Braas & Co GmbH v Humes Ltd - [1993] APO 10

official notice

decision of a delegate of the commissioner of patents

Application : No. 563861 in the name of BRAAS & CO GMBH

Title: Process and Apparatus for Producing Concrete Roof Tiles
Action: Section 59 opposition by HUMES LIMITED
Decision: Issued . Claims do not comply with section 40. Claims novel and non-obvious. Applicant given opportunity to amend.
Whether certain evidence in reply to further evidence admissible; consequences of accidental prior use; effect of admitted inaccuracies upon the remainder of the evidence; weight to be given to the evidence on obviousness of "over qualified" experts.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 563861 by BRAAS & CO GMBH and opposition thereto by HUMES LIMITED under Section 59 of the Patents Act 1952

BACKGROUND

Patent application 563861 by Braas & Co GmbH (Braas) was advertised accepted on 23 July 1987. On 16 October 1987 Humes Limited (Humes) lodged a notice of opposition to the application under section 59(1) of the Patents Act 1952. Evidence in support was served on 13 December 1988, followed by evidence in answer on 12 January 1990 and evidence in reply on 15 August 1990. In each instance several extensions of time were required.

A considerable period of time then elapsed without the matter being heard, whereupon on 27 November 1991 Humes lodged an application under regulation 59 for special leave to adduce further evidence. Braas objected, and the matter was heard on 11 February 1992 and was decided in favour of Humes. The extra evidence consists of two statutory declarations which were presented at the hearing and two others which were served on 19 June 1992. Braas served its evidence in reply to that evidence on 17 July 1992.

A hearing to determine the substantive opposition was held in Canberra on 23 September 1992. Braas was represented by Mr Greg Turner, patent attorney of the firm of Spruson & Ferguson, while Humes was represented by Mr Geoff Pryor, patent attorney of the firm of Davies Collison Cave.

As the application was both filed and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and Regulation 23.3, are applicable.

THE SPECIFICATION

The specification states that the invention relates to a process for producing concrete roof tiles in an extrusion process, an apparatus for carrying out this process and concrete roof tiles obtained by the process. A process and apparatus is described whereby by various cutting, shaping and compacting operations a continuous layer of fresh concrete extrudate is converted into so-called "roof-tile mouldings" which may then be dried and cured to form finished tiles.

According to the specification the invention is a development of a process and apparatus known from German Patent specification 2,252,047. It will be convenient to refer to this process and apparatus by its inventor's name - Matthews - since it eventuates that this German Patent has equivalents in the United Kingdom (the originating…

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: [1993] APO 10
Decision Date: 8 February 1993

CaseChat Overview and Summary

The case of Braas & Co GmbH v Humes Ltd involved a patent application for a process and apparatus for producing concrete roof tiles. Humes Limited opposed the application under Section 59 of the Patents Act 1952, alleging that the claims did not comply with Section 40, lacked novelty, were obvious, and did not comply with Section 40 of the Patents Act. The court had to determine the admissibility of certain evidence, the consequences of accidental prior use, the effect of inaccuracies in evidence, and the weight to be given to evidence on obviousness provided by "over qualified" experts. The court found that the claims did not comply with Section 40 of the Patents Act, but allowed the applicant sixty days to propose amendments. The court also found that the invention was novel and not obvious. The applicant was awarded costs.

Orders