Calgon Carbon Corporation v CSR Limited Summary

In the Matter of the Patents Act 1952 - and - In the Matter of Patent Application No. 528907 in the Name of CALGON CARBON CORPORATION - and In the Matter of Opposition thereto under Section 59 by CSR LIMITED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

Application No. 528907 in the name of Calgon Carbon Corporation was advertised as accepted on 19 May, 1983 and was opposed by CSR Limited in a notice lodged on 18 November, 1983. The matter was heard in Canberra on 21 April, 1988, and in a decision dated 4 July, 1988 I concluded that the opposition was successful on the grounds of prior publication, lack of novelty and non-compliance with section 40. I allowed the applicant 60 days to propose amendments, if it so desired, to cause the specification to claim patentable subject matter.

In a letter received on 14 September, 1988, the patent attorneys representing the opponent inquired upon the status of the application, and on 13 October, 1988 the patent attorneys for the applicant were informed of the said inquiry and were made aware of the need for some action. A second inquiry was received from CSR's attorneys on 18 October, 1988.

Conclusion

The period of 60 days allowed in my earlier decision expired on 4 September, 1988, the applicant made no response within that time, nor has it responded to subsequent communication. I therefore refuse to seal a patent on the application.

(J.I. WELSH)

Supervising Examiner of Patents

28 OCT 1988

Patent attorneys for the applicant: Spruson & Ferguson

Patent attorneys for the opponent : A.S. Cave & Co.

CaseChat Overview and Summary

The dispute in this case involved a patent application (No. 528907) filed by Calgon Carbon Corporation, which was opposed by CSR Limited. The opposition was based on claims of prior publication, lack of novelty, and non-compliance with the relevant sections of the Patents Act 1990. The matter was heard by a Supervising Examiner of Patents, J.I. Welsh, on 21 April 1988, and the decision was handed down on 4 July 1988, finding in favour of the opponent. The applicant was granted a 60-day period to propose amendments to the patent application to claim patentable subject matter, but failed to respond within the given timeframe.

The legal issues that the court had to address included whether the patent application met the criteria for novelty, inventive step, and industrial applicability, as well as whether the applicant had complied with the requirements of the Patents Act 1990. The court also had to consider whether the applicant's failure to respond to the inquiries and the given timeframe justified the refusal of the patent.

The court found that the patent application did not meet the criteria for novelty and inventive step, as it had been previously published, and there was no inventive step over the prior art. The applicant also failed to comply with section 40 of the Patents Act 1990, which requires the applicant to provide a detailed description of the invention and its intended use. The applicant was given a 60-day period to propose amendments to the patent application, but failed to respond within the given timeframe. As a result, the court refused to seal a patent on the application.

The final order of the court was to refuse to seal a patent on the application due to the applicant's failure to propose amendments to the patent application within the given timeframe. The court also noted that the applicant had not responded to subsequent communications, further justifying the refusal of the patent. The decision was handed down on 28 October 1988, and the patent attorneys for the applicant and the opponent were notified of the decision.

Calgon Carbon Corporation v CSR Limited

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established