IN THE MATTER OF KIEFER’S PATENT

440 No. 11.] n:mPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLIX. In the J.l/atterof Kiefer's Patent. THE ASSIST'ANT-OOMPTROLLER. March 12th, 1931. IN THE MATTER OF KIKFER'S PATENT. Patent.-.Application. to the Coniptroller under Section 26 of the Patents- and De"&igns.Acts, 1907 to 1928, for revocation of the Patent.-Application for Revoca- 5 tion made on. the last possible day, but before the sealing 0/ the Patent sought to be revoked.-Held that such premature" filing of the Application for Revocation -ioas valid and effective. (C Gin the 21st of January, 1931, The British J.lfannesmann Tube Co. Ld, applied to the Comptroller under Section 26 of the Acts for the revocation of Patent 10 No, 335,487 dated the 21st of January, 1929, and granted to Peter Kiefer. The Patent had not yet been sealed on the date when the Applicat.ion for Revocation was .filed but that day was the last day on which, under the provisions of subsection (1) of Section 26, the Application for Revocation could be lodged. The parties were heard by the Assistant-Com-ptroller (Mr. H. C. Haycraft) 15 acting for the Comptroller-General, upon the preliminary question whether the Application for Revocation was validly lodged.L. N. Reddie appeared as Agent for the Patentee ;H. lV. Waghorn appeared as Agent for the Applicants for Revocation. The Assistant-Comptroller.-This ma.tt.er comes before me upon a preliminary objection that the proceedings which have been begun under Section 26 for the revocation, of Patent No. 335,487 are bad ab initio and cannot be pursued. The question to be determined is purely one of the construction of Section 26 of the Acts, it being alleged on behalf of the Patentee that, if sub-section (1) of Section 26 is properly construed, it will be found that the Applicants for Revocation have not at any time had a statutory right to apply for the revocation of the Patent, and that the Application which they have lodged should be rej ected accordingly. The relevant portion of Section 26 (1) is as follows:"(1) Any person who would have been entitled to oppose the grant of a " patent,or is the successor in interest of a person who was so entitled, may, " within two years from the date of the patent, apply to the Comptroller for an " order revoking the patent on anyone or more of the grounds on which the " grant of the patent might have been opposed:" Mr. Reddie did not suggest that the Applicants for Revocation were not persons "who would have been entitled to oppose the grant of a patent" in this case, but urged that as the patent was not granted until the 11th of February, 1931, and as the period of two years from the date of the Patent expired on the 21st January, 1931, there was in fact no time at which a valid application could be made under Section 26 of the Acts. 20 25 30 35 40 Before 441 Vol. XLIX.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [No. 11. In the Matter of .Kiefer's Patent. 10 15 I 20 25 30 35 40 45 50 :> The history of the ease is as follows: The Patent was applied for on the 20th of J'anuary, 1930, claim being made under Section 91 of the Acts for .the date the 21st of January, 19'29, as the date of the Patent. The Oomplete Specification was accepted on the 25th of September, 1930, advertisement of the acceptance appearing in the Illustrated Official Journal (Patents) published on the 1st of October, 1930. No opposition 'was entered under Section 11 of the Acts, and the Patent could have been sealed as early as the 2nd of December, 1930. The Applicant for the Patent, however, had given no notice of his desire to have a Patent sealed, and moreover, did not lodge the necessary Patents Form No. 12 until the 22nd of January, 1931, i.e., until one day beyond the two years' period prescribed by Section 26. The Applicants for Revocation, who appear to have missed the opportunity of opposing the grant of a Patent under Section 11, awaited the sealing of the Patent with a view to applying for its revocation, but were obliged on the very last day of the said two years' period, viz., on the 21st of January, 1931, to put in their Application in respect of a Patent which was not then in existence. The Application was provisionally entertained, and, the Patent having been sealed on the 11th of February last, it remains for me to decide whether or not the Application for Revocation was validly and effectively filed. It should be stated here that it has been the practice of the Office in the past to admit applications for revocation lodged prematurely, but that in one case only-Patent No. 272,92,3--has the point in question become the subject of a decision. In that caso I decided that the Application for Revocation must proceed, and I may say at once that I see 'nothing in the circumstances of this present case,. nor in the issues raised at the Hearing, to cause me to vary that decision here. Section 2'6 (1) is no doubt rather unfortunately drafted. Instead of prescribing a period of two years from the date of the Patent, the object of the Section would probably have been better achieved by prescribing, say, one year from the date of sealing of the Patent. As the Section now stands, if " premature" Applications for Revocation are to be excluded, an Applicant can always, of his own volition, render Section 26 inoperative as regards his Application: for, if he arranges (as he very frequently does) that his complete specification be not accepted until eighteen months from the date of the Application (Section 6 (5», and if he then delays the sealing up to the limit of time allowed by Section 12 (2d) and Rule 51,a period of twenty-five months from the date of the Application will have expired, and an intending Applicant for Revocation is effectually shut out. Of course, in all cases, there is full opportunity given under Section 11 for opposing the grant of a Patent, but, if for any reason, opposition is not entered within the brief period of two months. prescribed by that section, the aforesaid action on the part of the applicant for a patent would negative the further opportunity of attack provided by Section 26. In the present case no extension of time for the acceptance of the Oomplete Specification or for the sealing of a Patent was sought by the Applicant for Patent, who, in view of the date claimed under the International Oonvention, was able, without recourse to such procedure, to ensure that no Patent should be sealed within the prescribed two years' period. In presenting the case for the Patentee, Mr. Reddie referred to the decision in the case of Ellis & Sons, Ld. v. Pogson ( (1923) 40 R.P . O. 62 and 179'). This was a case in whiclhan applicant for a, patent issued threats after the acceptance of his complete specification but before a patent had been granted. The 442 No. 11.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLIX. In the Matter of Kiefer's Patent. 5 10 15 20 2a 30 35 threatened party (...truncated)