Austming Trade Pty Ltd v MindsInSync, Inc - [2013] APO 47

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Austming Trade Pty Ltd v MindsInSync, Inc. [2013] APO 47

Patent:2011101252

Title:Cushioned absorbent mat

Patentee:  MindsInSync, Inc.
Opponent:  Austming Trade Pty Ltd
Delegate:  Dr S.D. Barker
Decision Date:  14 August 2013
Hearing Date:  Written submissions completed on 30 May 2013
Catchwords:  PATENTS – opposition to an amendment of the Register under regulation 10.7 – whether amendment for the purposes of correcting a clerical error or obvious mistake – clerical error established – consideration of amendment under section 191A – opposition unsuccessful – costs awarded against the opponent

Representation: Patentee: Davies Collison Cave
Opponent:Lord & Co

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:2011101252

Title:Cushioned absorbent mat

Patentee: MindsInSync, Inc.
Date of Decision: 14 August 2013
DECISION
The opposition is unsuccessful. The Register is to be amended to show that the innovation patent is a divisional of 2010325781. Costs according to Schedule 8 are awarded against Austming Trade Pty Ltd.
REASONS FOR DECISION

Innovation patent 2011101252 was filed by MindsInSync, Inc. (MindsInSync) on 29 September 2011. The patent request form makes no reference to any priority claim. The patent was granted on 13 October 2011. The patent was examined and a certificate issued on 15 December 2011.
On 10 January 2012 the patentee filed a request to amend the Register entry for the patent. The request specifies the amendment as:
“To correct a clearly apparent clerical error/obvious mistake, as a result of which the official records do not show that the application for the patent is a divisional of application no. 2010325781, which is indicated in the subject heading of our letter to the Commissioner of Patents dated 29 September 2011.”
A delegate of the Commissioner advised the patent attorney for the patentee by telephone on 10 January 2012 that the request did not provide sufficient evidence of a clerical error. On 11 January 2012 the patentee filed a declaration by Michael Robert Finn in support of the request. On 12 January 2012 the delegate directed that the request be advertised in the Official Journal of Patents, and that advertisement appeared on 2 February 2012. On 2 May 2012 a notice of opposition to the amendment of the Register was filed by Austming Trade Pty Ltd (Austming). A statement of grounds and particulars was served on the patentee on 2 August 2012.
On 7 August 2012 the patentee requested that the opposition be dismissed, and following a hearing I declined to dismiss the opposition. On 7 May 2013 I wrote to the parties to advise them of a change in the law relating to amendment of the Register:
“On 15 April 2013 amendments to the Act and Regulations came into effect. One change was the inclusion of a new sec 191A, which allows for the amendment of the Register. The amendments that can be made are no longer restricted to the correction of clerical errors and obvious mistakes. The new sec 191A is discussed in the Manual at 3.10.3 (and the subsequent parts).
The…

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.

Continue reading Austming Trade Pty Ltd v MindsInSync, Inc

Details

AGLC: Austming Trade Pty Ltd v MindsInSync, Inc [2013] APO 47
Case: [2013] APO 47
Decision Date: 14 August 2013

CaseChat Overview and Summary

Austming Trade Pty Ltd opposed a request by MindsInSync, Inc. to amend the Australian Patent Register to correct a clerical error in the description of patent 2011101252. The dispute was heard by a delegate of the Commissioner of Patents. The primary issue was whether the amendment was allowable under regulation 10.7 of the Patents Regulations 1991. The opposition was based on the contention that the patentee had not established the existence of a clerical error or obvious mistake.

The delegate concluded that the amendment was allowable under regulation 10.7. The evidence showed that the omission of the divisional application reference from the patent request was a clerical error. The delegate considered that the omission was consistent with a clerical error, as defined in relevant case law. The delegate noted that the patentee's declaration, supported by other documents, demonstrated the existence of a clerical error. The delegate also considered the amendment under section 191A, introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The delegate found that the amendment would also be allowable under section 191A.

The delegate dismissed the opposition and ordered that the Register be amended to show that the innovation patent is a divisional of 2010325781. The delegate awarded costs against Austming Trade Pty Ltd.

Orders