Bevan James Riekie and Arthur Simpfendorfer v M.J. McGrath Pty Ltd and Calsil Ltd

In the Matter of the Patents Act 1952
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In the Matter of Patent Application No. 527996 in the Names of BEVAN JAMES RIEKIE and ARTHUR SIMPFENDORFER
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In the Matter of Opposition thereto by
(1)M.J. McGRATH PTY. LTD.
(2)CALSIL LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         In my decision in this matter dated 5 November 1985, I found that the claims, except claims 10 to 13, of the complete specification lacked novelty. I allowed the applicant 60 days in which to propose amendments with a view to claiming only novel subject matter.
         The applicant lodged a section 77 request on 4 December, 1985 to amend the complete specification. Subsequent to proceedings under section 79, the request was advertised on 14 August, 1986, and allowed on 7 January 1987, the amendments being incorporated into the complete specification at that time.
         I am satisfied that the amendments remove the grounds for the earlier findings and thus I am of the opinion that there is no lawful ground of objection to the application and complete specification. I direct therefore, that the application and complete specification as amended proceed to sealing, subject to any appeal.

(J.L. ROVETA)

CaseChat Overview and Summary

In the case of Bevan James Riekie and Arthur Simpfendorfer v M.J. McGrath Pty Ltd and Calsil Ltd, the central dispute revolves around the validity and novelty of patent application no. 527996, which was opposed by M.J. McGrath Pty Ltd and Calsil Ltd. The applicants, Riekie and Simpfendorfer, sought to amend their patent application following a finding by the supervising examiner that certain claims lacked novelty. The matter was heard by J.L. Roveta, a Supervising Examiner of Patents.

The legal issues before the court included whether the proposed amendments to the patent application adequately addressed the novelty objections raised earlier, and whether the applicants had complied with the procedural requirements set out in the Patents Act 1990. Specifically, the court had to determine if the amendments successfully removed the grounds for the previous findings of lack of novelty, and whether the applicants' request for amendment was properly made and advertised as required by law.

J.L. Roveta found that the amendments made to the patent application successfully addressed the issues of novelty identified in the earlier decision. The court noted that the applicants had followed the appropriate procedures for amending the application, including lodging a section 77 request and ensuring the amendments were advertised under section 79. Consequently, Roveta was satisfied that the amended application and specification met the necessary criteria for patentability and did not present any lawful grounds for objection. The court directed that the amended application and specification proceed to sealing, subject to any potential appeal by the opposing parties.

This decision underscores the importance of ensuring that patent applications meet all legal requirements, including those related to novelty and procedural compliance. The court's ruling highlights the process by which amendments can be made to an application to address earlier objections and the conditions under which such amendments are accepted.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established