and olefinically mono- and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms or mixtures thereof with minor quantities of other, especially saturated, monocarboxylic acids as the oil phase or at least of a substantial part of the oil phase, of invert drilling muds suitable for an environmentally acceptable exploitation of off-shore natural oil and/or natural gas deposits, which drilling fluids contain, in a continuous oil phase, a dispersed aqueous phase and emulsifiers, weighting agents, fluid-loss additives and optionally other common additives together with an alkali reserve, with the proviso that strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine are excluded from the concomitant use and the amount of lime, if present as an additive, is limited to a maximum content of about 2 lb/bbl of oil fluid.

[Emphasis added]

What the respondents finally sought by way of amendment was to delete the highlighted words in the claim and substitute the following:

: a dispersed aqueous phase; emulsifiers; thickeners; weighting agents; fluid-loss additives; alkali reserve, and optionally other common additives; with the proviso that significant quantities of strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine are not used and wherein the amount

of lime, if present as an additive, is limited to a maximum content of about 2 lb/bbl of oil fluid.

[Emphasis added]

25                  It can be seen that apart from changes in punctuation and other apparently minor changes the amendments add the word “thickeners” and limits the reach of the proviso.  I put to one side for the moment the addition of the word “thickeners”.  The amendments limit the reach of the proviso by disclaiming the use of significant quantities of strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine rather than, as earlier, disclaiming the use of any strong hydrophilic bases such as alkali metal hydroxide and/or diethanolamine.  Use of strong hydrophilic bases is now contemplated as long as they are not in significant quantities.

26                  It might be thought, as a matter of first impression, that by allowing for the use of some strong hydrophilic bases (as long as it was less than a significant quantity) rather than none the amended claim would not in substance fall within the scope of the original claims.  This was the contention of Fina and that it is an amendment not permitted by subs 102(2).  The respondents said it was for two reasons.  The first was that the comparison to be made, when applying subs 102(2), was between the claims in English as amended and the original PCT application (in German).  The latter document contained reference to significant quantities (at least as translated by Mr Tunn).  The second was that subs 102(2) permitted comparison between the amended claim and all the claims in the specification before the amendment.  The respondents submitted that if this task was undertaken in the present case (and Fina did not dispute that it was the correct approach as a matter of law) subs 102(2) would not be enlivened.

27                  The first answer depends on the proper construction of the 1990 Act.  I do not repeat what I earlier said when discussing subs 89(4).  However, in my opinion, the English translation becomes, by operation of that subsection, the “claims of the specification before amendment” for the purposes of subs 102(2).  That is because the English translation becomes a substitute for the initial PCT application.  It is, at the time the comparison subs 102(2) calls for is made, the specification before amendment.  Accordingly even if I could proceed on the basis that, as a matter of fact, the initial PCT application (in German) did refer to “significant quantities” in the proviso (which I doubt, given the need to file a verified translation which is probably intended to be, for the purposes of the Act, the only translation), it did not appear in the comparator, the English translation.

28                  The second answer involves consideration of two other claims.  They are claims 11 and 12 which read:

11. Mineral oil-free invert drilling fluids which are suitable for the off-shore development of natural oil and/or natural gas sources and, in a continuous phase based on ester oils, contain a disperse aqueous phase together with emulsifiers, thickeners, weighting agents, fluid-loss additives, and if desired further common additives, characterized in that the oil phase consists of at least a substantial proportion of esters of mono-functional alcohols having from 2 to 12 carbon atoms and olefinically mono- and/or polyunsaturated monocarboxylic acids having from 16 to 24 carbon atoms, in that further the W/O emulsion is mildly alkalised and, where lime is added, this alkali reserve preferably does not exceed quantities of about 2 lb/bbl (lime/oil fluid), while preferably it is slightly below this limit. 

12. An invert drilling fluid according to claim 11, characterized in that in the oil fluid there are not present any significant amounts of strongly hydrophilic bases such as alkali metal hydroxides or highly hydro-philic amines such as diethanolamine, but that there are present, optionally in addition to or in the place of lime, limited amounts of metal oxides of the zinc oxide type as alkali reserve.

[Emphasis added] 

29                  There was no issue that claim 11 is an independent claim.  The respondents pointed to the fact that claim 12, which qualifies claim 11, contemplated the use of hydrophilic bases though not in any significant amounts.  The respondents supported and repeated the reasoning of the delegate to justify the amendment to claim 1 having regard to claim 12.  It was to the following effect.  It can be accepted that the scope of claim 1 was broadened by the amendments.  However whether subs 102(2) was enlivened was to be assessed by looking at the claims as a whole.  Approached that way, the question then became whether the amendments made anything an infringement which would not have been infringement before the amendments: Re: Distillers Co Ltd’s Application (1953) 70 RPC 221 at 223 and W J Voit Rubber Corp’s Application (1965) AOJP 1752.  While the amendments to claim 1 broadened its scope, it did not make anything an infringement that would not have already infringed claim 12 as accepted.  The delegate added:

[I note that although new claim 1 does not include zinc oxide the use of the zinc oxide in claim 12 as accepted use optional.]

30                  This last observation founded one of Fina’s criticisms of the delegate’s decision, which the respondents adopted in support of the amendments in this proceeding.  The respondents submitted that claim 12 did not contemplate the necessary presence of metal oxides of the zinc oxide type.  That was because of the use of the word “optionally”.  However Fina submitted, and I agree, that this involved a misconstruction of the claim.  The word “optionally” was part of and qualifies the phrase “[optionally] in addition to or in the place of lime” which in turn qualified the clause “but that there are present limited amounts of metal oxides of the zinc oxide type as alkali reserve”.  In my opinion, what is intended is that there will be present metal oxides of the zinc oxide type but they can be present by themselves as a substitute for lime or present with lime as well.  What is optional is whether they are present there with or without lime.

31                  If claim 12 is construed this way, does par 120(2)(a) prohibit the amendments to claim 1?  Fina submitted it did.  It used the following example.  A compound would not infringe claim 1 in its unamended form if it contained some, but not a significant amount of, strongly hydrophilic bases or highly hydrophilic amines and, additionally, contained lime.  It would also not infringe existing claim 12 unless it contained limited amounts of metal oxides of the zinc oxide type as alkali reserve.  That is, it would also not infringe existing claim 12 if it did not contain limited amounts of metal oxides of the zinc oxide type as alkali reserve.  If claim 1 was amended a compound would infringe that amended claim if it contained some, but not a significant amount of, strongly hydrophilic bases or highly hydrophilic amines and, additionally, contained lime even if it did not contain limited amounts of metal oxides of the zinc oxide type as alkali reserve.  Such a compound would continue not to infringe existing claim 12.

32                  This analysis appears to me to be correct.  Indeed the only submissions made by the respondents answering this submission was to put in issue the construction of claim 12 and the meaning of the clause “optionally in addition to or in the place of lime”.  I have already rejected the construction advanced by the respondents.  I am satisfied that par 102(2)(a) precludes this amendments to claim 1 sought by the respondents.

33                  I next consider the proposed addition of the word “thickeners” to claim 1.  In the last submissions made by Fina on the question of the amendments (submissions in writing filed on 13 February 2003), this amendment was not identified as one opposed by Fina.  In any event, I think the respondents are probably correct in saying that neither subs 102(1) nor subs 102(2) prevent the amendment (because “thickeners” are referred to on page 6 of the specification as filed and fall within the claims (claim 11) before the amendment).  Accordingly this amendment is allowed.

34                  The last matter that has to be addressed is amendments proposed to a number of claims which exclude montan wax and its use.  The following are the relevant claims though the numbering and the text differs from that in the original application.  However it has not been suggested that the renumbering and the alterations to the text are material.  The claims containing a reference to montan wax are (to be read with the other claims referred to):

26. An embodiment according to any one of claims 1 to 25, wherein if the ester is the isooctyl monoalcohol ester of a high purity tall oil fatty acid and has a specific gravity of 0.8715 at 25°C, an acid value of 1.0 or less, a refractive index of 1.4605 at 20°C and a flash point of 435°F (224°C), and if about 2 lb/bbl of lime is used as alkali reserve, the use of montan wax having a melting point in the range of about 76°C to 120°C, and an acid number and a saponification number greater than about 100 in an amount of about 5 to 20 lb/bbl oil mud as thickener is excluded. 

27. An embodiment according to any one of claims 1 to 25, wherein if the ester is a purified isooctyl monoalcohol ester of high purity tall oil fatty acids, the use of montan wax as a thickener is excluded. 

28. An embodiment according to any one of claims 1 to 25, wherein the ester is not a purified isooctyl monoalcohol ester of high purity tall oil fatty acids.

29. An embodiment according to any one of claims 1 to 25, wherein the use of montan wax as a thickener is excluded.

…

43. Drilling muds according to any one of claims 32 to 42, wherein if the ester is the isooctyl monoalcohol ester of a high purity tall oil fatty acid and has a specific gravity of 0.8715 at 25 °C, an acid value of 1.0 or less, a refractive index of 1.4602 at 20 °C and a flash point of 435 °F (224 °C), and if about 2 lb/bbl of lime is used as alkali reserve, the use of montan wax having a melting point in the range of about 76 °C to 120 °C, and an acid number and a saponification number greater than about 100 in an amount of about 5 to 20 lb/bbl oil mud as thickener is excluded. 

44. Drilling muds according to any one of claims 32 to 42, wherein if the ester is a purified isooctyl monoalcohol ester of high purity tall oil fatty acids, the use of montan wax as a thickener is excluded. 

45. Drilling muds according to any one of claims 32 to 42, wherein the ester is not a purified isooctyl monoalcohol ester of high purity tall oil fatty acids. 

46. Drilling muds according to any one of claims 32 to 42, wherein the use of montan wax as a thickener is excluded.

[Emphasis added]

35                  Mention should be made of what is revealed about montan wax in the limited evidence tendered.  In an agreed statement of science and technology the following is said of montan wax:

Montan wax: a dark brown, hard, brittle solid which melts/solidifies at around 85°C. it is extracted from brown coal (lignite) deposits in central Germany and California by using hydrocarbon solvents.  Montan wax has a very complex chemical composition, but major components are fatty acids and esters of fatty acids.

[The words in bold are elsewhere defined in the agreed statement]

A not dissimilar description is found in US Patent Specification No 4,481,121 (“Barthel”) which was tendered by counsel for Fina and not objected to though inadvertently not marked as an exhibit (but it should be treated as part of the evidence).

36                  The respondents submitted that the inclusion of the claims excluding the use of montan wax narrowed the scope of the claims by adding an extra integer.  Reference was made, indirectly, to the observations of Lord Denning in AMP Inc v Hellerman [1962] RPC 55 that once you add, by amendment, another essential feature to a combination, you produce a sub combination and, if within the original claim, it gives rise to a disclaimer.  In any event, the disclaimer concerning montan wax was fairly based having regard to disclosure arising from the reference in the specification to Barthel which concerns drilling fluids all containing montan wax.  Fina contended at the hearing that the invention was a combination claim where a number of elements were combined which interact with each other to produce a new result or product: Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 266 per Aiken J.  The complete specification did not reveal the role of the montan wax exclusion in the combination.  The proposed amendments were not allowable under par 102(2)(b).  The complete specification would not comply with subs 40(3) as the claims would not be fairly based.  Reference was made to CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 at 281-282.  In written submissions and in its grounds and particulars, Fina also relied on subs 102(1) and par 102(2)(a) though I do not presently understand how that latter provision might operate to prevent the amendments.

37                  I turn first consider subs 120(1).  The task the section requires be undertaken is to compare the specification as it stands with how it would stand after the amendment, to identify the matter resulting from the amendment.  That enables a consideration of or comparison with the specification as filed: see RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 89 FCR 458 at 466.  Undertaking that process in the present case, it can be seen that the matter resulting from the amendments is the declaration (to collapse, for convenience, into one expression what appears in the amended claims set out above) that montan wax not be used.  Beyond the description of that compound in the agreed statement of science and technology which is in general terms, and what might be inferred from Barthel (which does involve the use of montan wax as a viscosifier in a drilling mud), there is no evidence about the significance or otherwise of montan wax not being used or the consequences of it being used if it was.  Indeed there was virtually no evidence concerning the science underlying the complete specification.  However, I do not think that it is material in the present case.  The matter claimed as a result of the amendments is that montan wax not be used.  In the specification as filed the resultant drilling mud can be composed of classes of compounds (by inclusion and exclusion), certain specified compounds and some in quantities in a specified range or to a maximum specified amount.  Reading the specification as a whole there is no suggestion that montan wax can or ought be used.

38                  How subs 102(1) should be applied was discussed by Tamberlin J in Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (1999) 48 IPR 625 at [25] and following:

It is a well settled approach that the requirements of s 102 should generally be given a liberal construction. This is said to be because there is a strong public interest that inventive genius should be encouraged: see Ethyl Corporation’s Patent [1972] RPC 169 per Salmon LJ.  In that case Cross LJ said that the equivalent provision of the Patents Act (1949) (UK)using the expression “matter not in substance disclosed”, should be interpreted in “a broad common sense way”; and Lord Denning MR in the same case agreed that a liberal approach was required so as to permit any fair amendment which had previously been disclosed.  The requirement of substantial disclosure is closely similar to the requirement that a claim must be “fairly based” on matter disclosed in a specification: see Wimmera Industrial Minerals Pty Ltd v RGC Mineral Sands Ltd (No 3) (1997) AIPC 91-366 at 39,781-2 per Sundberg J.

The requirement that a claim must be “fairly based” on a matter described in the specification is not limited to cases where the subject matter at the later application has been actually claimed in the earlier application.  Another helpful way of expressing the test is that there must be “a real and reasonably clear disclosure”: see Fullagar J in Societe des Usines Chimiques Rhone-Poulenc v Commissioner of Patents (1958) 100 CLR 5 at 11.

A further approach to the question of substantial disclosure or fair basis is to pose the three questions framed by Lloyd-Jacobs J in Re Mond Nickel Company Ltd’s Patent [1956] RPC 189 at 184 in these terms:

(1)       Is the alleged invention as claimed broadly (ie in a general sense) described in the provisional specification?

(2)       Is there anything in the provisional specification which is inconsistent with the alleged invention as claimed?

(3)       Does the claim include as a characteristic of the invention a feature as to which the basic application is wholly silent?

Although by no means a universal prescription, this approach was seen as helpful by Gibbs J in F Hoffman-La Roche & Co AG v Commissioner of Patents (1971) 123 CLR 529.

Further guidance is found in the following remarks of Sheppard J in Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400, when after reviewing the relevant authorities his Honour said  so far as relevant for present purposes:

“(1) The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles.  Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.

(2) It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of the monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.

(3) Nevertheless, in approaching the task of construction, one must read the specification as a whole.

(4) In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.

(5) If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in parts of the document.  But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.

(6) A patent specification should be given a purposive construction rather than a purely literal one.”

In an appeal from this judgment, the Full Court did not suggest that this elucidation of the principles was not correct.  Indeed the Full Court, in substance, repeated them: see (2000) 49 IPR 321 at [18].  In addition, the “disclosure in substance” need not be express and can be implied: see Ethyl Corporation’s Patent [1972] RPC 169 in which Lord Denning MR observed that it is only necessary for the original specification to set out the marker posts and not necessary to draw a line around them.

39                  In the present case, as noted earlier, the complete specification does not suggest montan wax can or ought be used in a context of explaining, and exemplifying, both classes of compounds and specific compounds to be used, and quantities including upper limits, to create the claimed invention.  The proposed amendments to the claims can, I think, be fairly characterised as a disclaimer and taking the liberal approach referred to by Tamberlin J, can be allowed because they do not claim matter not in substance disclosed in the specification as filed.

40                  I turn to consider whether the amendments can be allowed having regard to par 102(2)(b) and subs 40(3).  In the present context, the question of fair basing concerns possible disconformity between the claims and the body of the complete specification.  What is involved was discussed by the Full Court in ICI Chemicals & Polymers Ltd v Lubrizol Corporation Inc (2000) 106 FCR 214.  The Full Court said at 247 and following:

Certainly the authorities proceed on the basis that, ordinarily at least, what will deprive a claim of fair basis in a complete specification is that the claim is broader than the invention as described in the specification.  Thus Barwick CJ stated the question which arose in Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 239, 240 as follows:

“The critical question which in my opinion remains is whether the product claims in question are fairly based on the disclosure of the specification and do not exceed it, or, as it is put, are not too wide, having regard to the terms of the application.”

Barwick CJ was in dissent, but Gibbs J proceeded on the same understanding of fair basis (see at 250) as did Stephen and Mason JJ at 263.  In F Hoffman‑La Roche & Co Aktiengesellschaft v Commissioner of Patents (1969) 123 CLR 529, which involved the question whether claims in a complete specification were fairly based on matter disclosed in a basic application made in Switzerland, Gibbs J said, at 542, 543:

“If a basic application disclosed a large class of compounds, all of which were claimed to be of pharmaceutical utility, and it were found that the claim was false, in that only some of the compounds were useful, or it appeared that some of the compounds had a particular and peculiar value, there would be much to be said for the view that a claim limited to those compounds selected for the utility or special value would not be fairly based on matter disclosed in the basic application, at least if the basic application did not itself provide a guide to that selection, and a fresh inventive step were necessary to enable it to be made.”

The leading discussion of fair basing in this Court is to be found in the decision of the Full Court in CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260.  The Court pointed out, in a passage commencing at 278, that the concept of fair basing, introduced by the 1952 Act, dealt with two different kinds of disconformity.  One was the disconformity between complete and provisional specifications.  The other concerned the relationship between the claims and the body of the complete specification.  The Full Court quoted, as explaining the basis of an attack on validity founded on disconformity between claim and complete specification, the following passage from the speech of Lord Macmillan in Mullard Radio Valve Co Ltd v Philco Radio and Television Corporation of Great Britain Ltd (1936) 53 RPC 323 at 347:

“But a claim may be for an article which is new, which is useful and which has subject‑matter, yet it may be too wide a claim because it extends beyond the subject‑matter of the invention.  The consideration which the patentee gives to the public by disclosing his inventive idea entitles him in return to protection for an article which embodies his inventive idea but not for an article which, while capable of being used to carry his inventive idea into effect, is described in terms which cover things quite unrelated to his inventive idea, and which do not embody it at all.”

The Full Court proceeded to quote the observation (which we also have quoted) of Barwick CJ in Olin.  Finally, their Honours referred to observations of Graham J in Stauffer Chemical Co’s Application [1977] RPC 33, commenting, at 280:

“His Lordship pointed out that “fair basing” had been introduced in 1949 for two different reasons.  The first was to replace previous provisions dealing with disconformity between provisional and complete specifications.  The second was to deal with cases of undue width of claim, such as in Mullard.”

In Sartas No 1 Gummow J summarised, at 496, the two aspects of fair basing discussed in CCOM:

“The first is that the claimed monopoly should not be wider than warranted by the disclosure to the public made in the body of the complete specification.  The second is that the novelty of a claim should not be protected by a priority date given by the provisional specification if the claim is not fairly based on the disclosure in the provisional specification.”

His Honour added, at 497:

“As counsel for Mr Leonardis points out, it is no objection to any particular claim that it claims a monopoly for less than every feature described in the body of the specification.  It cannot be the case that, for example, a claim is restricted to the precise embodiment which is depicted in the body of the specification.”

The Full Court upheld the decision of Gummow J on that aspect of the case: Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126: see particularly at 143.  The discussion of principle at 139‑144 draws upon, and is entirely consistent with, CCOM.  Another Full Court adopted the same approach in Atlantis Corporation Pty Ltd v Schindler (1997) 39 IPR 29 at 51, 52.  See also Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at par 111.

41                  Applying these principles in the present case, it is difficult to see how the amendments proposed by the respondents could not be viewed as fairly based.  The body of the complete specification does not suggest montan wax can or ought be used.  The proposed amendments to the claims make it clear that it is not to be used and, to that extent, the monopoly sought in the claims is narrower than that revealed in the body of the specifications.  Paragraph 102(2)(b) and subs 40(3) do not prevent the amendments being made.

42                  There was an issue between the parties as to what orders should be made.   Proceeding on the basis (which I apprehend is uncontroversial) that the amendments allowed by the delegate will remain effective unless disallowed in this appeal, I propose to identify in the orders amendments which the delegate allowed but which, in my opinion, should not have been allowed (the amendments to the latter part of claim 1).  I will order the amendment adding “thickeners” to claim 1 be allowed and also order the uncontroversial amendments substituting “mud” for “fluids” be allowed.  I have made order 1 subject to further order to guard against the possibility that I have misunderstood (and overstated) the breadth of the opposition to the amendments to the latter part of claim 1.  If some amendments to the latter part of claim 1 were not in issue then the order can be modified.  I have made order 3 subject to further order because it may be necessary to specify the various points at which the substitution occurs.  I would expect the parties to agree on the terms of further orders if it is necessary.  Save for the orders concerning the amendments, the appropriate order is to otherwise dismiss the appeal.  Costs will be reserved on the basis that the parties wanted to make submissions on that matter given the course the proceedings took.

Associate:

Dated:              25 March 2003