IN THE MATTER OF SALLES’ APPLICATION FOR A PATENT

61 RBPORTS OF PAT'I!lNT, DESIGN', AND TRADE :MARK OASES. Vol. XLV.] 21ST MARCH, 1928. [No.3. Before THE SOLIOITOR.(}EliIlmAL. 17th November, 192'7. IN THE MATl'ER OF SALLI!lB' ApPLICATION FOR A PATENT. Oonvention Application for Grant of Patent.-Incomplete Translation of tke 5 Foreign Specification filed with the Application.-Modifi,ed Patents Form No.5 (for extension of time f01· leaving the Translation) required by the Oomptroller to be filed under Rule no as a condition 0/ allowing amendment of the &efective Translatt·on.-Appeal to Law Officer allowed.-Patents and Designs Acts, 1907 and 1919, Sections 65, 86, and 91; Patents Rules, 1920, Rules 4, 5, 16, 10 110 and 11I. The Oomptroller may only modify the Patentd Forms so as to adapt them for some purpose akin to the purpose for which they are primarily intended. On the 27th of August, 1926, a.n Application for a Patent was made by Salles claiming priority of date under SectioOn 91 of the) Acts. 'The translatioOn of the 15 foreign Specification filed with the Application in a.ccordance with Rule 16 was incomplete in that it did not include a translation of the letterpress on the drawings forming part of the Specification. In a letter to the Appllicant dated the 25th of May, 192'7, the Patent Office, inter alia, made the following requirement, viz. : 20 co The descriptive matter on the drawings of the Brazillian specification " should be translated. In view of the fact that the translation originally " filed was incomplete, the amended translation should be re-declared. The "Comptroller now requires, under Rule 110, that, in oases such as the "present one, Form 5 suitably modified under Rule 5 should accompany 25 " the amended translation. Such FoOrm should be stamped £2 in respect of " each month, or part thereof,elapsing between the date of this letter and " the filing of the amended dbcument." The Applicants' Agents asked to be heard by the Oomptroller-General on the matter, and the Superintending Examiner (Mr. G. F. Hannbly), acting for the 30 Oomptroller-General, heard S. G. 8. Dicker on the 21st of July, 1927. Dicker, for the Applicant, did not dispute the necessity for amending the translation, but contended that the Oomptroller has no power to require the filing of FoOrm 5, involving a fee, for the purpose of making the amendment. The following ,a,re extracts froOm the Decision of the Superintending 35 Examiner:" This procedure, to which Mr. Dicker takes exception in the present case, "lias been established under the very wide powers conferred on the Oomp" troller by Rule 110. In my opinion, the terms of this Rule empower tbe "Oomptroller to prescribe a procedure for the amending of imperfect 40 " documents Med in connection with a Convention Application, even though "he be precluded by the terms of Rule 111 from enlarging the period of I 62 No.3.] REPORTS OF PATEN'l',' DESIGN, AND TRADl!l MARK CASES. [Vol. XLV. In the lllatterol Salles' Application lOT a Patent. ---------------------"----------~--"-- "three months prescribed by Rule 16 during which the total omission to " file with the Application one or more of the necessary documents may be " corrected. "As regards the power of the Comptroller to prescribe that Form 5, "suitably modiifioed in wording, is the form to be used by the Applicant ;) " when requesting to be ,allowed to amend the imperfect document, Rule 110 " does not in any way fetter the discretion of the Comptroller in prescribing "the terms on which he 'may think fit' to permit the amendment, and " Form 5 is a form which, though by its wording is intended for use in " delays in leaving Convention documents, including translations, is readily 10 "capable o"f amendment in wording, in accordance with Rule 5, to meet " cases such as the present in which the documents are left in an imperfect " condition. "lllr. nicker also urged that the penalty of £2 per month without a 15 " maximum limit might involve serious financial hardship. " I am una,ware of any case in which a penalty in excess of £6 has been "incurred, which is the maximum penalty possible in connection with the " l,eaving of Oonvention documents, and, in fact, steps have now been taken "to ensure that the procedure does not require a penalty in excess of £6 " to correct an imperfect document. 20 " In conclusion, I decide that if this Application is to proceed under the "Oonvention, request must be made on Form 5, stamped £4 to amend the " imperfect translation left with the Application." The App,licantappealed to the Law Officer, and the Appeal was heard by the Solicitor-General on the 17th of November, 1927. 25 Courtney Terrell appeared as Counsel for the Appellant, and H. C. Haycraft (Assistant-Oomptroller) appeared for the Oomptroller-General. Courtney Terrell for the Appellant.-The question is whether the Comptroller has or has not power, as a condition of fulfilling one of his duties, to impose the payment of a stamp duty which is not provided by the Acts of Parliament 30 or by the Rules. Section 65 Df the Acts gives to' the BDard Df Trade and the Treasury the pDwer to prescribe fees. The Schedules to the Rules give a list of the F,orms to be used and the fees to be paid in connection with each Form, and there is no such Form that deals with this matter. The Rules can be amended only by the procedure prescribed by Section 86 of the Acts. In. the :35 Attorney-General v. Wilts United naif'us, lIimited ( (1923) 38 T.L.R. 781) where the Food Contrnlle1' requi·red a fee fO'r allowing a certain transfer or sale of milk, it was held that the dem'and imposed the conditiDn of paying a tax as a CDndition of carrying out a, duty, and unleBB there is some authority in clear and unambiguous terms to impose a lee, it cannot be done under any general terms. 40 Here there is no power, and such a power cannot 'be extracted from Rule 110 by any terms either expressed or implied. Haycraft fDr the Vomptroller-General.--'l'his is essentially a test case, and the decision will affect fifty or sixty cases annually in the Office. Rule 5 provides that the Patents Forms shall !be used in all cases to which they are applicable, 45 and may be modified as directed by the Comptroller to meet other cases. Every Dne of the forms, with two exceptions, namely Nos. Id and 2, is subject to' stamp duty. The Rules must therefDre cDntemplate that fees shall be paid in some cases which are not whDlly and specifically prDvided for under the Rules. There are many examples Df this; tlius the use of Form 18 to allDw amendment of the 50 Form Df ApplicatiDn for the purpDse Df the jDining ofa CD-Applicant has been held to' be a leaitimate mDdification under Rule 5. It wOllld seem that Rule 110 63 --"-----~------------------- Vol. XLV.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. In the Matter of Salles' Application for [No.3. a Patent. enables the Comptroller in the case of incorrect translation to allow the amendment of the document upon terms wh (...truncated)