08 August 2012

Bureaucratic Insanity or Rulemaking Error?

Danger Red Tape[Updated to explain how the Raising the Bar Act will address the problem described in this article.]

A couple of weeks ago we wrote about a surprising change in Australian Patent Office practice requiring a simple change of name of a patent holder to be advertised for opposition purposes (see IP Australia Changes Tack on Changing Names).  This week we have learned of a seemingly even more perplexing issue regarding amendments to the Register of Patents – namely that there are some circumstances in which it may be difficult, or even impossible, to correct an error in recorded details, other than by application to the Federal Court of Australia!

Specifically, we have become aware of a case in which the name of an inventor was misspelled on an international application filed under the Patent Cooperation Treaty (PCT) back in 2008.  When the application entered the national phase in Australia, the error was carried over into the Australian Patent Office records.  And when a patent was recently granted, the error was reproduced on the Patent certificate. 

The error in question has all the hallmarks of a simple typographical mistake.  The name of the inventor, e.g. ‘John Smith’ (not his real name, to avoid identifying the actual application), has been entered as ‘Jhon Smith’.  Throughout the entire application process, nobody involved noticed the mistake, which is perhaps unsurprising since all of the relevant records, going right back to the original PCT application, were consistent with one another.

Nonetheless, it ought to be a simple matter to correct such an error.  The fact is that, for whatever reason, the details recorded on the Register are incorrect.  This serves nobody’s interests.  However, in this case the Patent Office has refused to amend the Register unless it is provided with evidence, such as a declaration or affidavit of a person with knowledge of the facts, as to how and when the error occurred.

Our first reaction was that this is just another case of bureaucracy gone completely mad!  But on further consideration we think that, crazy as it seems, the Patent Office has this one right, and the problem lies with the Australian Patents Regulations 1991, which do not appear to permit the Office to correct an error of this type, except when it can be shown to be the result of an identifiable clerical error.

The lesson here for Australian patent attorneys, and others involved in the prosecution of patent applications in Australia, is that it is worth double- and even triple-checking all of the application details before a patent is granted, while they are still easy to correct!  Fortunately, the situation will improve once the provisions in Schedule 6 of the Intellectual Property Amendment (Raising the Bar) Act 2012 come into effect on 15 April 2013.

CORRECTING ERRORS IN THE REGISTER

The regulation at issue here is the same one we wrote about previously, i.e. Regulation 10.7.  The relevant portion in this case is the other limb of subregulation 10.7(1):

The Commissioner may, on a request being made in the approved form, amend:
(a) an entry in the Register for the purposes of:
(i) correcting a clerical error or an obvious mistake; …

There is no other provision for the Commissioner of Patents to make corrections, other than when there has been an actual change in the patentee name or address.

While this might appear unproblematic on the face of it, the terms ‘clerical error’ and ‘obvious mistake’ have both acquired specific interpretations within the general context of the Australian Patents Act 1990.

‘CLERICAL ERRORS’ AND ‘OBVIOUS MISTAKES’

The scope of what may be a ‘clerical error’ is quite broad – it can be almost any mistake of a ‘clerical’ nature, including one resulting from a mistaken understanding of the requirements in a particular situation.  However, it is well-established that for a clerical error to be correctable, there must be evidence to establish the precise nature and circumstances of the error.  Normally, this includes a declaration or affidavit, preferably sworn by the person who actually made the error.  Alternatively, it may be possible to present indirect evidence from which a clerical error may reasonably be inferred.  For example, file records may show that an attorney received specific details from a client, but that different, and erroneous, details were subsequently used in a filing.

The term ‘obvious mistake’ also has a specific meaning in relation to the patent law.  For something to be an obvious mistake, firstly it must be obvious that a mistake has occurred.  Additionally, the appropriate correction must also be obvious.  In other words, the correction of an obvious mistake must be something that any interested person would have been able to work out for themselves anyway.

In this context, a typographical or transcription error in a name will never be an obvious mistake.  While ‘Jhon’ does not look like a conventional English name, and we might guess that it should be ‘John’, there is no way to know for certain.  We live on a populous planet, with people of many ethnic backgrounds – and that is before allowing for the many, varied, weird and wonderful names and spellings invented by parents of a certain disposition in recent times!

RECTIFYING THE REGISTER

The bottom line, if a name is incorrectly recorded on the Register, is that the Register is wrong.  It is in the public interest that errors or defects in Register entries be corrected.  It should be enough to provide information or evidence establishing that the entry is incorrect, without needing to establish, by evidence, exactly how the error arose.  If the name of a person or company is recorded incorrectly, then it does not matter how or why this came to be!

Yet the wording of Regulation 10.7(1)(a)(i) does not appear to allow any flexibility in this regard.  To insist that the terms ‘clerical error’ and ‘obvious mistake’ should mean something different here than they do elsewhere in the Patents Act and Regulations would create an unacceptable and arbitrary inconsistency.  There is evidence elsewhere in the Act to show that had the Parliament intended to allow for more general corrections by the Commissioner, it would have done so.  Subsection 192(1) provides that:

(1) A person aggrieved by:

(d) an error or defect in an entry in the Register;
may apply to a prescribed court for an order to rectify the Register.

In other words, if an error in the Register bothers your for some reason (presumably including the fact that your name is spelt incorrectly, which aggrieves many of us when it happens) you are quite welcome to spend tens of thousands of dollars having the Federal Court of Australia issue a correction order!

RECTIFYING THE RULES

The solution is simple – the rules need to be amended to permit the Commissioner to correct ‘errors or defects’ in Register entries, where appropriate, which do not necessarily fall into the categories of clerical errors or obvious mistakes.

To protect against potential abuse of such a provision, the law should also provide for proposed corrections to be advertised for opposition purposes in appropriate cases where substantive rights may be affected.

Fortunately, there are provisions in the Intellectual Property Amendment (Raising the Bar) Act 2012 which will do precisely this, when they come into force on 15 April 2013.  In particular, new section 191A will provide that:

(1) The Commissioner may rectify the Register if the Commissioner is satisfied, on the balance of probabilities, whether on application or otherwise, of any of the following:
(a) the omission of an entry from the Register;
(b) an entry made in the Register without sufficient cause;
(c) an entry wrongly existing in the Register;
(d) an error or defect in an entry in the Register.

...

(4) The Commissioner must not make a declaration, or rectify the Register, under this section without first giving the following persons a reasonable opportunity to be heard:
(a) the person whose entitlement is not properly recorded by the Register;
(b) any person whose entitlement to the patent, or a share in the patent, is recorded in the Register.

However, it will always be more straightforward to correct any errors or mistakes prior to grant, while an application is still pending.  It is therefore important for everybody involved with the filing and prosecution of Australian patent applications to carefully check all documentation and recorded details in the course of examination and acceptance of an application to ensure that there are no errors in the granted patent!

2 comments:

anon said...

See section 191A of the "(Raising the Bar) Bill"

Patentology (Mark Summerfield) said...

Thanks for pointing this out - I did not think to look back to the amending legislation, rather than the Regulations, for this 'fix'.

I have updated the post accordingly.

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