Beaumont Gregory Lyons v Jonathon Charles Albert Noble - [2006] APO 40

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.757504 in the name of Beaumont Gregory Lyons

Title: A Hammock Stand

Action: Request to serve further evidence in respect of an opposition under s59 and s104 by Jonathan Charles Albert Noble

Decision: Issued 20 December 2006 .
Abstract

The opponent requested leave to serve further evidence in an opposition in which the s59 and s104 oppositions on the matter had been conducted. Specifically, the opponent sought to adduce further evidence relating to claim construction issues and in particular it sought to adduce the examination reports made by the Australian patents examiner in the application in suit and by the US examiner in the corresponding US patent, US 6912744 (Lyons). Furthermore, attorney’s submissions in these prosecutions were sought to be adduced. Leave for these matters was not granted.
The opponent further sought to adduce those patent applications referred to in a filed s45(3) search result which were not already in evidence. As this material was highly relevant to the issues of novelty and inventive step, leave was granted.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 757504 by Beaumont Gregory Lyons and opposition thereto under s59 and s104: Request to serve further evidence and objection thereto by Beaumont Gregory Lyons.

BACKGROUND

Patent application 91353/01 was filed on 15 November 2001 by Beaumont Gregory Lyons (Lyons) and claimed priority from an Australian provisional application PR1504 dated 17 November 2000. The application underwent expedited examination and was advertised as accepted on 20 February 2003.
Opposition was filed by Jonathan Charles Albert Noble (Noble) on 20 May 2003 and after 6 extensions of time evidence-in-support was completed. After two extensions for time for serving evidence-in-answer, Lyons indicated on 22 February 2005 that he would not file any evidence-in-answer but instead filed an application under s104 to amend the specification.
In response to an invitation to provide comments on the amendments, Nobel filed comments on 11 April 2005. On 7 July 2005, leave to amend was advertised as accepted and on 7 October 2005, a notice of opposition was filed.
Both parties agree to a joint hearing for both oppositions. Consequently, a hearing on the oppositions was set down for 7 July 2006 at Canberra. Garry Adrian Wilson, patent attorney of Garry Wilson Patent and Trade Mark Attorney attended on behalf of the opponent, Noble. Mr Trevor Dredge, patent attorney of Intellpro attended by phone on behalf of the patent applicant, Lyons.
Since the hearing, a matter of further evidence has been raised and the current hearing has arisen as a result. The history since the hearing is somewhat convoluted but involved a request under Patents Regulation 5.10(4), which was filed on 21 July 2006, for time in which to serve further evidence. In this application, Nobel requested that he be allowed time in which to file evidence on claim construction and in particular sought to adduce the submissions by…

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

Case: [2006] APO 40
Decision Date: 20 December 2006

CaseChat Overview and Summary

Beaumont Gregory Lyons filed a patent application for a hammock stand, which was accepted and advertised. Jonathan Charles Albert Noble opposed the patent application under sections 59 and 104 of the Patents Act 1990. Noble sought leave to serve further evidence in respect of the opposition, including examination reports and attorney's submissions from the prosecution of the patent application in Australia and the corresponding US patent, US 6912744 (Lyons). Noble also sought to adduce patent applications referred to in a filed s45(3) search result that were not already in evidence. Lyons opposed the request for further evidence. The court had to determine whether the requested evidence was relevant and admissible, and whether the delay in serving the evidence was justified.

The court held that the US prosecution history and the Australian examiner's report were not relevant considerations for deciding on claim construction issues. The court found that the evidence sought to be adduced was not admissible as it constituted opinions or submissions of the patentee or their agents, or documentary evidence of their intentions. However, the court held that the HOWE document was highly relevant and potentially determinative of the opposition and should be admitted. The court also held that the s45(3) search results were highly relevant to the issues of novelty and inventive step, and should be admitted as evidence. The court found that the public interest in determining a serious opposition on its merits outweighed the private interest of Lyons in the expeditious resolution of the issues.

The court granted leave for Noble to serve the further evidence as identified above, and allowed the parties 21 days from the date of this decision to file any relevant submissions. The court did not award costs as both parties had only been partially successful.

Orders