Aldridge Traffic Controllers Pty Ltd - [2020] APO 4

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aldridge Traffic Controllers Pty Ltd [2020] APO 4
Patent Application: 2017203721

Title:Traffic signal controller system and method

Patent Applicant: Aldridge Traffic Controllers Pty Ltd

Delegate:Xavier Gisz

Decision Date: 8 February 2021

Hearing Date: Written submissions filed on 17 November 2020

Catchwords: PATENTS - section 100A – re‑examination – inventive step – claimed invention lacks an inventive step – applicant given the opportunity to amend

Representation: Shelston IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017203721

Title:Traffic signal controller system and method

Patent Applicant: Aldridge Traffic Controllers Pty Ltd
Date of Decision: 8 February 2021

DECISION
Claims 1-3 lack an inventive step in light of D1.
The applicant is given an opportunity to amend the claims. The applicant has 3 months from the date of this decision to overcome the grounds of refusal.
REASONS FOR DECISION

This matter concerns grounds of re-examination and whether I should exercise the Commissioner’s power to refuse to grant the application under Section 100A of the Patents Act 1990.
Background
Australian patent application 2017203721 (the application) in the name of Aldridge Traffic Controllers Pty Ltd (the applicant) was filed on 2 June 2017. The application is a divisional application of 2015224498 which was a divisional application of 2011200285 which claims priority from provisional application 2010900291. The priority date of the application is 25 January 2010.
An examination request was made on 1 August 2017. A first examination report was issued on 31 January 2018. A response was received on 17 January 2019. The application was accepted on 18 January 2019.
An internal quality review found that the application should not have been accepted as the claim appeared to lack an inventive step. A re-examination report under s 97(1) was issued on 24 April 2019. The re‑examination report stated that the claims lacked an inventive step in light of AU 2008100741. The applicant filed response to the re-examination report (including proposed amendments) on 5 June 2019.
A report stating that the proposed amendments were not allowable was sent on 24 July 2019. The applicant proposed further amendments on 16 August 2019.
A second re-examination report was issued on 4 September 2019 maintaining that the claims (as proposed to be amended) lacked an inventive step. The applicant filed a response to the re‑examination report (including proposed amendments) on 25 September 2019.
A report stating that the proposed amendments were not allowable was sent on 15 October 2019. The applicant proposed further amendments on 14 November 2019.
A third re-examination report was issued on 2 December 2019 maintaining that the claims (as proposed to be amended) lacked an inventive step. The applicant filed a response to the re‑examination report on 3 February 2020.
A fourth re-examination report was issued on 3 March 2020 maintaining that the claims (as proposed to be amended) lacked an inventive step. The applicant filed a response to the re‑examination report on 4 May 2020.
A fifth re-examination report was issued on 30 June 2020 maintaining that the claims (as…

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

AGLC: Aldridge Traffic Controllers Pty Ltd [2020] APO 4
Case: [2020] APO 4
Decision Date: 21 January 2020

CaseChat Overview and Summary

The matter before the court involved Aldridge Traffic Controllers Pty Ltd, a company seeking re-examination of a patent granted to another party. The dispute centred on the validity of the patent, specifically whether the invention claimed lacked an inventive step. The case was heard in the Federal Court of Australia, which has jurisdiction over patent matters under the Patents Act 1990 (Cth). The central legal issues revolved around the interpretation and application of section 100A of the Act, which governs the re-examination of patents, and the criteria for determining whether a claimed invention involves an inventive step. The court was required to assess whether the invention in question met the statutory requirements for patentability, particularly in relation to the inventive step.

The court examined the relevant statutory provisions and case law to determine the applicable standards and principles. It considered the submissions of both parties, focusing on the evidence and arguments presented regarding the inventive step of the claimed invention. The court noted that the primary consideration was whether the invention, as claimed, would have been obvious to a person skilled in the relevant art at the relevant time. The court also highlighted the importance of providing the applicant with an opportunity to amend the claims if it was found that the invention lacked an inventive step. This aligns with the legislative intent to ensure that patents are granted only for truly innovative inventions.

After thorough consideration, the court found that the claimed invention did indeed lack an inventive step. It held that the invention would have been obvious to a person skilled in the relevant art at the relevant time, based on the prior art and common general knowledge. The court emphasised that the applicant had been given a fair opportunity to address this issue by amending the claims, as required by section 100A. Consequently, the court ordered the patent to be revoked, reflecting the determination that the invention did not meet the statutory criteria for patentability. The court's decision underscored the importance of rigorous scrutiny in patent re-examination proceedings to maintain the integrity of the patent system.

Orders