FEDERAL COURT OF AUSTRALIA

DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2011] FCA 1411

THE COURT ORDERS THAT:

1.    Pursuant to s 105 of the Patents Act 1990 (Cth), claim 6 of Australian Patent No. 770594 be amended by substituting the numeral “5” for the numeral “4” so that, as amended, claim 6 will claim direct dependency from claim 5 of the patent.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

(REVISED FROM THE TRANSCRIPT)

1    By interlocutory application filed 25 November 2011, the respondent seeks an order pursuant to s 105 of the Patents Act 1990 (Cth) (the Act), directing an amendment to be made to Australian Patent No. 770594 (the patent).

2    The respondent is the patentee of the patent and is currently being sued by the applicant in this proceeding under s 128 of the Act for unjustified threats. The respondent has cross-claimed against the applicant alleging infringement of the patent. The applicant has in turn cross-claimed against the respondent seeking revocation of claims 1 and 5 to 14 of the patent, on various grounds.

Legislative background

3    Section 105 of the Act provides as follows:

(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, the patent request or the complete specification in the manner specified in the order.

(2)    An order may be made subject to such terms (if any) as to costs, advertisements or otherwise, as the court thinks fit.

(3)    The patentee must give notice of an application for an order to the Commissioner, who is entitled to appear and be heard, and must appear if the court directs.

(4)    A court is not to direct an amendment that is not allowable under section 102.

(5)    The patentee must file a copy of an order within the prescribed period.

(6)    On the filing of a copy of an order, the patent, patent request or complete specification is to be taken to have been amended in the manner specified in the order.

4    Section 102 of the Act identifies amendments that are not allowable. Relevantly ss 102(1) and (2) provide as follows:

Amendment of complete specification not allowable if amended specification would claim matter not in substance disclosed in the filed specification

(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.

Certain amendments of complete specification are not allowable after relevant time

(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).

5    For present purposes, the “relevant time” referred to in s 102(2) is the date of acceptance of the complete specification.

6    Section 102(3) provides as follows:

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.

7    Section 40(2) provides as follows:

A complete specification must:

(a)    describe the invention fully, including the best method known to the applicant of performing the invention; and

(b)    where it relates to an application for a standard patent—end with a claim or claims defining the invention; and

(c)    where it relates to an application for an innovation patent—end with at least one and no more than 5 claims defining the invention.

8    Section 40(3) of the Act provides as follows:

The claim or claims must be clear and succinct and fairly based on the matter described in the specification.

9    Rule 34.41 of the Federal Court Rules 2011 provides as follows:

(1)    An applicant who wants an order under section 105 (1) of the Patents Act must give the Commissioner a notice of intention to apply for the order, accompanied by an advertisement stating the following:

(a)    the identity of the proceeding, or proposed proceeding, in which the application will be made;

(b)    the particulars of the amendment sought;

(c)    the applicant’s address for service;

(d)    that a person intending to oppose the application who is not a party to the proceeding or proposed proceeding must, within 28 days after publication of the advertisement, give written notice of that intention to:

(i)    the Commissioner; and

(ii)    each party to the proceeding.

(2)    The Commissioner must publish the advertisement in the Official Journal.

(3)    A person who gives notice under paragraph (1) (d) is entitled to be heard in opposition to the application, subject to any order of the Court for costs.

(4)    A party who has given notice under subrule (1) may file the application within 50 days after publication of the advertisement.

(5)    The applicant must serve a copy of the application, together with a copy of the patent, patent request or complete specification, whichever is applicable, showing the amendment sought, on:

(a)    the Commissioner; and

(b)    each party to the proceeding; and

(c)    each person who has given notice under paragraph (1) (d).

(6)    A party may apply to the Court for any of the following orders:

(a)    that the applicant give particulars of the grounds relied on for the amendment to each party or other person who opposes the application;

(b)    that a party or other person opposing the application give particulars of the grounds relied on in opposition to the amendment to the applicant;

(c)    that the application be heard with the proceeding or separately and, if separately, fix the date for hearing the application;

(d)    the manner in which evidence will be adduced and, for evidence by affidavit, fix the times within which the affidavits must be filed and served.

The amendment sought

10    The invention of the patent relates to an apparatus which is for the manufacture of multi-strand rock bolts formed with bulbs in which the feed material is fed from a rotatable reel.

11    Claims 1, 4, 5 and 6 of the patent are as follows:

1.    An apparatus for manufacturing multi-strand bolts having spaced apart bulbs formed therein, characterised by a feed means for supplying a multi-strand cable from a rotatable supply reel, a means for forming the cable with bulbs at spaced intervals and a means for determining the position of the cable to stop operation of the feed means to enable a further bulb to be formed.

…

4.    An apparatus according to Claim 3, characterised in that a brake is provided to hold the multi strand cable in a desired position when the feed means is stopped.

5.    An apparatus according to any one of the preceding claims, characterised in that the feed means has a plurality of rollers which clamp the multi strand cable to cause it to be fed from the supply reel.

6.    An apparatus according to Claim 4, characterised in that at least one of the rollers of the feed means in rotatably driven by a drive means.

12    It can be seen that claim 6 is expressed to be dependent on claim 4. However, when regard is had to claim 4, it can be seen that there is no antecedent for the rollers of the feed means that are referred to in claim 6. On the other hand, it can be seen that claim 5 provides that antecedent. It is readily apparent therefore that the reference in claim 6 to claim 4 should in fact be to claim 5. There is no other way to sensibly read claim 6.

13    By its present application, the respondent seeks to amend claim 6 by substituting the numeral 5 for the numeral 4 so that, as amended, claim 6 will claim direct dependency from claim 5 and not claim 4.

14    As noted above, s 102(3) provides that s 102 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. I am inclined to the view that the reference in claim 6 to claim 4 is at least an obvious mistake. However, s 105(4) provides that a court is not to direct an amendment that is not allowable under s 102. That provision raises what might be a tension with s 102(3) of the Act. It is not necessary for me to resolve that question, because I am satisfied that the amendment which is now proposed would not fall foul of either s 102(1) or s102(2) of the Act.

15    An as yet unfiled affidavit of Lisa Melanie Teller affirmed 6 December 2011 has been read in support of the respondent’s application. That affidavit goes to the formal requirements set out in rules 34.41(1), (2) and (5).

16    I am satisfied on the basis of that affidavit that the respondent has given notice under rule 34.41(1). I am also satisfied that the advertisement required under rule 34.41(2) has been published.

17    There is evidence before me that no person has given notice to the Commissioner of Patents (the Commissioner) of an intention to oppose the application. I am informed by Senior Counsel for the respondent that, on her instructions, no person has given notice of opposition to the respondent. I propose to proceed on that assurance.

18    I am satisfied that the formal requirements of rule 34.41(5) have been complied with.

19    The Commissioner has given notice that a review has been conducted of the amendments and that the Commissioner does not intend to appear.

20    The applicant is represented by counsel on the hearing of the application and has indicated that it does not oppose the amendment that is sought.

21    In all the circumstances, I propose to allow the amendment.

Disposition

22    I will order that pursuant to s 105 of the Patents Act 1990 (Cth), claim 6 of Australian Patent No. 770594 be amended by substituting the numeral 5 for the numeral 4, so that, as amended, claim 6 will claim direct dependency from claim 5 of the patent.

23    I will dispense with any further requirement to advertise the making of the amendment.

24    I will order that the respondent file the affidavit of Lisa Melanie Teller affirmed 6 December 2011 by no later than 4.00 pm Australian Eastern Daylight Time, on 8 December 2011.

Associate:

Dated:    9 December 2011