CNH Industrial Italia S.p.A. - [2020] APO 16

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CNH Industrial Italia S.p.A. [2020] APO 16

Patent Application: 2015286813

Title:Air treatment system with pressure balance

Patent Applicant:                   CNH Industrial Italia S.p.A.
Hearing Officer:  Dr S.D. Barker – Deputy Commissioner of Patents
Decision Date:  2 April 2020
Hearing Date:  27 February 2020 in Canberra, via video conference

Catchwords: PATENTS – re-examination – novelty – grace period – whether information made publicly available without the consent of the nominated person – whether information made publicly available by a person who derived the information from the nominated person – document must be disregarded

Representation: Patent attorneys for the applicant: Godfrey Livingstone of Ellis Terry, and Jeremy Robinson of Griffith Hack

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2015286813

Title:Air treatment system with pressure balance

Patent Applicant: CNH Industrial Italia S.p.A.
Date of Decision: 2 April 2020
DECISION
The citation must be disregarded.
An Examiner will consider whether the latest amendments are allowable, and whether any new objections arise as a consequence of the amendments.
REASONS FOR DECISION

Patent application 2015286813 (the present application) in the name of CNH Industrial Italia S.p.A. (the applicant) was accepted on 31 October 2017. A notice under section 27 of the Patents Act (the Act) was filed on 19 December 2017 by the patent attorneys Phillips Ormonde Fitzpatrick. A re-examination report issued on 1 March 2018 raising an objection of lack of novelty. Amendments were proposed during the re-examination, and the most recent re-examination report maintains the novelty objection against all claims. On 8 October 2019 the examiner issued a report stating that the Commissioner intended to refuse the present application as the objection had not been overcome. The applicant asked to be heard in relation to the refusal. The applicant filed an amended specification just prior the hearing.
The objection
The examiner has raised an objection of lack of novelty in the light of WO 2015/159248 (the citation).[1] The citation was filed by Denso Thermal Systems S.p.A. (Denso). The applicant responded that section 24 applies, so this document must be disregarded. At the hearing the applicant argued that the invention does not lack novelty in light of the citation, and in the alternative that the citation must be disregarded under section 24.
[1] The objection is a "whole of contents" objection, as the citation was published after the filing date of the present application, but has an earlier priority date than the present application.
The law
It is a ground of objection during re-examination that an invention, so far as claimed, does not satisfy section 18(1)(b).[2] Novelty is one of these matters. The Act provides that some documents must be disregarded for the purposes of considering novelty. Section 24(1) relevantly states:
For the purposes of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:
(a) any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
(b) any information made publicly available without any consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or from the predecessor in title of the nominated person or patentee;
but only if a complete application for the invention is made within the prescribed period.
[2] Section 98.
In the present case it is paragraph 24(1)(b) that is relevant, and the prescribed period is set out in regulation 2.2D of the Patents Regulations:
For subsection 24(1) of the Act, for information made publicly available in the circumstances mentioned in paragraph 24(1)(b) of the Act, the prescribed period for making a complete application for an invention is 12 months from the day the information was made publicly available.
The present application was filed under the provisions of the PCT on 7 July 2015, and has an earliest priority date of 9 July 2014. The citation was published on 22 October 2015, and has a priority date of 16 April 2014. It has previously been decided that section 24 is applicable where lack of novelty arises in the "whole of contents" sense.[3] I accept the correctness of that decision.
[3] Rozenberg & Co Pty Ltd v Velin-Pharma A/S [2017] APO 61, 133 IPR 263.
In order to disregard information for the purposes of determining whether an invention is novel I must be satisfied that section 24 applies.
The issues
The applicant asserts a) the citation must be disregarded under section 24, or b) if the citation is not disregarded then the invention is novel over the citation. As will become apparent, it is only necessary to consider whether section 24 applies.
Section 24
There are two questions posed by section 24. First, was the information made publicly available without the consent of the applicant. In the circumstances it is clear that there was no consent. Second, was the information made publicly available by a "person who derived the information from the nominated person … or from the predecessor in title of the nominated person".[4]
[4] Section 24(1)(b).
Gianluca Previti provided a declaration dated 26 August 2019. Mr Previti is the Intellectual Property Manager of the applicant since December 2017. It follows that Mr Previti does not have first hand knowledge of the relevant facts since they occurred before he commenced working for the applicant. Mr Previti does not state how he acquired the information that is contained in his declaration, but I have made the assumption that he has had access to all relevant written records of the applicant. It does not appear that Mr Previti made enquiries of the staff of the applicant. The evidence of Mr Previti can be summarised as:
·January 2013 – the applicant began to develop an Engineering Specification for a roof filter for tractors;[5]
·May 2013 – the applicant asked Denso to provide a quote based on the Engineering Specification;[6]
·September – October 2013 – meetings took place between engineering staff of the applicant and Denso;[7]
·November 2013 – an email indicates that intellectual property in some aspects of the work is to vest in the applicant;[8]
·2014 – 2015 – the applicant paid Denso at least 470,000 euros for developing a product;[9] and
·under Italian law a party who pays for work owns the resulting rights, except the right to be recognised as an inventor.[10]
[5] Previti declaration at [2].
[6] Previti declaration at [2].
[7] Previti declaration at [4].
[8] Previti declaration at [4] and Exhibit 3.
[9] Previti declaration at [5] and Exhibit 4.
[10] Previti declaration at [6].
Adriano Vaccari provided a declaration dated 17 February 2020. Mr Vaccari is a named inventor of the present application. The evidence of Mr Vaccari can be summarised as:
·August 2013 – the applicant began working on technical specifications of a roof filter for tractors,[11]
·September – October 2013 – meetings took place between the engineering staff of the applicant and Denso,[12] and
·9 July 2014 – the applicant filed the basic document for the present application.[13]
[11] Vaccari declaration at [2].
[12] Vaccari declaration at [3].
[13] Vaccari declaration at [5].
To my mind this evidence establishes several facts.
1. There was a collaborative venture between the applicant and Denso
The applicant and Denso entered into an arrangement to develop a product based on specifications provided by the applicant. Emails presented as Exhibit 2 of the Previti declaration show that Falagario, Fava and Vaccari (named as inventors of the present application) were involved in meetings with Scarrone (named as an inventor of the citation) and others. The Vacarri declaration states that the applicant "shared the information to enable Denso to implement our inventive concept".[14] This strongly implies a collaboration. It is clear that the invention described in the present application is the outcome of the collaborative venture.
[14] Vacarri declaration at [4].
2. The information described in the citation is the outcome of the collaboration
The citation was filed on 16 April 2015 and claims priority from an application filed on 16 April 2014. This is during the period of the collaboration. I have no direct evidence from Denso on the origin of the information in the citation, but it seems improbable that it was not developed as part of the collaboration. On the balance of probabilities, the information in the citation was developed as part of the collaboration.
3. The information described in the citation was based on information supplied by the applicant
The contributions of the applicant and Denso to the collaboration are generally clear. The applicant provided technical specifications,[15] and Denso brought design skills to developing the product. Whatever the precise role of Denso staff, it seems clear that the outcome of the collaboration was based on the applicant's technical specifications.
[15] Exhibit 1 of the Previti declaration.
Conclusion
The key question is whether the information in the citation was "derived" from the applicant. The plain meaning of derived is 'obtained from' or 'based on'. The information in the citation was not obtained directly from the information in the technical specification but it is based on the information provided by the applicant. Further, it is not apparent that there was any significant departure from the original idea in the technical specification such that the information in the citation should not be considered "derived" from the information provided by the applicant. In this situation I am satisfied that the information in the citation was derived from the information supplied by the applicant. It follows that section 24 applies, and the information in the citation must be disregarded for the purposes of determining whether the invention is novel.
Completion of the re-examination
An amendment was filed on 19 February 2020. Consequently, I direct that an Examiner will consider whether the amendments are allowable under section 102 and whether any new objections arise as a consequence of the amendments. Upon the finalisation of these considerations the re-examination will be completed.
Dr S.D. Barker
Deputy Commissioner of Patents