IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application 616,196 having been rejected under Rule 47(2)
of the Patent Regulations, the Applicant asked that the Final
Action of the Examiner be reviewed. The rejection has consequently
been considered by the Patent Appeal Board and by the Commissioner
of Patents. The findings of the Board and the ruling of the
Commissioner are as follows:
Agent for Applicant
Mr. Murray Thrift
c/o Ade & Company
1700 Winnipeg Square
360 Main Street
Winnipeg, Manitoba
R3C 3Z3
This decision deals with applicant's request for review by the
Commissioner of Patents of the examiner's Final Action, dated June
23, 1992, on application 616,196 (Class 166-26) filed October 18,
1991, and entitled No-Turn Tool. The inventor is James L. Weber
and the application is assigned to Halbrite Well Services Co. Ltd.
Application 616,196 is an application to re-issue patent 1,274,470
which issued on September 25, 1990.
A hearing before the Patent Appeal Board, composed of Mr. Frank
Adams, Chair, and members Mr. Vic Duy and Mr. Murray Wilson, was
held on December 16, 1992 at which time the applicant was
represented by Mr. James L. Weber, the inventor, and Mr. Murray
Thrift, a patent agent with the firm of Ade & Company.
The original patent and this application relate to a no-turn tool
and its application with well head equipment. Figure 3 is a front
elevation of the no-turn tool, figure 4 shows the tool partly in
section, and Figure 6 shows a cross-section of the tool in the
operative position.
(see formula I, II, III)
The no-turn tool is intended to be attached to the lower end of a
rotary pump which is, in turn, connected to the lower end of an
oil well production string. As shown in the above figures, the
tool 18 comprises a casing 20, a drag block casing 21 and an
internal mandrel 23. In operation, drag blocks 31 engage the inner
surface of the well casing and the internal mandrel is rotated in
a clock-wise direction so that cam 61 forces a slip 47 outwardly
into tight engagement with the well casing, thus preventing
rotation of the casing and the production tubing which is attached
to the upper end of the inner mandrel. The tool can be released
by rotating the mandrel in the opposite direction. If the mandrel
cannot be rotated to release the tool, a force from the well
surface moves the mandrel vertically so that shear ring 64 can
shear pins 65, and further vertical movement will clear the cam
from the slip, permitting the slip to move inwardly arid out of
contact with the well casing.
In part (3) of the Petition for Reissue, the applicant states that
the patent is deemed defective or inoperative as follows:
"Claim 1 of the patent recites a combination of elements,
one of which is defined as "casing engaging means carried
by the stationary means and operable to engage the casing
so as to prevent right-hand rotation of the stationary
means in the casing while permitting vertical movement
of the stationary means in the casing." It is not an
essential characteristic of the invention that the casing
engaging means permit vertical movement of the stationary
means in the casing. Amended claim 1 omits this
limitation."
In part (4) of the Petition, the applicant identifies a series of
events during the prosecution of the original application 586,660,
that issued to Patent 1,274,470, which the applicant states led to
the alleged error. In particular, the examiner rejected the main
combination claim as being directed to a desired result. This
rejection was repeated in a second examiner's report and then in
a Final Action. There was some urgency to obtain a patent and as
a result the application was advanced for examination out of its
routine order. In response to the Final Action, the applicant and
his agent discussed adding limitations to the claim, which would
not be too limiting in a practical sense, in order to obtain
allowance of the application.
As a result of these discussions, claim 1 was amended to read as
follows:
"Apparatus for pumping oil from an oil well having a
casing therein, said means comprising in combination a
production string having stationary production tubing,
a rotary pump drive means in the production tubing, a
screw-type pump at the lower end of said string, said
pump including a stator and a screw-type rotor rotatable
therein, and a no-turn tool operatively secured to the
lower end of said stator to prevent right-hand rotation
of said stator and said production tubing, said no-turn
tool comprising stationary means secured to the stator
and casing engaging means carried by the stationary means
and operable to engage the casing so as to prevent right-
hand rotation of the stationary means in the casing while
permitting vertical movement of the stationary means in
the casing."
The portion of the above claim which is underlined vas added as a
result of the discussions between the applicant and his agent.
The application issued as patent 1,274,470 on September 25, 1990.
In part (5) of the Petition for Reissue, the applicant states:
"During discussings (sic) between your Petitioner
and his Patent Agents on June 10, 1991, a reanalysis
of the invention as claimed led to the conclusion
that in certain applications of the NO-TURN TOOL,
the ability to move the tool vertically within the
pipe casing was unnecessary. Thus, it was concluded
that other parties could manufacture and use no-
turn tools while avoiding infringement by making the
tools so that they would not nova vertically within
the pipe casing when set."
The June 10, 1991 discussions between the applicant and his agent
concluded that the above underlined portions of the claim, which
had been added during the prosecution of the application, were too
limiting. This led to the filing of the reissue application
containing a broader claim.
In the reissue application, the applicant proposes to remove the
phrase "while permitting vertical movement of the stationary means
in the casing" from claim 1 of the patent, leaving a claim which
is broader in scope than the claim of the original patent because
of the absence of the functional statement related to vertical
movement.
The examiner refused the Petition for Reissue and issued a Final
Action on June 23, 1992. In summary, the examiner gave three
reasons for refusing the Petition, and the Board will deal with
each of these separately.
The examiner's first reason, which the Board considers to be the
most substantial reason for the refusal, was stated as follows:
"no error arose from the inadvertence, applicant or
mistake which meets the requirements of Section 47(1) of
the Patent Act in view of the Canadian Jurisprudence
discussed."
In reply to the Final Action, the applicant stated, in part:
"In the official action of March 25, 1992, the examiner
states the grounds for refusal of the applicant's
Petition as being in (sic) absence (sic) "inadvertence,
accident or mistake, in the original Patent". The basis
of this allegation is apparently the examiner's belief
that if something is done with forethought or in any way
intentionally, there can by definition be no
"inadvertence, accident or mistake" in the action taken.
Given that premise, it seems that it would not be
possible or (sic) reissue any patent and very definitely
not to broaden a claim by reissue. This is clearly
incorrect as the Patent Act, Section 47, specifically
entitles A (sic) patentee to reissue a patent."
The question before the Board is whether or not the applicant has
satisfied the statutory provisions for reissue in the Patent Act.
Under these provisions, it is well accepted that in order to obtain
a reissue patent, a patentee must establish that the issued patent
does not accurately express the inventor's intention to protect
that which is being sought by reissue, and that the failure to so
protect the invention was as a result of a mistake of the kind
contemplated by Section 47 of the Patent Act.
In the decision of Farbwerke Hoechst Aktiengesellschaft Vormals
Meister Lucius Bruning v. The Commissioner of Patents, (1966)
S.C.R., 604, at 615, the Supreme Court commented with respect to
the requirement that an inventor must have originally intended to
protect the invention being sought via reissue, as follows:
"Assuming, without deciding, that a mistake of law could
constitute that kind of mistake which is contemplated by
s. 50 (now s. 47), in my opinion the section can only
operate if the patentee can satisfy the Commissioner
that, because of his mistake, the patent fails to
represent that which the inventor truly intended to have
been covered and secured by it." (underlining and note
regarding s. 47 added)
Furthermore, on the question of whether a deliberate act qualifies
as an error under Section 47 of the Patent Act, the decision in
Paul Moore Co. Ltd. v. Commissioner of Patents, (1980) 46 C.P.R.
(2d), 5, states at 9, as follows:
"The appellant's counsel also argued that the
Commissioner's decision was based on the erroneous view
that what is done intentionally cannot be done by
mistake. The attack is not without foundation. In a
passage of his reasons, the Commissioner seems to express
the view, which is certainly erroneous, that a deliberate
act cannot be considered as having been done by mistake.
However, in my opinion, that is not what the Commissioner
meant. What he wanted to say was merely that applicant
could not be said to have been the victim of a mistake
it it was found that the reference to the pair of
connecting panels in claims 1 and 4 had been made
intentionally, with full knowledge of its consequences.
(underlining added)
The applicant alleges that a mistake was made in the prosecution
of the original application in that the functional statement
concerning vertical movement was included when it may not have been
essential. A careful study of the applicant's petition does not
show any evidence that there was any intention to claim in the
application the invention which is now being sought through
reissue. In fact, the petition leads the Board to conclude that
the scope of the claim which issued in patent 1,274,470 was as
broad as the applicant felt was possible at the time that the
patent issued. In order to obtain the patent, the applicant was
involved in a lengthy and complicated prosecution that culminated
in the examiner issuing a Final Action. The applicant indicates,
in part (4) of the Petition for Reissue, that careful consideration
was given to what limitations were necessary to overcome the
examiner's rejection and that some limitations were added which
would not be too limiting. At the hearing, the applicant's agent
also referred to telephone discussions with the examiner in this
regard.
In the Board's opinion, the information provided by the applicant
in his Petition for Reissue does not provide the relevant evidence
required to show that the inventor had intended to claim in the
original patent what he now seeks to claim by reissue. In our
view, the alleged mistake made by the applicant was not of the kind
contemplated by Section 47 of the Act because it did not, based on
the evidence provided, arise from inadvertence, accident or
mistake. Therefore, the Board does not find the applicant's
grounds for reissue, as expressed in part (5) of the Petition for
Reissue, convincing.
The examiner's second reason for refusing the petition is:
"claims broader in scope than claims deliberately
cancelled during the prosecution of the original patent
because of an objection made by the Examiner and with
full knowledge of the relevant facts and knowledge in
Part 4 of the Petition (i.e. Final Action on the original
application);"
It appears that the examiner is addressing the issue of an attempt
by the applicant to recapture subject matter that was claimed in
a claim which was deliberately cancelled during the prosecution of
the original application. A comparison of claim 1 as originally
filed in application 586,660, and which was cancelled during the
prosecution of the application, with claim 1 of the instant
application, shows that the latter pending claim is of narrower
scope. For this reason, the Board does not agree with the examiner
that this is an attempt by the applicant to recapture lost subject
matter.
The examiner's third reason for refusing the petition is:
"the claims are being changed because the patent was
being circumvented by others."
From this statement, it appears that the examiner feels the
patentee was aware of other manufacturers who were circumventing
the patent and, in order to catch them as infringers, is now trying
to broaden the scope of the claims. In part (5) of the petition,
the applicant states that knowledge of the error regarding claim 1
came in the light of a reanalysis of the claims on June 10, 1991.
This reanalysis concluded that other parties could manufacture the
no-turn tool and avoid infringement by making the tool so that it
would not move vertically. The Board does not read that portion
of the petition to necessarily mean that avoidance of infringement
was or is taking place, since no evidence has been presented to
show that circumvention has in fact taken place.
It is a widely accepted principle that a patent cannot be reissued
merely to broaden the scope of the claims in order to catch
subsequent infringers. At the hearing, there was some discussion
of infringement and Mr. Thrift stated that no infringement was
taking place, to the best of his knowledge. However, it was left
unclear as to whether there were any non-infringing manufacturers
of no-turn tools who would become infringers if the scope of the
claims were to be broadened through reissue.
In summary, on the basis of its findings with respect to the
examiner's first reason for rejecting the petition for reissue,
the Board believes that the applicant has not satisfied the basic
reissue requirements of Section 47 of the Patent Act and, as a
result, recommends that application 616,196 for reissue of patent
1,274,470 be refused.
R.H. Adams V. Duy M. Wilson
Chairman Member Member
Patent Appeal Board Patent Appeal Board Patent Appeal Board
I concur with the findings and the recommendation of the Patent
Appeal Board. Accordingly, I refuse to grant a patent on this
application. Under Section 41 of the Patent Act, the Applicant
has six months within which to appeal my decision to the Federal
Court of Canada.
M. Leesti
Commissioner of Patents
Dated at Hull, Quebec
this 27th day of May 1993.