Abaco Machines (Australasia) Pty Ltd, Re Patent Application

Abaco Machines (Australasia) Pty Ltd (“Abaco”) claim to have invented a clamping device for lifting panels or slabs. They filed an application for a patent for that invention in Vietnam. The application had a priority date of 7 January 2004. On 12 July 2004 Mr Nhon Hau Nguyen on behalf of Abaco wrote to Mr Schieber of Watermark, Abaco’s Australian patent agents, asking him to apply for “an International Patent for these new lifters”. When Mr Schieber replied, confirming his instructions, he erroneously said that it would be possible to file a PCT application by 17 January 2005, and still maintain the priority date of the Vietnamese application. The correct date was in fact 7 January 2005, one year after the earlier priority date. This error was compounded when details of the instructions were entered onto Watermark’s computer system. For a reason that no one can explain, although the “Filing Deadline” was given as 7 January 2005, the “Priority Filing Date” was given as 14 January 2005. The latter equally erroneous date made its way into the computerised diary reminders for action. As a result preparations for filing the PCT application in Australia were not begun until 8 January 2005, after the expiry of a year from the Vietnamese priority date. The error was discovered on 13 January 2005. By then, it was too late to file a PCT application. So, in order to salvage as much as possible, Abaco have filed national applications, including one in the UK Patent Office, filed on 7 March 2005. The question is: can they do that, and still maintain the Vietnamese priority date of 7 January 2004?

By his decision of 30 October 2006 the Hearing Officer (Mr GJ Rose Meyer) decided that they could not. Abaco now appeal. Mr Tom Mitcheson appeared on behalf of Abaco; and Mr Colin Birss appeared on behalf of the Comptroller of Patents.

There are no fewer than three ways of obtaining patent protection in the UK. The first is by applying for a national patent. The application is made to and processed by the Patent Office. If granted the patent will protect the invention described in the claims in the UK. The second is by applying for a European patent. Although the application may be made either to the Patent Office or to the European Patent Office, the application will be processed by the EPO. If granted, the patent becomes separate patents in each member state that the applicant has designated, and protects the claimed invention in each of those designated states. The third is by applying internationally for a patent using the Patent Co-Operation Treaty (the PCT). The application may be made either to the applicant’s local patent office or through the World Intellectual Property Organisation (WIPO) in Geneva. This kind of application is called a PCT application. It is initially processed as a single application, with a single international search and a single preliminary report on patentability. At this stage (called the international stage) there is no need to pay national fees or prepare translations of the specification and claims. The applicant may designate the regions and countries in which he seeks protection. The form of application has, as its default position, the designation of all regions and countries in the world. Some countries are designated individually and also form part of a region; others are designated only as part of a region. The UK for example is both individually designated and also forms part of the area covered by a European patent. France and Italy, by contrast, are designated only as part of the area covered by a European patent, and are not individually designated. At the conclusion of the international phase the PCT application then becomes a collection of national applications in each of the designated regions or countries. However, in order to process those applications further (in what is called the national phase) the applicant will have to pay the fees of each national patent office and, where appropriate, supply translations of the specification and claims.

Mr Nguyen explained that Abaco sells its lifting clamp in most countries, but its important relevant markets were those in Germany, Italy, France and Great Britain. Consequently, patent protection was required for all these countries.

As Mr Schieber explained, in order to obtain patent protection in France and Italy, it is necessary to “use the European patent application route.” This is because it is not possible to enter the national phase of a PCT application in France or Italy, because neither is individually designated. Patent protection in these countries through the mechanism of the PCT can only be by way of a European patent. Accordingly Abaco’s preferred way of obtaining patent protection in Europe would have been via a European patent (processed by the EPO) rather than via a national application made to the UK Patent Office and other national patent offices.

Until the error was spotted, it was Abaco’s intention to make a PCT application in Australia, designating all regions and countries and then, so far as the UK was concerned, to enter the regional phase through a European patent application rather than through a national application made to the UK Patent Office.

Section 5 of the Patents Act 1977 was amended by the Regulatory Reform (Patents) Order 2004, which came into force on 1 January 2005. The explanation of the rationale for the Order, contained in the statement laid before Parliament in accordance with section 6 of the Regulatory Reform Act 2001, was that the reforms were aimed at cutting what was perceived as unnecessary red tape. Many of the reforms were “inspired by” the Patent Law Treaty signed on 1 June 2000 (but which had not then been formally ratified by the UK). The explanation stated that once the reforms had been implemented the Patents Act 1977 should be “PLT compliant”.

Article 13 (2) of the Patent Law Treaty says:

“Taking into consideration Article 15, a Contracting Party shall provide that, where an application (“the subsequent application”) which claims or could have claimed the priority of an earlier application has a filing date which is later than the date on which the priority period expired, but within the time limit prescribed in the Regulations, the Office shall restore the right of priority, if:

(i)

a request to that effect is made to the Office in accordance with the requirements prescribed in the Regulations;

(ii)

the request is filed within the time prescribed in the Regulations;

(iii)

the request states the reasons for the failure to comply with the priority period; and

(iv)

the Office finds that the failure to file the subsequent application within the priority period occurred in spite of due care required by the circumstances having been taken or, at the option of the Contracting Party, was unintentional.”

Section 5 of the Patents Act 1977, as amended, says so far as relevant:

“(1)

For the purposes of this Act the priority date of an invention to which an application for a patent relates and also of any matter (whether or not the same as the invention) contained in any such application is, except as provided by the following provisions of this Act, the date of filing the application.

(2)

If in or in connection with an application for a patent (the application in suit) a declaration is made, whether by the applicant or any predecessor in title of his, complying with the relevant requirements of rules and specifying one or more earlier relevant applications for the purposes of this section made by the applicant or a predecessor in title of his and the application in suit has a date of filing during the period allowed under subsection (2A)(a) or (b) below, then—

(a)

if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of being the date of filing the application in suit be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them;

(b)

the priority date of any matter contained in the application in suit which was also disclosed in the earlier relevant application or applications shall be the date of filing the relevant application in which that matter was disclosed or, if it was disclosed in more than one relevant application, the earliest of them.

(2A) The periods are—

(a)

the period of twelve months immediately following the date of filing of the earlier specified relevant application, or if there is more than one, of the earliest of them; and

(b)

where the comptroller has given permission under subsection (2B) below for a late declaration to be made under subsection (2) above, the period commencing immediately after the end of the period allowed under paragraph (a) above and ending at the end of the prescribed period.

(2B) The applicant may make a request to the comptroller for permission to make a late declaration under subsection (2) above.

(2C) The comptroller shall grant a request made under subsection (2B) above if, and only if—

(a)

the request complies with the relevant requirements of rules; and

(b)

the comptroller is satisfied that the applicant's failure to file the application in suit within the period allowed under subsection (2A)(a) above was unintentional.

…

(5)

In this section “relevant application” means any of the following applications which has a date of filing, namely—

(a)

an application for a patent under this Act;

(b)

an application in or for a convention country (specified under section 90 below) for protection in respect of an invention or an application which, in accordance with the law of a convention country or a treaty or international convention to which a convention country is a party, is equivalent to such an application.

(6)

References in subsection (5) above to a convention country include references to a country, other than the United Kingdom, which is a member of the World Trade Organisation.”

It will be seen that Article 13 (2) (iv) of the Patent Law Treaty gave an option to the Contracting Parties; and the United Kingdom chose the second of the two options in section 5 (2C)(b). Thus the critical provision for present purposes is that the Comptroller must be satisfied that the failure to file the application in suit within twelve months of the earlier relevant application was unintentional. It is common ground that the application in the present case complied with the relevant requirements of the rules (rule 6A of the Patents Rules 1995).

The essence of the Hearing Officer’s decision was that the “application in suit” for the purposes of section 5 (2C) was the national patent application. The only reason that the national application was made at all was because Abaco (or its agents) realised that time had expired for the filing of a PCT application. Throughout the twelve month period Abaco had intended to file a PCT application in Australia; and had not intended to file a UK national application. It followed, therefore, that the fact that Abaco did not file a UK national application within the twelve month period was intentional. That being so it could not be said that the “failure to file the application in suit within the period allowed … was unintentional.”

Mr Mitcheson submitted that since the amendments made to section 5 of the Patents Act 1977 were intended to make the Act “PLT compliant” it was necessary to interpret that section in the light of the Patent Law Treaty itself. In principle I agree with this submission. Although the Patent Law Treaty had not been ratified at the time when the amendments were made, and although the explanatory statement said that the amendments had been “inspired by” rather than required by the Patent Law Treaty, the Patent Law Treaty is at least part of the background against which section 5 ought to be viewed. Mr Mitcheson also submitted that the expression “the application in suit” was at least in part dictated by the fact that that definition already existed in section 5 before its amendment. Consequently, when the draftsman came to stitch in the new parts of section 5, he simply adopted the pre-existing definition. Again, in principle, I agree.

However, does that take us very far? Mr Mitcheson submitted that one must begin by interpreting the Patent Law Treaty. Article 13 (2) contains a definition of “the subsequent application”. This is defined to mean “an application … which claims or could have claimed the priority of an earlier application.” Article 13 (2) (iv) uses that defined expression. Accordingly, in interpreting Article 13 (2) (iv) one should (or at least can) read in the expanded meaning of the defined term. Thus expanded, Article 13 (2)(iv) would read:

“the Office finds that the failure to file an application … which claims or could have claimed the priority of an earlier application within the priority period … was unintentional.”

So, Mr Mitcheson said, on the facts of the present case Abaco intended to file a PCT application within the priority period. Had it done so, the PCT application could have claimed the priority of the Vietnamese application. It was not filed because of a mix-up about the deadline. Consequently Abaco’s failure to file an application which could have claimed the priority of an earlier application was unintentional. QED.

Mr Mitcheson supported this submission with an appeal to the formalism of the contrary construction. An applicant for a patent under the PCT is doing no more than making multiple applications for individual national or regional patents. Thus an application under the PCT which designates the UK will become a UK application. Accordingly the application now in progress through the Patent Office is the same as the UK application that would have emerged following the completion of the international phase of the PCT application that should have been made but was not. There is no reason to characterise the “application in suit” by reference to the administrative form of the application. What matters is the substance of the application. That is to be judged by considering whether the applicant intended to file some sort of application for the same subject matter claiming patent protection within the relevant territory.

Attractively as this submission was put, I do not agree with it. For the purposes of the Patent Law Treaty an “application” is defined by Article 1 (ii). It means “an application for the grant of a patent, as referred to in Article 3”. Article 3 (1) (a) says that the Treaty applies to national and regional applications which are types of applications permitted to be filed as international applications under the PCT. Article 3 (1)(b) says that it applies to international applications under the PCT, once they have entered the national phase. Article 3 (2) says that it applies to national and regional patents. It is, I think, common ground that the definition of “application” contained in Article 3 does not include a PCT application while it is in its international phase. This means that for as long as a person’s intention is to file a PCT application as an international application, he does not intend to file an “application” as defined by the Patent Law Treaty. If he does not intend to file an application (as defined) at all, he cannot intend to file an application in a sub-set of applications (as defined), namely an application which could have claimed the priority of an earlier application.

In my judgment this is consistent with section 5 of the Patents Act 1977. Section 5 (2) contains a definition of “the application in suit”. It means “an application for a patent”. A “patent” is in turn defined by section 130 (1) as “a patent under this Act”. Consequently, if one reads the expanded meanings into section 5 (2C) (b) it would say:

“the comptroller is satisfied that the applicant's failure to file an application for a patent under this Act within the period … was unintentional.”

If, as was the case, Abaco’s intention during the priority period was to make a PCT application to the Australian authorities, it cannot realistically be said that they unintentionally failed to file an application for a UK patent in the UK Patent Office.

The PCT is a complete code: Archibald Kenrick & Sons Ltd’s International Application [1994] RPC 635. It follows that a PCT application cannot be an application under the 1977 Act except to the extent that the Act says it is. The circumstances in which a PCT application can be treated as an application for a patent under the 1977 Act are dealt with in sections 89, 89A and 89B of the Act.

Section 89 (1) says:

“An international application for a patent (UK) for which a date of filing has been accorded under the Patent Co-operation Treaty shall, subject to—

section 89A (international and national phases of application), and

section 89B (adaptation of provisions in relation to international application),

be treated for the purposes of Parts I and III of this Act as an application for a patent under this Act.”

Section 89A says:

“(1)

The provisions of the Patent Co-operation Treaty relating to publication, search, examination and amendment, and not those of this Act, apply to an international application for a patent (UK) during the international phase of the application.

(2)

The international phase of the application means the period from the filing of the application in accordance with the Treaty until the national phase of the application begins.

(3)

The national phase of the application begins—

(a)

when the prescribed period expires, provided any necessary translation of the application into English has been filed at the Patent Office and the prescribed fee has been paid by the applicant; or

(b)

on the applicant expressly requesting the comptroller to proceed earlier with the national phase of the application, filing at the Patent Office—

(i)

a copy of the application, if none has yet been sent to the Patent Office in accordance with the Treaty, and

(ii)

any necessary translation of the application into English,

and paying the prescribed fee.”

Section 89B says:

“(1)

Where an international application for a patent (UK) is accorded a filing date under the Patent Co-operation Treaty—

(a)

that date, or if the application is re-dated under the Treaty to a later date that later date, shall be treated as the date of filing the application under this Act,

(b)

any declaration of priority made under the Treaty shall be treated as made under section 5(2) above, and where in accordance with the Treaty any extra days are allowed, the period of 12 months allowed under section 5(2A)(a) above shall be treated as altered accordingly …”

Mr Mitcheson submits that if a PCT application had been made, then it would have been given a date of filing and that, if that had happened, then section 89 (1) would have applied and the PCT application would have been deemed to have been an application for a patent under the 1977 Act once it had entered the national phase. It would then have qualified as an application falling within the definition of “the application in suit” in section 5. Thus there is no difference between a UK application derived from a PCT application once it has entered the national phase and a UK application made independently of a PCT application. This is reinforced by Article 13 of the Patent Law Treaty which includes a reference in the definition of “subsequent application” to an application which could have claimed the priority of an earlier application (but did not because it was never made).

The Hearing Officer rejected this submission because the notional PCT application had not in fact been made and therefore had not been accorded a date of filing. This was a necessary precondition to the treatment of a PCT application (once it had entered the national phase) as an application under the 1977 Act. Since the precondition had not been fulfilled, the deeming provisions did not apply. I agree with the Hearing Officer. The date of filing that is actually given to a PCT application is important for a number of reasons. First, it is part of the definition of the kind of PCT application that can be treated as an application under the 1977 Act. Second, it is a fixed and ascertainable point from which the international phase is measured. Third, it is only where the PCT application has been given a filing date that section 89B (1) (b) allows a declaration of priority to be treated as a declaration of priority under the 1977 Act. Moreover, the declaration of priority in the PCT application must be a declaration made under the PCT itself; and is common ground that such a declaration must be made, if at all, within the twelve month period which (at the moment) is incapable of extension under the PCT. All this is, in my judgment, inconsistent with Mr Mitcheson’s attempt to extend the statutory preconditions to a deemed or hypothetical PCT application at some undefined date within the priority period.

In my judgment Mr Mitcheson’s submission, if accepted, would amount to a major breach in the complete code of the PCT. The PCT undoubtedly has advantages to those who make international applications under it. As Mr Mitcheson said, these advantages include savings in cost and the flexibility given to applicants to decide whether to enter the national phase in all or only some of the territories designated in the international phase. But the PCT is a package. Part of the package is, for the moment, a rigid timetable. As Mr Birss submitted, having chosen to use the PCT route, Abaco must take the PCT system as they find it.

In his decision the Hearing Officer said that “the present application (GB0504687.5) must be regarded as the “application in suit”.” Mr Mitcheson said that it was absurd to regard only an application bearing that precise number as being the application in suit. An application made in identical form, but delivered to the Patent Office a week or two earlier, would have been allocated a different number. If the construction of the “application in suit” were this narrow, section 5 (2C) would be a dead letter. I agree with this, and Mr Birss did not dispute it. However, an application is what is sent to the Patent Office, compliant with the requirements of section 14 of the Act and rule 16 of the Patent Rules 1995 (and the rules that supplement that rule). The number is added by the Patent Office after the application is received. So the number is no more than a means of identifying the application: it is not part of the application itself. That is, I think, the sense in which the Hearing Officer used the number. What he was saying was that the application in suit was an application in the form of the application that had been sent to the Patent Office and had, as things turned out, been allocated the number GB0504687.5. Read in this way, I consider that the Hearing Officer’s comment was unexceptionable.

The Hearing Officer decided that because Abaco had had no intention within the priority period of applying to the UK Patent Office for the grant of a UK patent under the 1977 Act they could not be said to have unintentionally failed to file an application for the grant of a UK patent. Put the other way round, it was Abaco’s positive intention to apply to the relevant authorities in Australia, within the priority period, under the PCT. They had that intention during the priority period and for some days after it expired. Looked at this way it could not be said that Abaco had unintentionally failed to file an application for the grant of a UK patent.

For the reasons I have given I agree with the conclusion and reasons of the Hearing Officer. I have no doubt that there will be difficult questions that arise when Hearing Officers are called on to decide the extent to which the form of the application as actually filed may permissibly differ from what the applicant intended to file during the priority period. Those questions must be left to cases in which they actually arise. Fortunately, they do not arise in this case. I will dismiss the appeal.