DECISION OF THE COMMISSIONER
FILING DATE: Informal Petition.
The filing date of the application should have been
the date on which the letter accompanying the
specification and the filing fee were filed.
FINAL ACTION: Reversed.
IN THE MATTER of a request for a review by the
Commissioner of Patents of the Examiner's Final
Action under Section 46 of the Patent Rules.
AND
IN THE MATTER of a patent application serial
number 917,024 filed November 23, 1964 for an
invention entitled:
CELLULAR GLASS AND METHOD OF MAKING SAME
Patent Agent for Applicant:
Messrs. Fetherstonhaugh & Co.,
Ottawa, Ontario.
This decision deals with a review by the Commissioner of
Patents of the Examiner's Action rejecting the application.
The request was made in accordance with Section 46 of the Patent
Rules.
The Patent Appeal Board has reviewed the prosecution of
this application and the facts are as follows:
Application 917,024 was filed November 23, 1964 in the
name of O.A. Vieli and refers to "Cellular Glass and Method
of Making Same".
In the prosecution terminated by the Final Action, the
examiner refused all the claims (claims 1-23) in view of
applicant's prior issued Belgian patent 637,983, January 16,
1964. The examiner maintained that these claims must be
removed because they fail to comply with Section 28(2) of the
Patent Act since applicant's prior issued patent bears a filing
date of September 30, 1963 which is more than 12 months prior
to the Canadian filing date of November 23, 1964.
In applicant's letter of November 2, 1970 wherein the
review by the Commissioner was requested, he argued:
The application should have been given a filing date of
July 20, 1964 and thus have been permitted to claim priority
from Austrian application A 5810/63 which was filed on July 19,
1963,July 19, 1964 having fallen on a Sunday. Had the
applicant been able to obtain this filing date and claim
priority this prior Belgian patent would not constitute a
bar under Section 28(2)(b) of the Act.
Upon review of the grounds for rejection set forth by the
examiner, as well as all the arguments presented by the applicant
I am not satisfied that the rejection is well founded although
the facts used by the examiner are correct considering the
filing date given by the Patent Office.
The applicant of the application in a letter dated July
15, 1964 forwarded a patent specification together with a filing
fee of $30.00 to the Canadian Patent Office.
In a letter dated July 28, 1964 the Office informed the
applicant that "the papers may not be entered and given a
serial number and filing date as the required formal petition
was not included".
On November 23, 1964 Messrs. Fetherstonhaugh and Co.
refiled this specification and included the required petition.
This application was given a filing date of November 23, 1964
and a serial number 917,024.
This application was given a Final Action on August 7,
1970 on the grounds that the invention being claimed therein
was patented in Belgian patent 637,983 filed on September 30,
1963 and which issued on January 16, 1964. This patent
constitutes a bar under Section 28(2) of the Patent Act.
The basic point to be resolved is whether the Office
should consider the letter dated July 15, 1964, referred to
above,acceptable or not acceptable as a petition for the
purpose of obtaining a filing date of July 20, 1964 to overcome
the statutory bar under Section 28(2).
No definition of the term "petition" appears in the Act
or Rules . The definition given in Websters' 3rd New Inter-
national Dictionary is as follows:
"Petition: 2a: a formal written request addressed to an
official person or organized body (2): a formal written
request addressed to a sovereign or political superior
for a particular grace or right."
I find that Section 31 of the Patent Rules permits an
inventor to file an invention with the minimum of formal require-
ments. Section 33 of the Patent Rules then specifies all the
formalities which must be fulfilled in order to complete the
filing of the application. I therefore find that the prescribed
forms are applicable in Section 33 of the Patent Rules but
are not necessarily applicable in Section 31 of the Patent
Rules. It is noted that not all petitions submitted to this
Office are entirely satisfactory and provisions are made in
Section 34 of the Rules for having corrections made,in a
specified time, to those which are found to be defective.
I find that the courts have consistently, when possible,
avoided an interpretation of the Act and Rules which has the
effect of defeating an inventors rights. In Grunwald v.
The Commissioner of Patents (1946) Ex.C.R. 674 a somewhat
similar situation existed. An application was filed on June
17, 1937 and the application consisted of a petitions specifi-
cations, claims drawings and fee. The application was made
by an attorney for the applicant, but the power of attorney
did not accompany the application. The Office refused a
filing date. However this was overruled by the Court and the
Judge stated,"In my opinion the application which was received
by the Commissioner on June 17, 1937, while incomplete was
nevertheless substantially complete and should therefore have
been given a serial number and a filing date".
In the circumstance, therefore I am satisfied that the
letter dated July 15, 1964 accompanying the patent specification
together with a filing fee , may be considered an informal
petition and the application as filed was substantially complete.
I recommend that this application be given a filing date
of July 20, 1964, the date on which it was officially received
by the Patent Office.
R.E.Thomas,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board and
I am directing that the application be given a filing date of
July 20, 1964.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated at Ottawa, Ontario
this 11th day of January, 1971