Australian Postal Corporation v David John Holton - [2010] APO 22

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Australian Postal Corporation v David John Holton [2010] APO 22
Innovation Patent: 2007100419

Title: Method and system for electronic delivery of essential mail items.
Patentee:David John Holton.

Opponent:                  Australian Postal Corporation.
Delegate:  M. G. Kraefft
Decision Date:            30 September 2010
Hearing Date:              23 June 2010
Catchwords:                INNOVATION PATENT – opposition under Section 101M – the claims lack novelty and innovative step – determination of priority date sought but not required as all relevant prior art in evidence predated the earliest claimed priority date – actual costs sought by the patentee beyond those specified in Schedule 8 but not entertained – opponent successful in this opposition - costs in accordance with Schedule 8 awarded against the patentee.

Representation: Patentee: Dr Mark Summerfield, patent attorney of Watermark.
Opponent:Mr Ian Horak of counsel, instructed by Mr Anthony Selleck, patent attorney of Allens Arthur Robinson.

AUSTRALIAN PATENT OFFICE
Innovation Patent: 2007100419.

Title: Method and system for electronic delivery of essential mail items.
Patentee:David John Holton.

Decision Date: 30 September 2010
DECISION
Claims 1-5 lack novelty over the Keeling specification and over the e-Boks system. Similarly claims 1-5 lack an innovative step over the same prior art.
There may be patentable subject matter in the innovation patent specification. The patentee is allowed sixty (60) days from the date of this decision to propose suitable amendments to overcome the above findings, otherwise the innovation patent may be revoked.
Costs in accordance with Schedule 8 are awarded against the patentee, David John Holton.
REASONS FOR DECISION

David John Holton (“the patentee”) filed an innovation patent application 2007100419 on 21 May 2007. The application is a divisional application of an international application, PCT/AU2007/000054 (WO2007/079550), filed on 19 January 2007. The PCT application in turn claims priority from two Australian provisional applications 2006900287 and 2006901450 filed on 19 January 2006 and 21 March 2006, respectively.
Following examination, the innovation patent was certified on 28 August 2007. Notice of certification was published on 6 September 2007.
Australian Postal Corporation (“the opponent”) filed a notice of opposition and a statement of grounds and particulars on 14 May 2008. The evidentiary stages of evidence-in-support, evidence-in-answer and evidence-in-reply were completed on 21 April 2009.
On 30 April 2009 the patentee filed an application to serve further evidence on the opponent. That application was allowed on 29 May 2009 and the patentee subsequently served further evidence on 26 August 2009. The opponent was then given the opportunity to serve evidence-in-response to the patentee’s further evidence. The evidence-in-response was served on 6 November 2009.
A hearing was held in Canberra on 23 June 2010. Dr Mark Summerfield, patent attorney of Watermark, represented Mr Holton. Mr Ian Horak of counsel, instructed by Mr Anthony Selleck, patent attorney of Allens Arthur Robinson, represented Australian Postal Corporation.
SPECIFICATION
The specification of innovation patent 2007100419 describes the invention as relating to a method and system for electronically delivering financial statements, invoices and other essential mail items. There are stated to be several problems with…

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 Australian Postal Corporation v David John Holton

Details

AGLC: Australian Postal Corporation v David John Holton [2010] APO 22
Case: [2010] APO 22
Decision Date: 30 September 2010

CaseChat Overview and Summary

The Australian Postal Corporation opposed the certification of an innovation patent filed by David John Holton. The innovation patent claimed a method and system for electronically delivering essential mail items, such as financial statements and invoices. The Australian Postal Corporation argued the claims of the innovation patent lacked both novelty and an innovative step. The delegate of the Commissioner of Patents found that claims 1-5 of the innovation patent lacked novelty over prior art publications and the e-Boks system. The delegate also found that claims 1-5 lacked an innovative step over the same prior art. The delegate allowed the patentee 60 days to propose suitable amendments to overcome the findings. If no suitable amendments were proposed, the innovation patent would be revoked. The delegate awarded costs in accordance with Schedule 8 to the Australian Postal Corporation as the opponent was successful in the opposition.

Orders