Apple Inc. - [2021] APO 17

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Apple Inc. 2021 APO 17

Patent Application: 2017203579

Title:Magnetic connector with optical signal path

Patent Applicant: Apple Inc.

Delegate: Dr W.E. Guinea

Decision Date: 14 April 2021

Hearing Date: Written submissions filed 1 November 2019 and 27 March 2020

Catchwords: PATENTS – section 45 – Examiner objections – standard patent – patent of addition – divisional application –– inventive step – inventive step objection not sustainable – whether valid patent of addition – novel and inventive features of main invention considered – validity of main invention in doubt – consideration of additional status suspended pending re-examination of main invention – time to gain acceptance extended pursuant to Regulation 13.4(3)

Representation: Patent attorney for the applicant: FPA Patent Attorneys Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2017203579

Title:Magnetic connector with optical signal path

Patent Applicant: Apple Inc.

Date of Decision: 14 April 2021

DECISION

I am satisfied that the application comprises an inventive step over the prior art cited during examination.

I direct that consideration of whether 2017203579 is properly a patent of addition to 2009298735 is deferred until after re-examination of 2009298735 concludes.

Pursuant to Regulation 13.4(3), I direct that the period for acceptance of 2017203579 is three months from the earliest date that any one of the following actions occurs, subject to any further decision that may be relevant to Regulation 13.4:

·the Commissioner informs the Applicant that re-examination of the additional parent has concluded; or
·the additional parent is no longer in force (i.e. surrendered, revoked, ceased or expired).

REASONS FOR DECISION

Background

Patent application 2017203579 (the “application”) was filed on 29 May 2017 and claims an earliest priority date of 30 September 2008.
Notably the application is the latest in a line of divisional applications and claims divisional status to 2015264922 (the “divisional parent”). The penultimate ancestor of the family of divisionals is 2009298735, being the great grandparent of the application, with the application also claiming patent of addition status from 2009298735 (the “additional parent”). It is indubitable that this is a rare type of application. A full tabulation of the patent family, including exam request dates, is given in Annex A to this decision.
Apple Inc. (the “Applicant”) requested examination of the application on 29 May 2017. The first of two adverse examination reports issued on 3 August 2018, with the second examination report issuing on 2 August 2019. The reports objected to the claims as lacking in clarity, novelty or inventive step, although all reports maintained that the application was not entitled to patent of addition status.
On 5 August 2019 the Applicant wrote to the Commissioner requesting to be heard in relation to the outstanding objections, these being lack of inventive step and not being entitled to patent of addition status. On 19 August 2019 the Commissioner wrote to the Applicant, advising them that the hearing would be by way of written submissions due to be filed on 1…

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 Apple Inc. 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: [2021] APO 17
Decision Date: 14 April 2021

CaseChat Overview and Summary

In the Federal Court of Australia, the case of Apple Inc. involved a dispute over the validity of a patent of addition. The primary patent in question related to a standard patent held by Apple, with a subsequent patent of addition being contested. The matter was brought before the court to address objections raised by the Examiner regarding the inventive step of the patent of addition. The central legal issue before the court was whether the patent of addition met the criteria for novelty and inventiveness, particularly in light of the main invention's validity being in doubt.

The court was required to determine whether the objections raised by the Examiner were sustainable, focusing on the inventive step of the patent of addition. The key consideration was whether the novel and inventive features of the main invention could be appropriately assessed without the validity of the main invention being definitively established. The court also needed to decide if the time to gain acceptance for the patent of addition should be extended in accordance with Regulation 13.4(3), given the circumstances of the case.

The court found that the objection to the inventive step was not sustainable, as the features of the main invention, although in doubt, provided a basis for assessing the patent of addition. However, the consideration of the patent of addition's validity was suspended pending a re-examination of the main invention. To accommodate these proceedings, the court extended the time to gain acceptance for the patent of addition. This extension was granted pursuant to Regulation 13.4(3), ensuring that the applicant had sufficient time to address the objections and provide the necessary evidence. The court's decision provided clarity on the assessment of patent of addition in the context of a potentially invalid main invention, while also ensuring procedural fairness for the applicant.

Orders