A change in approach to amending claims after an initial opposition decision
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The recent approach
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The long standing view held by the Commissioner of Patents (Commissioner) in relation to appeals to the Federal Court of Australia (the Court) from a decision of the Commissioner in an opposition matter, was that the Court could consider an amended set of claims rather than the claims that were the subject of the Delegate’s decision.
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The changed approach
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In a recent decision, the Federal Court refused to consider amended claims.
It is likely that the decision will result in a change in practice with respect to opposition proceedings before the Australian Patent Office. The crucial decision for a Patent Applicant in any opposition proceeding will no longer be simply a matter of considering whether there is a need to amend, it will now also involve a consideration of the timing of such amendment, particularly if the Delegate’s decision is, or is likely to be, the subject of an appeal.
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The case
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The change in approach has been brought about by the judgment of Justice Jessup in Airsense Technology Limited v Vision Systems Limited [2007] FCA 828 (31 May 2007) (Airsense).
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The Airsense Technology Limited decision
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In his decision of 2 March 2005, Delegate Kraefft on behalf of the Commissioner held that claims 1 and 3 lacked an inventive step. Delegate Kraefft also found there to be a problem with the fair basis and clarity, and consequent entitlement to the claimed priority date, of claim 5. The Delegate allowed the Patent Applicant, Airsense, 60 days to correct these deficiencies by amendment.
On 22 March 2005, Airsense lodged an appeal against Delegate Kraefft’s decision to the Federal Court pursuant to section 60(4) of the Act and subsequently sought leave of the Commissioner pursuant to section 104 of the Patents Act 1990 (the Act) to amend its claims. In that request, Airsense sought to amend claim 5, but elected not to address Delegate Kraefft’s decision in respect of claim 1 or claim 3. In addition, Airsense sought to add some additional claims that had not been considered by the Delegate at the hearing and therefore had not formed part of his decision of 2 March 2005. These amendments were not allowed by the Commissioner at first instance however, following the filing of further requests for leave to amend, the Commissioner issued notification of the allowance of the amended claims on 26 September 2006.
Under section 104 of the Act, once a request for leave to amend is allowed the notification of allowance is advertised in the Official Journal of Patents and is open to opposition by the Minister or any other person subject to and in accordance with the Patent Regulations and under Chapter 5 of the Act. However, as mentioned it has been the long-standing view of the Commissioner that once an appeal under section 60(4) has been lodged (in this case on 22 March 2005), the whole matter of the Patent Applicant’s entitlement to a patent is before the court and it is therefore up to the court in the appeal proceeding to deal with the amended specification.
In support of her stance the Commissioner has relied on the decision of Justice Heerey in Genetics Institute Inc v Kirin-Amgen Inc (1996) 67 FCR 527 (“Kirin-Amgen”) where his Honour considered that if the court was of the view that any of the claims were bad but could be cured by amendment, the court had the power to direct that the patent application proceed to grant, together with any amendment. Heerey J held that "the case" to which section 60(1) of the Act refers "comprehends all issues relating to the grant of the patent, including amendments. These are matters which were before the Commissioner and are also before the Court" (at 529).
On the basis of the Commissioner’s stance and the fact that it was the practice of the Patent Office not to take any further action under Chapter 5 of the Act with respect to the patent application-in-suit while an appeal under section 60(4) is on foot, Airsense moved by notice dated 11 May 2007 for a direction that “the trial and determination of the appeal in this proceeding and all evidence in this appeal be directed to the patent application with the form of the specification as amended.” In support of this motion Airsense argued that this would avoid a multiplicity of proceedings for the court and convert the present proceeding into one in which the specification and claims in their now form would be the focus for consideration rather than in the form in which they came before the Delegate Kraefft.
The Respondent resisted the Applicant’s motion. While it accepted that an appeal under section 60(4) involves a hearing de novo, it argued that the subject matter of the appeal must be the same as the subject matter of the hearing before the Delegate. It also argued, quite correctly in the writer’s view, that it would be antithetical to the achievement of the objects of Chapter 5 of the Act that appellate proceedings under s 60(4) should be used as the vehicle for the primary testing of substantive claims against such legitimate grounds of opposition as there may be, without those claims first having been dealt with by the Commissioner or her delegate.
It appears that the Respondent’s arguments found some sympathy with the Court. While his Honour recognized that a decision to refuse Airsense’s motion would place it in a “procedural bind” he was not prepared to accept that he had clear power under the Act to consider anything other than the specification and claims which was the subject of Delegate Kraefft’s decision of 2 March 2005. His Honour sought guidance from the Full Court’s decision in New England Biolabs Inc v F Hoffman-La Roche AG (2004) 141 FCR 1 (“New England Biolabs Inc”), which he regarded as pertinent to the matters in issue in the current dispute. Jessup J referred to paragraphs [45] and [46] of the decision in New England Biolabs Inc where the Full Court stated:
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 | “Implicit, however, within the use of the word "appeal" and the phrase "appeal against the decision of the Commissioner", and without any other description of the controversy to be quelled by the exercise of judicial power, is the identification of the matter or controversy -- the subject matter of the deployment of the respective powers -- being the same in each case. The simplicity of the enunciation of what the court is doing: hearing an appeal against a decision of an administrator by exercising for the first time the judicial power of the Commonwealth in the original jurisdiction leads one to conclude that the court is dealing with the same subject matter as was dealt with by the Commissioner.
To the extent that the Act and regulations delimit the boundary of the subject matter for decision by the Commissioner by restricting the decision to certain criteria or grounds, or by limiting what is permitted to be raised by an opponent in the application, or by eliminating any element of discretion in the making of the decision, they plainly confine the controversy before the Commissioner. We are of the view that the notion of an appeal to the court in this context evinces a parliamentary intention that the same subject matter be dealt with by the court as was dealt with by the Commissioner (but this time by the deployment of judicial power).Thus, in order to conclude that the court has a wider task by reference to different or wider criteria than that undertaken by the Commissioner one would need to identify some factor either from the nature of the judicial power or from some statutory provision upon which to base such a conclusion.”
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On the question of the subject matter of an appeal, Jessup J referred to paragraph [49] where the Full Court’s stated:
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His Honour held that although the decision in New England Biolabs was directly concerned with an appeal under s 104(7) of the Act, the Full Court discussed the content and history of relevant provisions of the Act in terms which made it clear that, under s 60(4) no less than under s 104(7), the subject matter of the appeal must be the same subject matter as was before the original decision maker. Justice Jessup stated that the Full Court’s conclusion in that regard expressly took account of the different kinds of powers exercised by each (first executive, then judicial) and of the nature of such an appeal (by way of hearing de novo). In dismissing Airsense’s motion, his Honour stated that, under s 60(4), an appeal must be limited to the subject matter which was before the delegate under s 60(1) as to do otherwise “would involve a change of subject matter, and would introduce claims in relation to which the proceeding could not be considered to be an "appeal" in the sense explained in New England Biolabs.”
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