T-2808-80
Bayer Aktiengesellschaft (Applicant)
v.
Commissioner of Patents (Respondent)
Trial Division, Mahoney J.—Ottawa, September
24 and October 2, 1980.
Prerogative writs — Mandamus — Refusal by Commis
sioner of Patents to issue certificate of correction re error of
omission — Error not a "clerical error" envisaged by s. 8 of
the Patent Act — Decision relating to failure by secretary to
correct patent application — No determination as to whether
error in original patent was a clerical error — Patent Act,
R.S.C. 1970, c. P-4, ss. 8, 50(1).
The applicant seeks a writ of mandamus directing the
respondent to issue a certificate of correction under section 8 of
the Patent Act. The basis for the section 8 correction relates to
the omission of hydrogen from the definition of R" in the
Canadian patent application. The respondent refused to grant
such a certificate on the ground that the error of omission was
not a "clerical error" within the meaning of section 8. In
making his decision, respondent dealt with the error of the
secretary who failed, as instructed, to correct the Canadian
application and seems not to have decided whether the error
that resulted in the omission of hydrogen in the first place was
a clerical error.
Held, the application will be referred back to the respondent
to determine whether the error of omission of hydrogen, not the
failure to correct it, was a clerical error. If an error originates
as a clerical error it does not change its nature if it is over
looked by someone checking the document in which it occurs or
otherwise working on it. It is the clerical origin of the error that
is important (Heberlein and Company A.G.'s Application).
However, mandamus does not lie to require the respondent to
issue a certificate under section 8 of the Patent Act. Pursuant
to that section "clerical errors . .. may be corrected ...".
"May" is permissive; it is not directory nor mandatory. It is
within the respondent's discretion to issue a certificate of
correction once he determines that what is sought to be correct
ed is a clerical error. The Court cannot substitute its discretion
for his.
R. v. Commissioner of Patents; Ex parte Martin
(1953-54) 89 C.L.R. 381, referred to. Heberlein and Com-
panyA.G.'sApplication [1971] F.S.R. 373, applied.
APPLICATION.
COUNSEL:
J. D. Kokonis, Q.C. and J. Bochnovic for
applicant.
W. L. Nisbet, Q.C. for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for applicant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: The applicant seeks a writ of
mandamus directing the respondent to issue a
certificate of correction under section 8 of the
Patent Act,' which provides:
8. Clerical errors in any instrument of record in the Patent
Office shall not be construed as invalidating the instrument,
but, when discovered, they may be corrected by certificate
under the authority of the Commissioner.
The material portions of the respondent's refusal
to issue the certificate follow:
The alleged basis for the proposed Section 8 correction relates
to the omission of hydrogen from the definition of R" on line 8
page 2 of the disclosure and the penultimate line of claim 1 as
constituting an obvious error which occurred in a clerical
fashion. As pointed out in your letters, it is evident that each of
the preparatory Examples 1 to 13 in the disclosure embrace
[sic] compounds in which R" is hydrogen. Moreover, the
verified English translation of the German priority application
as well as copies of the corresponding British and American
patents bears out your contention of the patentee's intention to
protect compounds of the type claimed wherein the R" radical
represents hydrogen. Thus, the patentee's intention to protect
this aspect of his invention is not disputed.
Based on my review of the circumstances surrounding this case,
I am led to conclude that the alleged error of omission was not
one which rendered the claimed invention inoperative, but
rather one which resulted in the patentee claiming less than he
had a right to claim as new. Consequently, I am in agreement
with the indication in the Office letter of April 29, 1977 that
the desired correction could probably have been remedied
under the re-issue provisions of Section 50 of the Patent Act.
However, it is unfortunate as you have pointed out in your
letter that the time frame for seeking redress under Section 50
has long expired.
As stated in your letter of November 23, 1979, the alleged error
of omission occurred during the preparation of a customized
specification for filing in the United States and Canada. This is
borne out by a comparison of the certified copies of the
originally filed corresponding United States application and
Canadian application Serial Number 725,276 with the basic
English language text prepared by Messrs. Carpmaels and
' R.S.C. 1970, c. P-4.
Ransford. According to the Stockhausen affidavit, the error of
omission of hydrogen from the R" definition in the customized
specification was detected by Dr. Gerhard Schrader whereupon
Dr. Heinz Wichmann subsequently ordered his secretary to
correct the specifications accordingly. The appropriate correc
tions were made in the United States application but not in the
Canadian application, which is attributed to a clerical error by
Dr. Wichmann's secretary in the Stockhausen affidavit. I find
it difficult to understand how a secretary would be given the
responsibility of making such significant amendments to for
eign applications in a routine fashion without professional
review by either or both principal patent agents and associate
professional staff.
Based on legal opinion, I am satisfied that the type of clerical
error envisaged by Section 8 clearly imparts a mistake by a
clerk or subordinate in transcribing a document and does not
extend to the erroneous submission of documents or amend
ments as directed between principal and associate professional
staff via a secretary. Thus the duties and responsibilities of a
secretary involved in the filing and handling of patent applica
tions do not come within the term "clerical error" as set forth
in Section 8 of the Patent Act.
There is one additional point regarding an apparent misunder
standing of over-lapping between Sections 8 and 50 of the
Patent Act which I want to clarify. The criteria for obtaining
relief under Section 50 is quite separate and distinct from the
applicable circumstances governed by Section 8. Thus, contrary
to your view of similarity between these sections, their purpose
and intent are quite different. Section 50 provides for relief
within a prescribed time for correcting specifications because of
an inadvertent error in claiming more or less than entitled to
whereas Section 8 provides for relief during the life of a patent
for obvious clerical errors in the document of no substantive
nature. To deliberately permit corrections under Section 8 for
the type of errors envisaged by Section 50 would be a blantant
[sic] circumvention of the law and provisions for redress under
Section 50 of the Patent Act.
It is sufficient to recite only subsection (1) of
section 50.
50. (1) Whenever any patent is deemed defective or inopera
tive by reason of insufficient description or specification, or by
reason of the patentee's claiming more or less than he had a
right to claim as new, but at the same time it appears that the
error arose from inadvertence, accident or mistake, without any
fraudulent or deceptive intention, the Commissioner may, upon
the surrender of such patent within four years from its date and
the payment of a further prescribed fee, cause a new patent, in
accordance with an amended description and specification
made by such patentee, to be issued to him for the same
invention for the then unexpired term for which the original
patent was granted.
In summary, the patent is concerned with new
chemical compounds and their production, in
which the symbol R" was intended to represent,
inter alia, hydrogen. That was clear in the original
German patent application and in the verified
English translation thereof. Hydrogen was includ
ed in the British patent application, which was
based on the verified translation. Hydrogen was
omitted from the adaptation of the verified English
translation for purposes of the Canadian and
United States patents. The omission was noticed
and the United States application was corrected
but the Canadian was not. Further, it is clear that,
in 13 of the 15 examples set forth in the Canadian
patent, R" does represent hydrogen.
There is simply no doubt that the omission of
hydrogen in the two places where the applicant
now seeks to include it was due to an error. There
is likewise no doubt that the corrections sought are
meaningful, not trivial, and, if made, would signifi
cantly widen the applicant's monopoly.
It is not the error of the secretary who failed, as
instructed, to correct the Canadian application
that is in issue. The respondent's decision vis-Ã -vis
that error is irrelevant. Rather, it is the error that
resulted in the omission of hydrogen in the first
place that may be subject to correction as a cleri
cal error. That it was an error is beyond doubt, but
was it a clerical error? The respondent seems not
to have decided that.
Pertinent dictionary definitions are included in
the following passage from the judgment of Fulla-
gar J., of the High Court of Australia in The
Queen v. Commissioner of Patents; Ex parte
Martin, 2 in which a patentee had, in good faith,
described himself as the inventor, rather than the
inventor's assignee, in his application. The patent
issued and he sought its correction.
. the error in the application cannot, in my opinion, be
described as a "clerical error". That expression is, no doubt,
one of a somewhat elastic character, but it seems to me
impossible to say that it covers such a mistake of substance as
was here made. In the New Oxford Dictionary one meaning
attributed to the word "clerical" is "Of or pertaining to a clerk
or penman: esp. in `clerical error', an error made in writing
anything out". According to Webster, one meaning of the word
"clerical" is "Of or relating to a clerk or copyist", and an
example given is "clerical error, an error made in copying or
2 (1953-54) 89 C.L.R. 381 at p. 406.
writing". Probably no one would deny that a clerical error may
produce a significant, and even profound, effect as for example,
in a case in which a writer or typist inadvertently omits the
small word "not". But the characteristic of a clerical error is
not that it is in itself trivial or unimportant, but that it arises in
the mechanical process of writing or transcribing. There is no
evidence that the mistake so arose in the present case, and it is
very difficult to see how it could have so arisen. The mistake,
however innocently made, consists in a simple misstatement of
fact, and that is the whole of the matter.
I accept that a clerical error is an error that
arises in the mechanical process of writing or
transcribing and that its characteristic does not
depend at all on its relative obviousness or the
relative gravity or triviality of its consequences. I
accept the decision of the Comptroller in Heber-
lein and Company A.G.'s Application, 3 that:
... if an error originates as a clerical error it does not subse
quently change its nature if it is overlooked by someone check
ing the document in which it occurs or otherwise working on it.
It is the clerical origin of the error which is important.
I am not sure that I understand the respondent's
decision vis-Ã -vis section 50. This patent issued
November 30, 1965, so, by early 1977, when the
applicant first sought the correction, the time for
an application for an amended patent had long
expired. While it may well be that a clerical error
reflected in the original patent could lead to the
issue of an amended patent under section 50,
neither that nor the failure to seek it in time alters
the fact that the error remains a clerical error and
may still be a subject of correction under section 8.
Section 8 provides that "clerical errors ... may
be corrected by certificate under the authority of
the Commissioner". "May" is permissive; it is not
directory nor mandatory. There is nothing in the
circumstances contemplated by section 8 that
would lead me to conclude that the respondent is
obliged to issue a certificate of correction once he
determines that what is sought to be corrected is a
clerical error. It is in his discretion to do so. The
Court cannot substitute its discretion for his.
Mandamus does not lie to require the respondent
3 [1971] F.S.R. 373 at p. 377.
to issue a certificate under section 8 of the Patent
Act.
All that said, the applicant does seek such fur
ther and other order as may seem just. It is not
apparent on the record that the respondent has
determined whether or not the error of omission of
hydrogen, not the failure to correct it, was a
clerical error. The matter will be referred back to
the respondent for that determination. He may
then decide whether or not to issue a certificate
under section 8. There will be no order as to costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.