Concorde Trading Pty Ltd v Croner Trading Pty Ltd - [1994] APO 31

official notice

decision of a delegate of the commissioner of patents

Application : No. 571375 in the name of CONCORDE TRADING PTY LTD

Title: Jumpball

Action: Request by CONCORDE TRADING PTY LTD to dismiss opposition under subsection 104(4) by CRONER TRADING PTY LTD

Decision: Issued . There are no grounds for dismissal although some particulars are deficient. Direction made that these particulars not be relied upon in the opposition. The particulars in question are extensive and relate to matters outside the scope of the amendment made by the applicant and prima facie provide no material facts pertaining to the opposition. To direct the opponent to provide further and better particulars in these circumstances would be prejudicial to the applicant.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 571375 by CONCORDE TRADING PTY LTD, amendments filed pursuant to decision in S.59 opposition by CRONER TRADING PTY LTD, opposition thereto by CRONER TRADING PTY LTD and request for dismissal under Reg. 5.5(1) by CONCORDE TRADING PTY LTD.

background

Patent Application No. 571375 was advertised as accepted on 14 April 1988. On 13 July 1988 Croner Trading Pty Ltd (CRONER) filed a notice of opposition under subsection 59(1) of the Patents Act 1952 to the grant of a patent in respect of the application .

A hearing of the substantive opposition and other special leave applications was held in Canberra on 17 June 1992 and the written decision issued 25 September 1992. The opposition succeeded on the ground of non-compliance with SECTION 40 and want of novelty, but, the hearing officer concluded that there was patentable subject matter disclosed in the specification and gave Concorde Trading Pty Ltd (CONCORDE) 60 days to propose amendments.

CONCORDE filed a request for leave to amend on 18 November 1992. CRONER subsequently filed comments in relation to the proposed amendments on 25 January 1993. The request for leave to amend was considered by an examiner, in light of the opponent's comments, and leave was granted and advertised on 11 March 1993.

CRONER filed a notice of opposition to the allowance of the amendments under subsection 104(4) of the Patents Act 1990 on 11 June 1993 and a statement of grounds and particulars on 13 September 1993.

CONCORDE filed a request for dismissal of the opposition on 13 October 1993 which was set down for hearing on 15 December 1993.

CRONER served evidence in support of the opposition on 13 December 1993.

Both parties appeared at the hearing. The applicant was represented by Mr John Walsh, Patent Attorney of Davies Collison Cave, Sydney. The opponent was represented by Mr Paul Kildea, Patent Attorney of P.F. Kildea acting on behalf of Phillips Ormonde & Fitzpatrick.

PRELIMINARY SUBMISSIONS

Mr Walsh for the applicant made the following preliminary submissions, in summary:

This is a unique case. Most if not all dismissal cases to date under the Patents Act 1990 have dealt with opponents who have not already had access to a…

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 Concorde Trading Pty Ltd v Croner Trading Pty Ltd

Details

AGLC: Concorde Trading Pty Ltd v Croner Trading Pty Ltd [1994] APO 31
Case: [1994] APO 31
Decision Date: 4 May 1994

CaseChat Overview and Summary

In the matter of Concorde Trading Pty Ltd v Croner Trading Pty Ltd, the primary issue before the court was whether the opposition by CRONER to the amendments proposed by CONCORDE could be dismissed. The court found that while there were some deficiencies in the particulars provided by CRONER, there were no grounds for dismissing the opposition. However, the court directed that certain particulars should not be relied upon in the opposition. The court found that some of the particulars provided by CRONER were directed to aspects of the claims that were prima facie the subject of amendment and were thus capable of giving rise to a valid cause of action. However, other particulars related to aspects of claims that were not affected by the amendment and were thus incapable of giving rise to a valid cause of action. The court found that it was not appropriate to undertake a detailed analysis of the particulars and the amended specification or to speculate as to the intentions of CRONER in determining an action for dismissal. The court also found that the opposition was not vexatious or an abuse of process, as the Patents Act 1990 made specific provision for the sequence of actions followed in this case. The court awarded costs in favour of CONCORDE, as a significant proportion of CRONER's particulars were prima facie incapable of providing support to the ground of opposition and should not be relied upon in the opposition.

Orders