Ajax Technology Centre Pty Ltd v ITW AFC Pty Ltd - [2005] APO 14

NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 729658 in the name of ITW AFC Pty Ltd

Title: Screw Threaded Fastener and Fastening System

Action: Opposition under s59 of the Patents Act 1990 by Ajax Technology Centre Pty Ltd

Decision: Issued 29 March 2005.

Amendments under Section 104 to the complete specification were filed after the evidence in support was completed and after the hearing of the opposition was conducted. The later request to amend arose from action under regulation 5.11.
As a result of these amendments, the claims were found to be novel and inventive.
In the circumstances, it was appropriate to award costs up to the date of the hearing to the opponent and to make no award costs thereafter.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re: Patent Application No. 729658 by ITW AFC Pty Ltd and opposition thereto under s59 of the Patent Act 1990 by Ajax Technology Centre Pty Ltd.
BACKGROUND

Patent application 53013/98 was filed on 9 February 1998 taking priority from PO5029 filed 11 February 1997. The application was filed in the name of W A Deutsher Pty Ltd and on acceptance was allocated patent number 729658. A notice of opposition by Ajax Technology Centre Pty Ltd (herein after called Ajax) was filed on 7 May 2001.
Statement of grounds and particulars was filed on 7 August 2001. After a number of extensions, evidence-in-support was completed on 8 May 2002. A request to assign the patent application under section 113 from the current applicant to ITW AFC Pty Ltd (herein after called ITW) was filed 29 November 2001. This was registered on 10 December 2001 and took effect from that date.
An application to amend the complete specification under section 104 was filed on 1 August 2002. On 24 February 2003, the amendments to the specification were allowed. Evidence-in-answer was completed on 13 June 2003 and evidence-in-reply was completed on 18 September 2003.
A hearing on the matter was set down for 11 February 2004 in the Melbourne State Office. Raymond Hind, patent attorney of Davies Collison Cave, appeared on behalf of ITW. Norman Morcom, patent attorney of Morcom Pernat, appeared on behalf of Ajax. Dr Samna Fernando, a declarant and employee of the opponent, also attended.
THE GROUNDS OF OPPOSITION
Ajax filed two grounds of opposition; namely that the invention as claimed was obvious and did not involve an inventive step in the light of common general knowledge in Australia under subsection 18(1)(b)(ii) of the Patents Act 1990 and that the invention as claimed was not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies under subsection 18(1)(a) of the Patents Act 1990. The latter ground was not pressed at the hearing. However at the hearing, a new ground, under subsection 18(1)(b)(i) alleging lack of novelty was raised.
THE EVIDENCE
Evidence-in-support
Dr Saman Fernando who holds the position of research development and…

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: [2005] APO 14
Decision Date: 29 March 2005

CaseChat Overview and Summary

The decision concerns an opposition to patent application 729658 for a screw threaded fastener and fastening system by ITW AFC Pty Ltd by Ajax Technology Centre Pty Ltd. Ajax argued that the invention lacked novelty and did not involve an inventive step. ITW amended the claims twice, firstly to include a fluted drilling tip and tapering thread and secondly to further narrow the claims. The delegate found that the amended claims were novel and involved an inventive step. The amended claims included features that were not disclosed in the prior art documents cited by Ajax, and Ajax had not shown that the combination of the features would have been obvious to a person skilled in the art. Consequently, the opposition was dismissed and costs were awarded to Ajax up to the date of the hearing.

Orders