ABB Engineering Construction Pty Ltd v a. Goninan & Co Limited - [1998] APO 46

official notice

decision of a delegate of the COMMISSIONER OF PATENTs

Application : No. 657639 in the name of ABB ENGINEERING CONSTRUCTION PTY LTD.

Title: Cam mechanism for a system for discharge of bulk materials from vehicles.

Action: Requests by A GONINAN & CO LIMITED to amend the statement of grounds and particulars and to defer the opposition proceedings; and objection to the requests by ABB ENGINEERING CONSTRUCTION PTY LTD.

Decision: Issued .
Abstract:The material sought to be included by amendment of the statement of grounds and particulars arose incidentally to the preparation of the case. Furthermore there would not be any unreasonable protraction of the case nor any substantial change of case for the applicant to answer by allowing the amendment. The proposed amendment was also sought at the earliest reasonable opportunity.
In the light of the above findings the applicant would not be unduly prejudiced by the amendment.
The public would also not be unduly prejudiced by allowance of the amendment. On the contrary the public would be unduly prejudiced if the amendment were not allowed. The material sought to be included by the amendment appears to be highly relevant to the opposition.
The proposed amendment to the statement of grounds and particulars was allowed.
A party is entitled to have a matter heard as soon as the office can arrange it. The applicant would be clearly disadvantaged by deferment of the opposition proceedings. Additionally the Federal Court proceedings on a related patent are not sufficiently relevant to warrant deferment of the opposition. The opponent's request to defer was refused.

PATENTs act 1990

decision of a delegate of the COMMISSIONER of PATENTs

Re:Patent application no. 657639 by ABB ENGINEERING CONSTRUCTION PTY LTD, and opposition thereto by A GONINAN & CO LIMITED, and objections to amendment of the opponent’s statement of grounds and particulars and to deferment of the opposition proceedings.

background

ABB Engineering Construction Pty Ltd (“ABB”) filed patent application 657639 as application 47358/93 on 14^th September 1993. The application is for a patent-of-addition based on patent 649883. The patent is the subject of infringement and revocation proceedings in the Federal Court.

Application 657639 was advertised accepted on 16^th March 1995. A Goninan & Co Limited (“Goninan”) filed a notice of opposition on 16^th June 1995 to the grant of a patent on the application. The company subsequently filed a statement of grounds and particulars on 15^th September. Goninan completed the serving of evidence-in-support on 24^th April 1996. ABB completed the serving of evidence-in-answer on 11^th March 1998. On 20^th March Goninan filed a request to amend the statement of grounds and particulars.

Under the grounds alleging lack of novelty and lack of inventive step the proposed amendment seeks to add particulars of non-patent literature. The particulars primarily refer to reports and drawings of rail unloading methods at Dalrymple Bay Coal Terminal in Queensland (“the Dalrymple Bay system”).

ABB objected to the proposed amendment of the statement…

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.

Keep reading for free

Create a free CaseChat account to read ABB Engineering Construction Pty Ltd v a. Goninan & Co Limit... and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [1998] APO 46
Decision Date: 21 August 1998

CaseChat Overview and Summary

In the matter of ABB Engineering Construction Pty Ltd v a. Goninan & Co Limited, the court was required to decide on two primary issues. The first issue was whether the applicant, Goninan & Co Limited, was entitled to amend their statement of grounds and particulars in the opposition proceedings against ABB Engineering Construction Pty Ltd's patent application 657639. The second issue was whether the opposition proceedings should be deferred until the outcome of related Federal Court proceedings was known. The applicant argued that the amendment sought to include relevant prior art that had come to light during the preparation of the case, and that the amendment would not unduly prejudice the opponent or the public. The opponent, ABB, objected to the amendment on the grounds that it would result in an unreasonable protraction of the case and a substantial change of the case for the opponent to answer. On the issue of deferment, Goninan requested that the opposition proceedings be deferred to await the outcome of the Federal Court proceedings concerning the validity of a related patent, 649883. ABB opposed the request, arguing that the Federal Court proceedings were not directly relevant to the opposition proceedings and that deferment would cause them significant delay and commercial disadvantage.

The court found in favour of the applicant on both issues. Regarding the amendment of the statement of grounds and particulars, the court held that the extra particulars arose incidentally to the preparation of the case, there would not be any unreasonable protraction of the case, and Goninan sought the amendment at the earliest reasonable opportunity. The court further found that the inclusion of the extra particulars would not substantially change the case for ABB to answer and that neither ABB nor the public would be unduly prejudiced by the amendment. The court allowed the amendment, stating that the public would be unduly prejudiced if the amendment were not allowed, as the material sought to be included appeared to be highly relevant to the opposition. On the issue of deferment, the court found that ABB had a legitimate, genuinely arguable claim before the office and that ABB would be clearly disadvantaged if the proceedings were deferred. Furthermore, the court held that the Federal Court proceedings on patent 649883 were not sufficiently relevant to warrant deferment of the present opposition proceedings. The court refused Goninan's request to defer the proceedings.

In conclusion, the court allowed the amendment of the statement of grounds and particulars, granted the extension of time for serving further evidence, and refused the request for deferment of the opposition proceedings. Each party was ordered to bear their own costs.

Orders