Justice Emmett has recently handed down judgment in the above Federal Court proceeding concerning the validity and alleged infringement of a patent relating to the automatic recognition of widely disseminated audio signals such as television and radio broadcasts. Importantly, the judgment considers whether “double patenting” (or “double claiming”, as it is also known) is a ground for revocation of a patent under the Patents Act 1990 (“the Act”).
Our client, Arbitron, Inc. (the patentee), was the Applicant in the proceeding. Arbitron asserted that Telecontrol AG (the first respondent) had infringed the patent by sale or supply of a device known as a “Watch Meter” with the object of audience measurement or survey.
Telecontrol cross claimed for invalidity of the patent on the following grounds:
- The claimed invention of the patent was not fairly based on the matter described in the specification;
- The claimed invention of the patent was not novel;
- The claimed invention of the patent did not involve an inventive step;
- Arbitron was not entitled to the patent within section 138(3)(a) of the Act (or in the alternative, that the Register should be rectified pursuant to section 192(1) to remove registration of the patent).
Double patenting as a ground for revocation of a patent
Telecontrol asserted that Arbitron was not entitled to the patent on the basis of double patenting in an associated and earlier “Grandparent” patent, in contravention of section 64(2) of the Act. Section 64(2) provides that, where an application for a standard patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor and the relevant claim or claims in each of the complete specifications have the same priority date or dates, a standard patent cannot be granted on the application.
Although His Honour found that double patenting had occurred (i.e. the invention claimed in the patent was found to be the same as the invention that was the subject of the Grandparent patent), he did not find that Arbitron was not entitled to the patent within the meaning of section 138(3)(a) of the Act.
In arriving at the above finding, His Honour contrasted the policy underlying the double patenting prohibition contained in section 64(2) (which His Honour stated was to minimise public confusion), with the critical significance of the grant of monopoly rights contemplated by the grounds of revocation provided for in the Act. His Honour was of the view that double patenting has no significant undesirable consequences, does not enlarge the monopoly of the patentee and does not involve the grant of monopoly rights that are inconsistent with the scheme of the Act. A distinction was also drawn between entitlement in relation to the invention claimed, with entitlement in relation to the grant of a patent. On that basis, His Honour concluded that Arbitron’s entitlement to the patent was not affected by double patenting.
Rectification of the Register in order to address double patenting
Telecontrol argued that in the alternative to revoking the patent on the basis that Arbitron was not entitled to the patent (by reason of double patenting), the Register should be rectified to remove registration of the patent pursuant to section 192(1) of the Act.
His Honour highlighted that it is the sealing of the patent that creates the rights of the patentee, and not the entry of the consequences of sealing in the Register. It was also noted that the Commissioner is obliged to register particulars of standard patents in force. On that basis, even though the patent was sealed in contravention of section 64(2), the Commissioner was nonetheless required to register its particulars in the Register so that the entry existing in the Register did not wrongly exist.
Other grounds of revocation
His Honour’s findings on the remaining grounds of invalidity relied upon by Telecontrol (i.e.fair basis, novelty and inventive step) can be summarised as follows:
- His Honour considered that the disclosure in the specification provided a real and reasonably clear disclosure of the invention claimed so as to satisfy section 40(3) of the Act.
- The prior art relied upon by Telecontrol in asserting lack of novelty did not disclose all of the essential integers in combination, nor did they disclose the combination with sufficient clarity.
- Telecontrol did not establish that the common general knowledge as it existed in the patent area at the relevant time, was such that the invention claimed by the patent would have been obvious to a relevantly skilled person.
Telecontrol’s cross-claim for invalidity of the patent was therefore dismissed.
Although Telecontrol did not establish that claim 1 and the other claims of the patent should be construed narrowly so as to be restricted to the preferred embodiments described in the body of the specification, His Honour was not persuaded that the Telecontrol system and device exhibited all of the integers of claim 1 of the patent, and therefore did not make a finding of infringement of the patent.