COMMISSIONER'S DECISION SUMMARY
C.D. 1205 ....Application No. 2,022,718 (F01, F10, F20)
Application rejected in view of prior public use
The examiner rejected the application on the grounds that
the invention had been made available to the public before the
application was filed citing an affidavit provided by a third
party. The Board ruled that the affidavit did not provide
sufficient information for a conclusion that there was public
disclosure of the invention by a person who did not obtain the
information directly or indirectly from the inventor himself.
IN THE CANADIAN PATENT OFFICE
DECISION OF THE COMMISSIONER OF PATENTS
Patent application number 2,022,718. having been rejected under
Subsection 47(2) of the Patent Rules, 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
Robic
Patent and Trade Mark Agents
55 St.-Jacques
Montreal, Quebec
H2Y 3X2
This decision deals with the Applicant's request that the
Commissioner of Patents review the Examiner's Final Action on
patent application number 2,022,718 (Int. Class A01D-67/00) which
was filed on August 3. 1990 by Applicants/Inventors Larry Downey
and Patrick Downey for an invention entitled "TOOL-SUPPORTING
ATTACHMENT FOR A VEHICLE". The Examiner in charge issued the
Final Action on March 5, 1993 refusing the application under
Subsection 27(1)(c) of the Patent Act on the grounds that the
invention was available to the public before the application was
filed. The Applicant submitted a written response on June 15,
1993 and requested a review by the Commissioner of Patents.
The application relates to a tool-supporting attachment to be
mounted on a tractor for use in suspending motorized tools which
must be carried on long distances. in particular an attachment
for suspending hedge clippers for use in the pruning of Christmas
trees whilst the trees are growing in a plantation. This
attachment comprised levelling means to permit the upper frame of
the attachment to always be in a substantially horizontal
position with respect to the ground on which the vehicle is moved
such that the tools are always kept at a constant height above
the ground.
In his Final Action the Examiner relied on an affidavit provided
by Richard J. Downey. the uncle of Larry Downey and the brother
of Patrick Downey, is a protest filed on January 6. 1992. In
making the rejection the Examiner stated that :
The above reference establishes that the subject of the instant application was
made available to the public prior to the filing date of the instant application
August 3, 1990.
Accordingly this application stands rejected.
Section 27(1)(c) is the section of the Patent Act under consideration here. This
section establishes that an applicant is not entitled to a patent when the invention
was, before the date of filing of an application, disclosed by a person in such a
manner that it became available to the public in Canada or elsewhere.
It is held that the affidavit establishes that the invention of the instant application
was made available to the public before the filing date of the instant application.
It is to be noted that item 6) of the affidavit notes that there was no involvement
of the named inventors Larry Downey and Patrick Downey in the design and
construction of the tool.
In its reply to the Final Rejection dated June 15. 1993 the
Applicant has objected to the Examiner's reliance on as affidavit
from a third party on the grounds that such an affidavit is not a
citable document. It is reasoned by the Applicant that since the
Patent Act does not provide any right for an applicant to cross-
examine an affiant on his affidavit acceptance of an affidavit as
a valid reference would be in opposition to the principle of
fairness. It is further suggested that it is sufficient for an
applicant to merely contest the veracity of an affidavit in order
to overcome it.
It is also suggested that the relevant subsection of the Patent
Act to be applied is Subsection 27(1)(d) rather than Subsection
27(1)(c) on which the Examiner relies. Subsections 27(1)(c) and
(d) are as follows:
27.(1) Subject to this section, any inventor or legal representative of an inventor
of an invention may, on presentation to the Commissioner of a petition setting out
the facts (in this Act termed the filing of the application) and on compliance with
all other requirements of this Act, obtain a patent granting to the applicant an
exclusive property in the invention unless:........
..... (c) the invention was, before the date of filing of the application or before the
priority date of the application, if any, disclosed by a person other than a person
referred to in paragraph (d) in such a manner that it became available to the
public in Canada or elsewhere; or
(d) the invention was, more than one year before the date of filing of the
application, disclosed by the applicant or by a person who obtained knowledge of
the invention, directly or indirectly, from the applicant, in such a manner that it
became available to the public in Canada or elsewhere.
Applicant's contention that Subsection 27(1)(d) applies is based
on his assertion that due to the family relationship between the
affiant and the inventors and due to the fact that the parties
lived within close proximity it is more than likely that Richard
Downey learned of the invention from Messrs Larry and Patrick
Downey themselves. Since Richard Downey states in his affidavit
that he demonstrated the invention to members of the Quebec
Christmas Tree Exporters Association between December 1989 and
August 1990 i.e. less than one year before the filing date of
the application, the provisions of Subsection 27(1)(d) would
allow the inventors named in the application to obtain a patent
for the disclosed invention.
The Board has considered the affidavit in the light of the
Applicant's submission and is of the opinion that it does not
provide sufficient information for the Board to conclude that
there was public disclosure of the invention by a person who did
not obtain the information directly or indirectly from the
inventor himself. The Board therefore recommends that the
rejection of the application be withdrawn and the application be
returned to the examiner for further prosecution on its merits.
Peter J. Davies Michael Howarth
Acting Chairman Member
I concur with the findings and the recommendation of the Board.
I accordingly withdraw the rejection of this application and
order that the application be returned to the examiner for
further prosecution on its merits.
M. Leesti
Commissioner of Patents
Dated at Hull, Quebec
this 20th day of October 1995