Concrete Preservation Technologies v Vector Corrosion Technologies - [2013] APO 71

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Concrete Preservation Technologies v Vector Corrosion Technologies [2013] APO 71

Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patent Applicant:                   Vector Corrosion Technologies
Opponent:  Concrete Preservation Technologies
Delegate:  Dr SD Barker
Decision Date:  20 December 2013
Hearing Date:  Written Submissions completed on 3 October 2013
Catchwords:  PATENTS – opposition to amendments – amendments not allowable – costs awarded against applicant

Representation: Patent applicant: IP Gateway Patent and Trademark Attorneys Pty Ltd
Opponent: Baxter IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patent Applicant: Vector Corrosion Technologies
Date of Decision: 20 December 2013
DECISION
The opposition succeeds – the proposed amendment is not allowable.
Costs according to Schedule 8 awarded against Vector Corrosion Technologies.
REASONS FOR DECISION

AU 2005238278 is an Australian patent (the patent) accepted on 12 January 2010 and sealed on 27 May 2010. The patent is derived from PCT application PCT/GB2005/001651 and claims priority from UK patent application GB 0409521.2.
On 17 November 2011 IP Australia recorded an assignment of the patent in favour of Vector Corrosion Technologies Ltd (the patentee). On 18 November 2011 the patentee filed a request to amend the specification and a statement of proposed amendments (the amendments) which would replace the claim set as filed.
On 4 April 2012 Concrete Preservation Technologies Ltd (the opponent) filed a notice of opposition to the amendments. The opponent thereafter filed a Statement of Grounds and Particulars on 4 July 2012. The evidentiary stages were completed incorporating the following:
- Evidence in Support consisting of a statutory declaration by Gareth K Glass dated 2 October 2012;
- Evidence in Answer consisting of a statutory declaration by John S Tinnea dated 26 March 2013 with exhibit JT-1;
- Evidence in Reply consisting of a second statutory declaration by Gareth K Glass dated 31 May 2013 with exhibits [A1]-[A6].
The hearing occurred via written submissions. Each party filed submissions on 5 September 2013 and submissions in response on 3 October 2013.
The amendments
The amendments result in a change to the text of claim 14, the deletion of claim 25 and the addition of new independent claims 27 to 31. Claim 14 as accepted is set out below:
A method of cathodically protecting a metal section in an ionically conductive covering material, comprising:
providing a sacrificial anode;
generating a voltage between two connections of a power supply such that current can flow between the negative connection and the positive connection;
in a first protection step, electrically connecting one of the connections of the power supply to the metal section to be cathodically protected and electrically connecting the sacrificial anode in series with the other connection of the power supply such that the voltage generated by the power supply is added to the voltage generated between the sacrificial anode and the metal to produce a voltage greater than the galvanic voltage generated between the sacrificial anode and the metal section alone;
wherein the power supply is otherwise isolated…

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

AGLC: Concrete Preservation Technologies v Vector Corrosion Technologies [2013] APO 71
Case: [2013] APO 71
Decision Date: 20 December 2013

CaseChat Overview and Summary

Concrete Preservation Technologies Ltd opposed amendments to the patent specification of Vector Corrosion Technologies Ltd, in opposition to the amendments under section 102 of the Patents Act 1990 (Cth). The opposition was upheld and the amendments disallowed. The dispute centred on the introduction of new claims and the addition of certain features in the amended claims, particularly in relation to the addition of the definite article “the” before “current” in claims 14 and 27-31 and the inclusion of an activation step in claim 30. The delegate found that the inclusion of the word “the” before “current” in amended claims 14 and 27-31 meant that the claims would not in substance fall within the scope of the claims as filed, and that the subject matter claimed was not in substance disclosed in the specification as filed. In particular, the delegate found that the claims as amended were not limited to a power supply so isolated, such being the case they travelled beyond what was disclosed in the specification as filed. The inclusion of an activation step that occurs in the second step without having necessarily continued from the first step in amended claim 30 meant that the subject matter claimed was not in substance disclosed in the specification as filed, and that claim 30 was not fairly based on the matter described in the specification or fully described. Costs were awarded to the opponent.

Orders