Austming Trade Pty Ltd v MindsInSync, Inc - [2013] APO 6

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Austming Trade Pty Ltd v MindsInSync, Inc. [2013] APO 6

Patent:2011101252

Title:Cushioned absorbent mat

Patentee:  MindsInSync, Inc.
Opponent:  Austming Trade Pty Ltd
Delegate:  Dr S.D.Barker
Decision Date:  18 January 2013
Hearing Date:  Written submissions completed on 11 January 2013
Catchwords:  PATENTS – opposition to an amendment of the Register under regulation 10.7 – request for dismissal of opposition – particulars disclose material facts that are real and not fanciful – opposition not dismissed – no award of costs

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

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2011101252

Title:Cushioned absorbent mat

Patentee: MindsInSync, Inc.
Date of Decision: 18 January 2013
DECISION
Opposition is not dismissed.
No award of costs.
REASONS FOR DECISION

Innovation patent 2011101252 was filed by MindsInSync, Inc 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. 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. The Commissioner set the matter for hearing by way of written submissions, and these submissions have been provided. The submissions provided largely amount to arguing whether a clerical error or obvious mistake has been established, and make essentially no reference to the law on dismissal. I have found the submissions of both parties to be of little assistance.
The opponent has requested an amendment of the statement of grounds and particulars. Pursuant to regulation 5.9(2), such an amendment cannot be allowed while an application for dismissal is being considered. The present decision relates solely to the request for dismissal of the opposition.
The law on dismissal
Regulation 5.5 states that the patentee may request dismissal within one month of being served with a copy of the statement of grounds and particulars. That requirement has been satisfied.
The circumstances in which the Commissioner will dismiss an opposition are well established: "whether there are prospects of success that are real and not fanciful or merely arguable" (Re Preference Manufacturing (Aust) Pty Ltd and Commissioner of Patents [2012] AATA 393, 129 ALD 322 at [14]).
The statement of grounds and particulars
The present matter relates to an amendment of the Register under regulation 10.7, which permits the Commissioner to amend the Register for the purpose of correcting a clerical error or an obvious mistake. Regulation 10.7(4) says that a person may oppose an amendment, but does not specify the grounds of opposition. In line with HRC Project Design Pty Ltd v Orford Pty Ltd [1997] APO 12, 38 IPR 121 the grounds must relate to the basis for allowing the amendment, i.e. the existence of a clerical error or an obvious mistake.
The statement of grounds and particulars identifies the ground of opposition as follows:
"That the request dated 10 January 2012 to amend the patent 2011101252 and the register should not be allowed as the applicant has failed to identify the type or manner of the clerical error or obvious mistake that has occurred. Further, the Applicant has failed to establish that the Register or the Patent contains a clerical error or obvious mistake."
It is apparent that the opponent is arguing that the amendment does not relate to a clerical error or obvious mistake. I accept that this is a ground of opposition available to the opponent. The question then is whether there are particulars that set out a case that is "real and not fanciful" in relation to this ground. It is worth revisiting what was said in Mobay Corporation v The Dow Chemical Company [1992] APO 25, 24 IPR 379 at 390 about particulars:
"the statement of particulars filed by an opponent must satisfy certain criteria:
(i) the particulars must state all material facts necessary for the ground of opposition;
(ii) the particulars must only state material facts;
(iii) the evidence by which the facts are to be proved must not be included;
(iv) matters of law should not be included; and
(v) the particulars are to be in summary form."
It is clear that the present particulars are poorly drafted, and have little regard to the criteria in Mobay. For instance, the statement is not in summary form due to the inclusion of a large amount of information that does not relate to material facts. Further, this unnecessary information is confusing, and is likely to have been a significant cause of the present dispute. Regardless of the numerous deficiencies, the key issue is whether the material facts that are specified reveal a real, as against fanciful, opposition.
The key statement in the particulars is as follows:
The Opponent submits that the Commissioner should be satisfied that a clerical error or obvious mistake has occurred before applying the powers afforded to them under Regulation 10.7(1). The Opponent submits that in this instance it is not apparent that a clerical error or obvious mistake has occurred.
This seems to me to be the essence of the opposition. The opponent asserts what might be characterised as the onus of proof and the standard of proof, i.e. that the Commissioner must not allow an amendment unless satisfied of the existence of a clerical error or obvious mistake. The opponent then asserts the material fact that a clerical error or obvious mistake has not been established.
I am aware that there is evidence on file from Mr Michael Robert Finn in relation to the issue of clerical error. The fact that there is evidence suggestive of a clerical error does not mean that the opponent is running a fanciful opposition. The opponent appears to be presenting a case that the evidence, when properly considered, does not establish a clerical error according to the legal understanding of that term. Unless it is apparent that this is a fanciful proposition on the facts of the case, it is open to the opponent to put this case, and it should not be dismissed. It is clear that the parties disagree on whether there was a clerical error, and it may be that the opponent's case will prove to be unsuccessful, but it has not been established that the opponent's case is fanciful.
Conclusion
I will not dismiss the opposition.
Evidence in support was served on 18 October 2012, and evidence in answer is due to be completed by 18 January 2013. However, this period can be extended under regulation 5.10 if necessary.
Costs
In relation to costs, it is normal for costs to follow the event. Although I have found that the applicant fails in this action, I also found that the statement of grounds and particulars was poorly drafted (which was likely a cause of the present action). Both parties filed submissions that were largely unhelpful. I will not make an award of costs.
Dr S.D.Barker
Delegate of the Commissioner of Patents