Bruce James Lake v Alan Alexander Lake - [1992] APO 24

official notice

decision of a delegate of the commissioner of patents

Application : No. 603760 in the name of BRUCE JAMES LAKE

Title : Duct Cleaning

Action: Application for the grant of an extension of term under section 69 of the Patennts Act 1990; and notices lodged under section 68B(3) of the Patents Act 1952, and section 28 of the Patents Act 1990.

Decision: Issued . Grounds of obtaining, non-compliance with section 40, obviousness, lack of novelty and secret use not established. Extension of term granted.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Application for the grant of an extension of term under section 69 of the Patents Act 1990 of Petty Patent No 603760 in the name of BRUCE JAMES LAKE and notice lodged under section 68B(3) of the Patents Act 1952 by ALAN ALEXANDER LAKE.

Background

Petty Patent application No 58939/90 was lodged on 13 July 1990 being a divisional application made by virtue of section 51 of the Patents Act 1952 of application accompanying Provisional Specification No PJ7292 which was lodged on 9 November 1989. Following acceptance, the Petty Patent application was sealed on 28 September 1990 as Petty Patent No 603760. On 10 April 1991 a notice was lodged under section 68B(3) of the Patents Act
1952 by ALAN ALEXANDER LAKE and on 28 August 1991 a further notice under section 28 of the Patents Act 1990 was filed by BAINS HARDING INDUSTRIES PTY LTD. On 21 May 1991 the patentee, BRUCE JAMES LAKE, applied for a grant of an extension of term of Petty Patent No 603760.

The matter came to hearing in Canberra on 18 February 1992. Just prior to the hearing, Bains Harding Industries Pty Ltd advised that they no longer wished to proceed with their notice. Mr Dennis E Barr, patent attorney, of Grant Adams & Company, represented the patentee assisted by the patentee, Bruce James Lake. Mr. Richard K. Sheehan, associate of the patentee, was also present. Mr Alan Alexander Lake represented himself.

The Patents Act 1990 commenced on 30 April 1991 which was after the lodgement of the section 68B(3) notice by Alan Lake. In view of regulation 23.26 of the Patents Act 1990 I need to consider the notice in the light of the provisions of the Patents Act 1952.

The submissions at the hearing were limited to the grounds specified in paragraphs (b), (c), (e), (g) and (l) of sub-section 100 (1) of the Patents Act 1952 i.e. obtaining, non-compliance with section 40, obviousness, lack of novelty and secret use.

EVIDENCE

Apart from verbal submissions provided at the hearing, both parties submitted, prior to the hearing, evidence in the form of statutory declarations which I will identify and refer to later.

During the course of the hearing the informant advised that he had additional evidence that was with his attorneys which was just about ready for submission and asked permission to file it. The informant indicated that the nature of the…

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.

Continue reading Bruce James Lake v Alan Alexander Lake

Details

AGLC: Bruce James Lake v Alan Alexander Lake [1992] APO 24
Case: [1992] APO 24
Decision Date: 7 May 1992

CaseChat Overview and Summary

This case involved an application for the grant of an extension of term for a petty patent in the name of Bruce James Lake. Alan Alexander Lake lodged a notice under section 68B(3) of the Patents Act 1952, raising various grounds for the rejection of the application. The court had to decide on the validity of the patent and whether the term should be extended. The court considered various aspects, including novelty, obviousness, secret use, and obtaining. The court found that the patent was novel, not obvious, and not subject to secret use. The evidence regarding obtaining was conflicting, but the court concluded that Bruce Lake was the primary inventor. The court also rejected Alan Lake's claim of partnership and denied the late filing of evidence. As a result, the court granted an extension of the term for Petty Patent No 603760 and awarded costs against Alan Alexander Lake.

Orders