Bally Gaming International, Inc v Aristocrat Leisure Industries Pty Ltd
[1996] APO 49
•25 October 1996
official notice
decision of a delegate of the commissioner of patents
Application : No. 664384 in the name of Bally Gaming International, Inc
Title: Gaming Machine Information, Communication and Display System
Action: Opposition by I.G.T. (Australia) Pty Limited and a request for dismissal of the opposition
Decision: Issued .
Abstract: Request for dismissal refused. Certain particulars found inadequate including particulars relating to prior use which listed 7 different examples at 81 locations. A direction for further and better particulars issued.
The serving of partial evidence not considered to be a factor in determining the adequacy of certain particulars.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent application no. 664384 by Bally Gaming International, Inc, opposition thereto by I.G.T. (Australia) Pty Limited and a request for dismissal of the opposition
background
Bally Gaming International, Inc (Bally) filed patent application 664384 on 23 September 1992. The application was advertised as accepted on 16 November 1995. I.G.T. (Australia) Pty Limited (IGT) filed a notice of opposition on 15 February 1996 and served its statement of grounds and particulars on 15 May 1996.
On 14 June 1996, Bally filed a request for the opposition by IGT to be dismissed together with submissions in support of that request.
On 20 June 1996, IGT provided a letter which indicated that IGT intended to file a request to amend its statement of grounds and particulars to meet legitimate concerns of Bally. IGT was informed by AIPO that, pursuant to regulation 5.9(2)(a), any such request to amend would not be considered until after the request for dismissal of the opposition had been determined.
The matter was heard in Canberra on 13 September 1996. At the hearing, Mr J. Roger Green, patent attorney of Carter, Smith & Beadle, Melbourne, represented Bally. Mr Robert Miller, patent attorney of Spruson & Ferguson, Sydney, represented IGT.
THE STATEMENT OF GROUNDS AND PARTICULARS
IGT’s statement of grounds and particulars lists four grounds of opposition viz. the claimed invention is prior published or otherwise not novel, the claimed invention lacks an inventive step, the specification does not comply with section 40(2) or (3), and the claimed invention is not for a manner of manufacture.
There are nine separate particular items in support of the ground of prior publication or lack of novelty. The first of these lists references to 22 patent specifications. The second refers to a publication of certain guidelines by a NSW government organisation. The other seven particulars in relation to this ground relate to prior use and/or prior sale of various gaming systems in various locations, predominantly in NSW.
In relation to the ground of lack of inventive step, there are three particulars. There is an identification of two alleged pieces of prior art. There are also references back to the previously identified 22 patent specifications and prior use examples.
With respect to the ground of lack of compliance with section 40(2) and (3), there are listed 10 items of alleged defects.
In relation to the ground of lack of manner of manufacture, the one particular refers to prohibition imposed by the guidelines referred to earlier of the use of credit cards in gaming machines.
THE REQUEST FOR DISMISSAL OF THE OPPOSITION
In support of its request for dismissal, Bally has provided the following reasons:
Ground 1
The opponent has neither briefly nor generally identified what information in each of the 22 patent specifications is relied upon. This is clearly contrary to the requirements of a statement of grounds and particulars as set down in ICI v Irenco Inc and Others 26 IPR 154. This also applies to the NSW government publication.
There is no indication of the actual publication dates of the patent specifications.
In relation to the alleged prior use or prior sale, there are no details of the actual systems nor of the date of their installation. Although trade marks or trade names have been used this does not sufficiently identify the nature of the systems. Therefore the applicant has not been informed of the case it has to answer.
Ground 2
There is no indication of the relevant features of the alleged common general knowledge nor do the particulars identify the relevant person skilled in the art.
In relation to the reference back to the 22 patent specifications, the particulars refer to lack of inventive step in view of one or more of these specifications when taken separately or together. This use of “together” has no basis in law because there is no particularisation of why a person skilled in the art would treat them as a single source of information as required by section 7(3) of the Patents Act 1990. Similarly there is no indication why the alleged examples of prior use would be considered in conjunction with the NSW government publication.
Ground 3
In referring to the lack of clarity of certain terms, the opponent has not particularised why these terms are unclear.
Ground 4
The law in relation to the use of a machine contrary to law is quite clear. Just because a machine can be used contrary to law does not make it unpatentable. In the present case, the machine is to be operated in a manner within the law. In any case the particulars in relation to this matter clearly relate to matters which should be raised under section 51 which is not a ground of opposition.
SUBMISSIONS
Both parties provided me with written summaries of their oral submissions at the hearing.
In relation to Bally, I have summarised below the main points made at the hearing by Mr Green but have excluded those which I have already referred to above in relation to the request for dismissal:
The present statement of grounds and particulars does not provide sufficient detail for the applicant to understand the case to be defended.
As indicated in ICI v Irenco (supra), any more than 7 to 10 documents listed under a particular ground would place an unreasonable burden on the applicant in determining the case against it. The present particulars list 22 patent documents.
As indicated in E I DuPont de Nemours v DowElanco (1994) AIPC 91-067, the particulars should include page and line number references for relevant documents to direct the applicant to the specific part of the document to be relied upon.
In relation to the NSW government publication, this document is not readily available to the applicant who is from another country.
In relation to the ground of non-compliance with section 40, the opponent has referred to a particular term in claim 11 which does not in fact appear in claim 11.
The particulars state that claim 2 is not fairly based but the reference in the description is to a preferred embodiment and therefore claim 2 is fairly based.
There are references in the particulars to unclear terms in claims 19 and 21 but the opponent has not particularised why these terms are unclear.
Claim 28 has been referred to in the particulars as lacking fair basis but there is no reference to “only” in claim 28.
In relation to lack of manner of manufacture, although the opponent has alleged that the grant of a patent would be mischievous to the state, cause hurt to the trade and be generally inconvenient, the case law indicates that there are only two types of inventions which would be refused on this ground. (The applicant refers to various decided cases to support this argument.) The present invention does not fall into either of these categories.
The opposition should be dismissed either wholly or in part and/or the Commissioner should issue directions for the opponent to provide further and better particulars. In this regard the opponent’s attorney has already indicated in a letter to the Commissioner dated 20 June 1996 that it felt that the original statement of grounds and particulars was deficient.
The fact that some only of the 22 documents have been put into evidence should not be taken into account in the present matter.
Mr Miller’s submissions on behalf of IGT can be summarised as follows:
Ground 1
The nature of the present invention is such that it is not particularly onerous for the applicant to review the particularised 22 documents. This is because the present case deals with electro-mechanical subject matter and not chemical subject matter where a significantly greater study of documents is required.
The need for page and line number references as set out in E I DuPont de Nemours v Dow Elanco (supra) is to relieve the burden of review but the degree of burden depends on the subject matter. There is no undue burden in the face of the 22 particularised documents.
The publication dates can be determined from the patent documents themselves if the applicant purchases them for consideration.
Only 8 documents have been put into evidence. The grounds for which those documents have been particularised will only be pressed on the basis of those documents. Therefore the applicant knows the case it has to answer. It would seem to be wasted effort to amend the statement to delete the balance of documents. In any case only those documents which have been put into evidence can be relied upon at the substantive opposition hearing (Coal Corporation of Victoria v Hinkley & Anor, unreported Patent Office decision on application 621944, issued 17 September 1993).
In relation to the NSW government publication, there is no requirement to identify relevant parts of the document as that is a matter for evidence. In any event, the document is now in evidence.
In relation to the issues of prior use in particulars 3 to 9, a location of the alleged prior use is sufficient to allow the applicant to conduct an inspection. The precise first date of prior use is a matter for evidence. In any case, it cannot be said that the particulars are obviously inadequate.
Ground 2
The degree of particularisation in relation to common general knowledge is set out in Borden Inc. v Elkem A/S (1992) AIPC 90-893.
Evidence will be provided to establish that the NSW government publication is part of the common general knowledge
Ground 3
The section 40 matters could not be better particularised. Any further analysis is better carried out at the hearing of the substantive opposition. However, the particular referring to claim 11 should have referred to claim 12.
Ground 4
The matter in relation to this ground is something that should be determined at the opposition hearing. The law in the area of matters which may be contrary to law is not clear. Although the primary thrust of the particulars in relation to this ground is applicable under section 51 of the Patents Act 1990, it is equally relevant under the ground of lack of manner of manufacture.
In addition to the above submissions in relation to the particular grounds and corresponding particulars, Mr Miller made some other submissions in relation to some procedural issues.
Mr Miller requested a ruling in this decision on the fate of section 40 matters which may be raised by the opponent at the substantive opposition hearing for the first time i.e. section 40 issues which had not been particularised.
Mr Miller also enquired on the appropriateness of my taking into account any relevant submissions which might be made by a second opponent to the present application in a hearing which followed the present hearing on a request for dismissal of that opposition. Mr Miller’s argument, as I understand it, was that if the arguments provided by this other opponent applied equally to the present matter then I should take them into account in deciding the present matter.
In relation to these two matters, Mr Green argued that the present hearing was not the correct forum to decide on the fate of unparticularised section 40 matters and that any other party’s submissions in another hearing were not relevant to the present hearing.
DECISION
Procedural matters
I find it appropriate to deal with the procedural points raised by Mr Miller first.
In relation to the question of whether or not unparticularised section 40 matters can be raised at the substantive opposition hearing by the opponent or more importantly whether such matters would be considered by the delegate of the Commissioner in deciding the substantive opposition, I agree with Mr Green that this is not the proper forum to be providing a definitive ruling on such an issue. It is not an issue for decision when considering whether or not the present opposition should be dismissed in whole or in part or whether or not there should be a direction for further and better particulars. I would note on this issue however that any section 40 matter, such as for example the question of sufficiency, which might depend on the support of evidence by persons skilled in the particular art, would not seem to be an appropriate matter to be raising at the substantive opposition for the first time.
In relation to the question of whether or not I should take into account, in coming to a decision on the present matter, submissions raised by the other opponent at the hearing which followed the present one, again I agree with Mr Green that such submissions are not relevant to the present proceedings insofar as they relate to matters of fact. However, the same issues of law relate to both hearings. It would be an intolerable fetter on me if I was not able to reach the correct decision in the present matter because I could not consider a particular decided case because it was referred to in the other hearing but not in the present one. I would note that the number of decided cases in relation to the issue of dismissal of opposition and/or the provision of further and better particulars is not great. In coming to a decision in this matter, I believe that I have considered them all and would have done so even if another hearing had not taken place.
Dismissal of the opposition
Dismissal of an opposition is covered by the provisions of regulation 5.5 of the Patents Regulations 1991 which reads as follows:
"Dismissal of opposition
5.5 (1) An applicant may:
(a) within 1 month of being served with a copy of a statement by an opponent under subregulation 5.4 (1) ("filing of statement"); or
(b) if the complete specification in relation to an opposed application is re-examined under subsection 97 (1) of the Act ("re-examination of complete specifications") - within 1 month from the day when the re-examination is completed under regulation 9.5 ("completion of re-examination);
request the Commissioner in the approved form to dismiss the opposition.
(2) As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.
(3) The Commissioner may dismiss the opposition whether or not the applicant has requested the dismissal of the opposition."
The reasons for dismissing an opposition are similar to the reasons for summary dismissal which are described in General Steel Industries Inc v Commissioner for Railways(NSW) and others (1964), 112 CLR 125. The relevant passage is:
"..It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited .. to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; "so obviously untenable that it cannot possibly succeed"; "manifestly groundless"; "so manifestly faulty that it does not admit of argument"; "discloses a case which the court is satisfied cannot succeed"; "under no possibility can there be a good cause of action"; "be manifest that to allow them (the pleadings) to stand would involve useless expense".
At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or "so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument"; "so to speak apparent at a glance".
From this, I deduce that I should dismiss this present opposition only if I am satisfied that the opposition cannot possibly succeed.
I am not so satisfied.
While the applicant has provided argument on the purported deficiencies of each of the 14 particulars listed in the statement of grounds and particulars, there is no convincing argument by the applicant to persuade me that the opposition could not possibly succeed. The main thrust of the applicant’s argument has been aimed at establishing that the particulars are deficient rather than that the opposition is wholly untenable.
I refuse the request to dismiss the opposition in its entirety.
However, as the applicant has pointed out to me, where an opposition is not dismissed in total, it is possible for the Commissioner to dismiss individual grounds of opposition where those grounds are unsupported by any of the corresponding particulars. In this respect, the applicant directed me to L’Air Liquide, SA pour L’Etude et L’Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd 24 IPR 77. In this respect I note that, as indicated in Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd 24 IPR 368, I should not dismiss a ground of opposition merely because it is not supported by some, only, of the particulars.
In looking at each of the individual grounds, I should consider whether or not each is “so manifestly faulty that it does not admit of argument”. (General Steel Industries v Commissioner for Railways (supra)). In doing so, I am unable to reach the conclusion that any of the grounds fall into this category.
In a number of instances, Mr Green’s arguments strayed into the substantive issues of the opposition rather than establishing the complete inadequacy of the particulars. Thus, for example, in section 40 matters, Mr Green directed his arguments to matters of fair basis and lack of clarity rather than demonstrating that this ground was totally without merit. While it may be the case that there are instances of grounds which require some discussion of the legal merits of the particulars to establish that a ground should be dismissed, I am not convinced that the present case falls into this category.
I am of the opinion that each of the grounds on the face of it would have some chance of success. Therefore I refuse the request to dismiss the opposition in part.
In summary, I refuse to dismiss the opposition either in whole or in part.
Direction to provide further and better particulars
In Mobay Corporation v The Dow Chemical Company (1992) AIPC 90-895, the delegate indicated that it was possible for the Commissioner to issue a direction for further and better particulars. In discussing the appropriateness of such a direction, the delegate referred to B.C. Cairns in Australian Civil Procedure (1985) at page 116 as follows:
"A distinction must be drawn between a failure to plead a material fact with sufficient particularity and a failure to plead a material fact at all. Failure to plead a material fact at all may not be remedied by particulars. But where a material fact is pleaded, but not with sufficient particularity, then it is proper for it to be supplemented by particulars."
In the present case, the applicant has requested such a direction. I will consider the particulars in relation to each of the four grounds set out in the statement of grounds and particulars.
Ground 1 - Prior publication or otherwise lacking in novelty
The main argument in relation to the particulars for this ground concerned the number (22) of particularised patent documents.
In relation to this, it is true, as submitted by the applicant, that some earlier office decisions placed a numerical limitation on the number of particularised documents which would place a reasonable burden on the applicant. Mr Green referred me to ICI v Irenco (supra) where 7 to 10 documents was thought reasonable. However, I note the delegate’s comments in Dominion Mining Ltd v Technological Resources Pty Ltd 31 IPR 608 where the delegate stated:
“The decisions in ICI v Irenco (supra) and DuPont v DowElanco (supra) state that a large number of documents provide no particulars at all and that more than 10 documents may be too many unless specific page and line references are given. However I do not believe that we can set down any rigid numerical limit. Each case must be treated on its merits taking all relevant factors into account. The overriding consideration must be whether the applicant can reasonably be expected to understand the case presented. Just because there are more than 10 documents does not necessarily mean that the applicant will be unable to understand the case against them. What it means is that there may be a need for further particularisation and this must be considered in the light of the specific facts of the case. Further, it would be only in very unusual circumstances that citing more than 20 documents could be adequate without further particularisation.
In this case I do not think that 16 documents is too many. The opponent has, additionally, categorised these documents by technical content combined with an assessment of their relative relevance. Despite the applicant's arguments that this extra information was of no assistance, I find that it gives them sufficient extra information about the documents and their relevance that, even with 16 documents, they could be reasonably expected to understand the opponent's case.”
I must agree with the delegate that each case should be considered on its merits and that there should be no numerical limit placed on the number of documents which can be particularised. The criterion I should rely upon, I believe, is whether or not the applicant is reasonably able to understand the case it has to answer.
In the present case, Mr Miller argued that the 22 patent documents had been culled from over 500 such documents, the technology of the documents was not difficult and therefore the burden placed on the applicant was not great. On the other hand, Mr Green argued that the subject matter of the citations would be in the electronic and computer-related fields and therefore require lengthy considerations.
While I have not perused the actual particularised documents, I have taken the liberty of considering the claimed invention and have come to the conclusion that the claimed system consists of very generalised features e.g. a machine having a central processor, control means, a card reader and keypad, a display and an interface between the reader, key pad and control means. I do not believe that such technology would require extensive examination of related documents to identify whether or not the claimed system was prior published.
I believe that the applicant would be able to determine the case it has to answer from the particularised documents. However the question I have to decide is whether or not the number of documents places an unreasonable burden on the applicant. I can well imagine a situation where the applicant might eventually be able to determine the case it has to answer from a list of 70 or so documents, but such a list of documents would place an unreasonable burden on the applicant. In the present case, in relation to the ground of prior publication and lack of novelty, I do not think the applicant has been provided with an unreasonable burden given the nature of the claimed invention. It seems to me that this sort of exercise of assessing a bundle of 20 odd patent documents would be something that a patent attorney would carry out regularly in the course of providing a client with an assessment of the likely success of gaining patent protection for a particular invention. Therefore I do not think that the particular listing the 22 patent documents is so inadequate that the applicant is not able to determine the case it has to answer.
Mr Miller argued that I should give weight to the fact that only 8 of the 22 patent documents have been put into evidence and thus the applicant now knows the case it has to answer. However, I believe that I should give no weight at all to this. Although Mr Miller gave an undertaking at the hearing that only those 8 of the 22 patent documents already in evidence would be used to support the grounds of opposition, I note that the evidence in support is not yet complete. In any case, the aim of the statement of grounds and particulars is to foreshadow to the applicant the breadth of the case it has to answer before the evidence in support is served. In this respect, I note the words of the delegate in Digger Tools Pty Ltd v Pasdonnay Pty Ltd, unreported Patent Office decision on application 638571, issued 1 February 1995. Although the delegate was talking of particulars in relation to prior use, I believe the comments equally apply to prior publication:
“It was argued that this information is not necessary since the evidence relating to this use had already been served on the applicant.
The function of the statement of grounds and particulars was discussed by the Delegate of the Commissioner in Kent-Moore Corporation v Environmental Products Amalgamated Pty Ltd (1992) AIPC 90-915 at page 38,625 in the following terms:
`The statement sets out the basis of the opposition, and it follows that the opponent's evidence is circumscribed by that statement. (It also enables the applicant to start preparing their defence upon receipt of that statement, as they are then aware of the basis of the opposition.)’
The function of informing and circumscribing is not avoided merely because evidence has been served. One reason for this is obvious: the material facts of the case may not need to be the subject of evidence, or the evidence may be incomplete - where does the applicant stand in such a case? Consequently, I believe that the statement of grounds and particulars must still be suitable for their purpose even if evidence in support has been served. This view is consistent with the decision of a Delegate of the Commissioner to direct further and better particulars after evidence in support had been served (see DuPont v DowElanco, supra).”
In relation to Bally’s argument that publication dates had not been provided for the particularised documents, I believe publication dates of these patent documents to be a matter for subsequent evidence.
Although Bally argued that the NSW government publication was not readily available to the applicant who is from another country, I do not believe that the opponent is required to rely only on documents which might be available in the particular country of origin of the applicant. There is no such restriction on the prior art base in the Patents Act. However, I do believe that the applicant is entitled to know where the publication can be located. Mr Miller indicated that this document is now in evidence. I am satisfied that this has overcome the issue of providing the applicant with the location of this document.
Bally argued that there are no details of the actual systems nor the date of their installation in the particulars relating to prior use. I note Mr Miller’s submission that the date of first prior use is a matter of evidence. This may be so but I think that the particulars should inform the applicant more than merely that the prior use took place before the priority date of the presently claimed invention. I also note that in respect of the particulars relating to prior use, the applicant is faced with a list of 7 different systems of which prior use is alleged. The particulars identify, in relation to those 7 different systems, 81 locations extending across Australia but predominantly located in NSW. It seems to me that this breadth of particularisation is one which places the applicant in a difficult position. For example, there is alleged prior use in Perth particularised without any specific details of the system allegedly prior used. From the applicant’s point of view, such a particular would seem to be of little or no help at all in alerting it to the case it has to answer. Given such a wide-ranging degree of alleged prior use, I believe that the particulars should at least indicate the nature of the systems which allegedly support the ground of prior use. In this respect, I agree with the applicant that references to trade names do not sufficiently identify the nature of the systems referred to. I also note in particular 4 under this ground that there is not even an indication of where the prior use took place. In this respect, I note the delegate’s comments in E I DuPont de Nemours v Dow Elanco (supra) to which both parties referred me:
“for matters such as prior knowledge, sale, prior use, a brief description of their relevance to the ground together with a brief details of the material facts to support a prima facie case, for example, (a) the date and place of any use, (b) the person or persons to whom the invention was allegedly disclosed or sold;”
I also note sub-regulation 12.4 (2) of the Patent Regulations 1991. This sub-regulation deals with the degree of particularisation required in a prescribed court for revocation proceedings. It is therefore not directly relevant to the present proceedings but I find that it does provide me with some guidance on what might be required in the present case. In particular I note sub-regulation 12.4 (2)(b):
“If 1 of those grounds is that the invention is not a patentable invention because of information about the invention in a document or through the doing of an act, the particulars must specify:
(b) in the case of an act:
(I)the name of the person alleged to have done the act; and
(ii) the period in which, and the place where, the act is alleged to have been done publicly; and
(iii) a description that is sufficient to identify the act; and
(iv) if the act relates to apparatus or machinery - whether the apparatus or machinery exists and, if so, where it can be inspected.”
I am not satisfied that the opponent has adequately met the requirements set out in paragraphs (ii) and (iv) above. It seems to me that the applicant would need this information to adequately determine the case it has to answer.
I find that particulars 3 to 9 in relation to ground 1 in the statement of grounds and particulars inadequately define the case the applicant has to answer.
Ground 2 - Lack of inventive step
In relation to the question of lack of inventive step and, in particular, the question of common general knowledge, the opponent has a limited time in which to determine the extent of this knowledge before the time limit for serving the statement of grounds and particulars expires. IGT referred me to Borden Inc. v Elkem A/S (supra)where the delegate stated:
“...to have an expectation that a Statement of Particulars should contain anything more than rudimentary details of the common general knowledge to be produced in the opposition would seem both unrealistic and unreasonable.”
I am satisfied that the particulars in relation to this ground provide the rudimentary details of the opponent’s view of the state of common general knowledge. In the present circumstances, I do not believe that the particulars are deficient because they do not identify the person skilled in the art or the particular field of technology under consideration. While I believe that this is self-evident from the nature of the claimed invention, I also note that the applicant identified the particular field of technology when discussing the relative difficulty in construing the 22 patent documents.
In relation to the phrase “when taken separately or together”, Bally has argued that there is no particularisation of why a person skilled in the relevant art would treat two or more of the documents referred to as a single source of information. While it is a matter for evidence whether or not a person skilled in the art would combine two or more of the patent documents, I believe that the applicant is entitled to know which of the combinations of documents out of the many permutations are going to be relied upon by the opponent.
I find that particular 2 in support of ground 2 is inadequately particularised.
I note the opponent’s argument that evidence will be provided to show that the NSW government document is part of the common general knowledge and do not believe that particulars referring to this document in relation to ground 2 need to be further expanded upon in relation to the combination of this document with other matter.
Ground 3 - Lack of compliance with section 40
I find no difficulties with the particular under this ground. The applicant’s submissions clearly indicated that the applicant was aware of the case it had to answer and, indeed, had already prepared and presented a defence at the hearing in relation to some of the issues raised in this particular. However I note that the opponent has conceded that a reference to claim 11 should have been to claim 12.
Ground 4 - Lack of manner of manufacture
In relation to this ground, the applicant provided extensive submissions on the law in relation to whether or not a patent might be mischievous to the state and similar issues. It is clear from these extensive submissions that the applicant is aware of the case it has to answer in relation to this ground. Again it seems to me that the applicant has already prepared a defence for this ground. This defence should most appropriately be delivered at the substantive opposition hearing. I do not believe that this ground needs further and better particulars.
CONCLUSION
I refuse the request to dismiss the opposition in its entirety.
Consequently, pursuant to regulation 5.8(1)(iii), the time for serving evidence in support commences on the date of this decision.
However, I find that particulars 3 to 9 of ground 1 and particular 2 in relation to ground 2 are so inadequate as to not allow the applicant to determine the case it has to answer. I do not consider that these inadequate particulars should be maintained. Consequently I direct the opponent to provide further and better particulars to set out material facts in relation to these particulars.
I further direct that the further and better particulars be provided by way of amendment to the statement (under regulation 5.9), within 21 days of the date of this decision.
Finally, I direct that if further and better particulars are not provided within this time, the relevant particular will be unavailable for argument at the hearing in the opposition.
COSTS
While Mr Green sought costs if the applicant was successful, Mr Miller submitted that if I refused the request to dismiss the opposition but directed that further and better particulars be provided, then the applicant would have been only successful in part.
I agree with Mr Miller. The applicant has been unsuccessful in having the opposition dismissed either wholly or in part. However the opponent has provided inadequate particulars in relation to prior use and lack of inventive step. In these circumstances, I make no award of costs.
R. Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Carter Smith & Beadle, Melbourne
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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