Australian Lock Company Pty Ltd v Assa Abloy Australia Pty Limited (Corrected Version) - [2006] APO 29

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 753733 in the name of AUSTRALIAN LOCK COMPANY PTY LTD

Title: Moveable Element Key and Key Handle and Lock

Action: Request for leave to amend the complete specification, an opposition to the request by ASSA ABLOY AUSTRALIA PTY LIMITED and dismissal thereof

Decision: Issued 5 September 2006 .
Abstract

The patent applicant sought to amend its specification under S104 and the opponent opposed these amendments. The patent applicant sought dismissal of the grounds of opposition.
It was found that none of the particulars supported the grounds of opposition. Consequently, the grounds of opposition were dismissed in their entirety and the application for dismissal of the opposition to the S104 amendment was successful. Subject to any appeal, leave to amend was granted and the time for completion of service of evidence-in-support to the substantive opposition would expire 3 months from the date of this decision.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 753733 by Australian Lock Company Pty Limited, a request to amend the complete specification, an opposition thereto by ASSA ABLOY Australia Pty Limited and dismissal action thereof.

BACKGROUND

Patent application 753733 (58399/99) was filed on 3 September 1999 by the Australian Lock Company Pty Ltd (“ALC”) as PCT/AU99/00722. The application was advertised accepted on 24 October 2002. A notice of opposition (the “main opposition”) was filed by then Lockwood Security Products Pty Ltd who has changed its name to ASSA ABLOY Australia Pty Ltd (“ASSA”).
A S104 set of amendments was filed by the ALC on 23 December 2003 and was opposed by ASSA. These amendments were subsequently withdrawn. The current set of proposed amendments was filed on 6 July 2005. The opponent, (ASSA), filed its comments on 8 August 2005.
On the 10 November 2005, the parties were advised that a direction for serving evidence to the main opposition would expire 1 month from the date that the Commissioner notifies the parties of the refusal or withdrawal of the request for leave to amend that was filed on 6 July 2005.
A notice of opposition to the S104 amendments was filed 8 December 2005 by ASSA. On 21 March 2006, ALC requested dismissal of the opposition to the S104 amendments.
In relation to the substantive opposition, ASSA’s evidence-in-support was completed on 8 June 2006. Both parties were notified in an Official letter of 11 July 2006 that the Commissioner proposes to defer the evidence-in-answer until the outcome of the dismissal hearing has been determined. The Official Letter also indicated that if the delegate found that the opposition was not to be dismissed he would issue a direction for service of evidence-in-answer as part of his decision
The matter was set down for a hearing at Canberra on Wednesday 10 May 2006. Both parties appeared by telephone. Peter Franke, patent attorney of Watermark, represented the patent applicant. Brad Fitzpatrick, patent attorney of Phillips…

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: Australian Lock Company Pty Ltd v Assa Abloy Australia Pty Limited (Corrected Version) [2006] APO 29
Case: [2006] APO 29
Decision Date: 5 September 2006

CaseChat Overview and Summary

Australian Lock Company Pty Ltd, the applicant, filed a patent application in relation to a moveable element key and key handle and lock, and sought to amend its specification under Section 104 of the Patents Act 1990. Assa Abloy Australia Pty Ltd, the opponent, opposed the amendments. The applicant subsequently sought dismissal of the grounds of opposition. The court was required to determine whether the grounds of opposition were supported and, if not, whether the grounds should be dismissed. The court found that none of the particulars supported the grounds of opposition, and consequently, the grounds of opposition were dismissed in their entirety. The court also granted the applicant's application for dismissal of the opposition to the Section 104 amendment, subject to any appeal. The court found that the particulars did not support the grounds of opposition, and that the issues raised were more appropriate for argument at the substantive hearing. The court concluded that the opposition was obviously untenable and could not possibly succeed. The court awarded costs against the opponent, Assa Abloy Australia Pty Ltd, as per Schedule 7.

Orders