Compri Technic Pty Ltd v Pneumatic Systems International Pty Ltd - [1999] APO 39

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 663294 in the name of COMPRI TECHNIC PTY. LTD.

Title: Improved Pneumatic Gun and Projectiles Therefore

Action: Opposition under sec. 59 of the Patents Act 1990 by PNEUMATIC SYSTEMS INTERNATIONAL PTY LTD

Decision: Issued .
Abstract

The opponent did not file any evidence in support, and declined to be heard. The only evidence on file from the opponent was evidence filed in relation to a request by the applicant under regulation 5.5 for dismissal of the opposition. That request had been refused.

The grounds of opposition were those of obtaining and lack of novelty due to prior use. Due to want of evidence these grounds were not upheld.

The opposition was dismissed.

Costs awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 663294 by Compri Technic Pty. Ltd. and an opposition thereto by Pneumatic Systems International Pty Ltd under section 59 of the Patents Act 1990.

BACKGROUND

Compri Technic Pty. Ltd. (“the applicant”) filed International Application PCT/AU91/00352 on 9 August 1991, claiming priority from Australian provisional applications PK 1710 and PK 3364 filed on 10 August 1990 and 15 November 1990, respectively. PCT/AU91/00352 designates, inter alia, Australia, and after entering the national phase as application 83338/91 it was advertised accepted on 5 October 1995 and given the six-figure number 663294. The inventor of record is Jeffrey Bruce Fowler.

A notice of opposition to application 663294 was filed on 2 January 1996 by Pneumatic Systems International Pty Ltd ("the opponent"). The grounds of opposition were that the nominated person is not entitled to a grant of a patent for the invention, and that the invention is not novel as a result of prior use.

On 29 April 1996 the applicant applied under regulation 5.5 for "summary" dismissal of the opposition. Dismissal was sought on the basis that the alleged prior use that had occurred had taken place after the priority date of the claims, and that even if the person which the opponent alleged to have been the inventor (David Wayne Casella) had actually been so (and this was not conceded), the nominated person would still have been entitled to the invention by virtue of Mr Casella having been the employee of the nominated person. In relation to the prior use, on the last working day before the hearing on the dismissal action the opponent filed a statutory declaration which had the effect of amending the allegation of prior use to having been one year earlier, which placed it before the priority date of the claims.

The request for summary dismissal was refused. The hearing officer found that determining the relationship of Mr Casella to the nominated person was a matter of evidence, and it would not be appropriate to do so in summary dismissal proceedings. He also accepted that the opponent could have made a clerical error in its statement of grounds and…

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: [1999] APO 39
Decision Date: 29 June 1999

CaseChat Overview and Summary

Compri Technic Pty Ltd, the applicant, filed a patent application for an improved pneumatic gun and projectiles, which was opposed by Pneumatic Systems International Pty Ltd. The dispute was heard by a delegate of the Commissioner of Patents. The opponent, Pneumatic Systems International Pty Ltd, raised two grounds of opposition: that the applicant was not entitled to the patent due to prior use, and that the invention was not novel as a result of prior use. The key legal issues were whether the applicant was entitled to the invention and whether the invention was novel.

The court examined the evidence provided by both parties. The opponent failed to provide any evidence in support of its grounds of opposition, while the applicant provided statutory declarations and documentary evidence. The court found that the opponent's allegation of prior use in 1990 was not substantiated, and the evidence suggested that the prior use actually occurred in 1991. Additionally, the court found that the evidence against Mr Casella being the real inventor was overwhelming, and there was insufficient evidence to support a finding that the applicant was not entitled to the invention.

The court concluded that neither of the grounds of opposition were established. Therefore, the opposition filed by Pneumatic Systems International Pty Ltd was dismissed, and the application proceeded to sealing. Costs were awarded against Pneumatic Systems International Pty Ltd in accordance with the principle that costs follow the event.

Orders