ATF Mining Electrics Pty Ltd v Bramco Electronics - [2003] APO 14

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.704930 in the name of ATF Mining Electrics Pty Ltd

Title: Load Control Module

Action: S59 Opposition by Bramco Electronics, validity of notice of opposition.

Decision: Issued .
Abstract

At the hearing of the S59 opposition, the applicant raised a preliminary issue that the opponent was not a "person" within the meaning of S59 and thus was not entitled to be heard. While the applicant recognised that the Commissioner had the power to determine the opposition notwithstanding the defective notice, it submitted that only through a re-examination process could this be done.
It was held that the Commissioner has the power to proceed with the opposition notwithstanding that the notice of opposition was filed in the business name. The evidence clearly established that the true name of the opponent was Rynand Pty Ltd, which traded as Bramco Electronics.
The firm-name, Bramco Electronics, is a reference to a person, Rynand Pty Ltd and notwithstanding its inadequacy it notifies a real intention to oppose by a real person.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 704930 by ATF Mining Electrics Pty Ltd and opposition thereto by Bramco Electronics under S59 of the Patents Act 1990.

BACKGROUND

A hearing on the matter was held on 27 September 2003 in Sydney. Mr Walsh, patent attorney of Walsh & Associates, Sydney represented the applicant. Mr Chris O'Sullivan, patent attorney of F B Rice & Co represented the opponent.
However, at the hearing Mr Walsh raised a preliminary issue that the opponent was not a "person" within the meaning of S59 and thus was not entitled to be heard. This issue was unable to be resolved and consequently with the agreement of the parties I adjourned the hearing and gave both parties a set time within which to provide me with submissions on this point. With agreement of the parties, I gave the applicant 2 weeks in which to provide submissions on the issue and I gave the opponent 1 month from the date of receipt of the applicant’s submissions to file its submissions.
The opponent filed on 27 September 2002 a request to amend the notice of opposition under regulation 5.3A. The purpose of the amendment was to change the name of the opponent from Bramco Electronics to Rynand Pty Ltd trading as Bramco Electronics.
On 2 October 2002, the opponent sought production under S210 of a number of documents from the applicant. On 11 October, the applicant filed its submissions. Also, on 11 October 2002 the Commissioner informed both parties that the decision in R. v. Commissioner of Patents, Ex Parte Weiss (1939) 61 CLR 240 1A IPR 41 might be relevant to the resolution of the issue on whether there is a valid opposition.
On 4 November 2002, the opponent provided submissions on the preliminary matter of whether there is a valid opposition and provided submissions…

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: [2003] APO 14
Decision Date: 28 March 2003

CaseChat Overview and Summary

ATF Mining Electrics Pty Ltd brought an application against Bramco Electronics for an opposition to the grant of a patent. The primary issue before the court was whether the notice of opposition filed by Bramco Electronics was valid. The applicant argued that the notice of opposition was invalid because it was filed in the business name, Bramco Electronics, rather than the legal name of the entity, Rynand Pty Ltd. The applicant contended that only a legal or natural person can file an opposition, and since the notice of opposition did not identify a person, it was not in the approved form as required by the Patents Act 1990.

The Commissioner of Patents, acting through a delegate, held that the notice of opposition was valid despite being filed in the business name. The evidence showed that Bramco Electronics was a trading name and not a "person" within the meaning of S59. However, the firm-name Bramco Electronics was a reference to a person, Rynand Pty Ltd, and notwithstanding its inadequacy, it notified a real intention to oppose by a real person. The court relied on the precedent in R. v. Commissioner of Patents, Ex Parte Weiss (1939) 61 CLR 240, which held that a firm-name is a reference to persons and forms a sufficient foundation to entitle the Commissioner to proceed with the opposition. The Commissioner has the power and discretion to deal with the notice and can proceed with the current notice of opposition.

The court dismissed the objection to the notice of opposition and ruled that the opposition could proceed with the current notice. The court did not see the need to process the amendment to the notice as the opposition could proceed irrespective of regulation 5.3.A. The Commissioner would not process the amendment any further unless the opponent advised that it wished to pursue the matter further. The court also awarded costs against the patent applicant ATF Mining Electrics Pty Ltd, as the preliminary issue on whether there is a valid opposition had been decided.

Orders