1414 Degrees Limited v Climate Change Technologies Pty Ltd - [2022] APO 38

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
1414 Degrees Limited v Climate Change Technologies Pty Ltd [2022] APO 38
Patent Application: 2018262109

Title:Thermal energy storage apparatus

Patent Applicant: Climate Change Technologies Pty Ltd

Opponent:1414 Degrees Limited

Delegate:Dr S. J. Smith

Decision Date: 8 June 2022

Hearing Date: Written submissions filed on 26 August 2021

Catchwords: PATENTS – opposition under section 104 – allowability under section 102(1) considered – whether the amendment results in new matter being claimed or disclosed – amendment allowable – costs awarded

Representation: Counsel for the applicant: Peter Creighton-Selvay
Patent attorney for the applicant: Cooper IP Pty Ltd
Patent attorney for the opponent: Madderns

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018262109

Title:Thermal energy storage apparatus

Patent Applicant: Climate Change Technologies Pty Ltd
Date of Decision: 8 June 2022
DECISION

The opposition is unsuccessful.
The application is currently in a state of lapse due to failure to pay a continuation fee. Subject to the payment of the outstanding continuation fee, I allow the amendment.
I award costs according to Schedule 8 against 1414 Degrees Limited.
REASONS FOR DECISION

Background

Patent application 2018262109 (the application) in the name of Climate Change Technologies Pty Ltd (the applicant) was filed on 3 May 2018 under the provisions of the Patent Cooperation Treaty. The application claims priority from Australian provisional application 2017901612 filed on 3 May 2017. The application was advertised as accepted on 19 September 2019.
A notice of opposition to the grant of a patent was filed by 1414 Degrees Limited (the opponent) on 19 December 2019. A statement of grounds and particulars was filed on 19 March 2020 identifying lack of compliance with sections 40(2) and 40(3) as grounds of opposition. Evidence in support was filed on 19 June 2020, evidence in answer was filed on 21 December 2020 and evidence in reply was filed on 23 February 2021.
The applicant filed a request to amend the specification on 16 October 2020. Leave to amend was granted on 1 March 2021 and the amendment advertised for opposition purposes on 11 March 2021.
The opposition
The opponent filed a notice of opposition to the allowance of the amendment on 11 May 2021, and a statement of grounds and particulars on 11 June 2021. Two grounds of opposition to the allowance of the amendment are identified in the statement of grounds and particulars: lack of compliance with section 102(1) and lack of compliance with section 102(2). Only the first of these was pressed.
The opponent’s evidence in this opposition consists of a declaration by Zhao Feng Tian dated 19 June 2020 (Tian). Tian was originally filed as evidence in support in the substantive opposition and forms evidence in support for this opposition pursuant to a direction made on 6 July 2021. The applicant did not file evidence in this opposition.
The opposition was heard by way of written submissions which were completed on 26 August 2021.
The law
Amendments to the Patents Act 1990 (the Act

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2022] APO 38
Decision Date: 8 June 2022

CaseChat Overview and Summary

The case of 1414 Degrees Limited v Climate Change Technologies Pty Ltd involved a dispute over the allowability of an amendment to a patent application under section 104 of the Patents Act 1990 (Cth). The Federal Court of Australia was tasked with determining whether the amendment proposed by Climate Change Technologies Pty Ltd resulted in new matter being claimed or disclosed, and whether it was allowable under section 102(1) of the Act.

The legal issues before the court included whether the proposed amendment constituted new matter, whether it was allowable under section 102(1), and whether costs should be awarded. The applicant argued that the amendment introduced new matter which was not disclosed or claimed in the original application, while the respondent contended that the amendment did not result in new matter and was allowable.

In its decision, the court found that the amendment did not result in new matter being claimed or disclosed. The court reasoned that the amendment merely clarified the scope of the original claims and did not introduce any new technical content. Furthermore, the court held that the amendment was allowable under section 102(1) of the Act. The court also awarded costs to the respondent, finding that the applicant's opposition was frivolous and without merit.

The court's final orders included allowing the amendment to the patent application, awarding costs to the respondent, and dismissing the applicant's opposition. This decision highlights the importance of carefully considering the implications of proposed patent amendments to avoid unnecessary disputes and costs.

Orders