Avery International Corporation v AMCOR LTD

[1993] APO 27

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 626962 in the name of AVERY INTERNATIONAL CORPORATION

Title             :    Composite Facestocks

Action:    Opposition by AMCOR LTD, and dismissal of the opposition under regulation 5.5(3)

Decision:    Issued            .  No statement of grounds and particulars served. Opposition dismissed, and application directed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 626962 in the name of AVERY INTERNATIONAL CORPORATION, opposition thereto by AMCOR LTD, and dismissal of the opposition under regulation 5.5(3) of the Patents Act 1990.

background

Application no. 626962 in the name of AVERY INTERNATIONAL CORPORATION was advertised accepted on 13 August 1992.  AMCOR LTD filed their notice of opposition on 13 November 1992. As a result, the statement of grounds and particulars was due to be served on 13 December 1992.

On 5 January the applicant advised the Commissioner that no statement of grounds and particulars had been served. Consequently, on 11 January 1993, the parties were advised that  pursuant to regulation 5.5(3) the Commissioner intended to dismiss the opposition, and invited the parties to indicate within 14 days whether they wished to be heard in respect of the dismissal. The applicant indicated that it did not wish to be heard; the opponent did not respond.

DECISION

A statement of grounds and particulars is essential to the conduct of an opposition. As I said in Kent-Moore v Environmental Products (1992) AIPC 90-915:

The "statement of grounds and particulars" is perhaps the key procedure introduced to expedite the determination of oppositions. The statement sets out the basis of the opposition, and it follows that the opponent's evidence is circumscribed by that statement.

It follows that in the absence of a statement the opponent's evidence is circumscribed to a nullity; as a result the opponent cannot possibly succeed in the opposition. Thus the conditions for dismissal of an opposition have been met [see L'Air Liquide, Societe Anonyme Pour L'etude Et L'exploitation Des Procedes Georges Claude 24 IPR 27, (1992) AIPC 90-872, and GeneralSteel Industries Inc v Commissioner for Railways (NSW) & others, (1964) 112 CLR 125].

I therefore dismiss the opposition, and direct the application to proceed to sealing.

D. HERALD

Assistant Commissioner of Patents

Patent attorneys for the applicant  :  Collison & Co, Adelaide

Patent attorneys for the opponent   :  Phillips Ormonde & Fitzpatrick, Melbourne