CQMS Pty Ltd v Esco Corporation - [2018] APO 32

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v Esco Corporation [2018] APO 32

Patent Application: 2013200095

Title:Wear assembly

Patent Applicant:                   Esco Corporation
Opponent:  CQMS Pty Ltd
Delegate:  R Subbarayan
Decision Date:  17 May 2018
Hearing Date:  28 February 2018, in Melbourne

Catchwords:  PATENTS – section 104 opposition – whether failure to overcome adverse findings in s59 decision within time period set out in that decision leads to application being in a state of refusal – whether the amendments are for the purpose of clerical error – opposition is unsuccessful – costs awarded

Representation: Counsel for the applicant: Tom Cordiner SC
Patent attorney for the applicant: Wayne McMaster and
Rebecca Dutkowski of Minter Ellison
Patent attorney for the opponent: Fisher Adams Kelly Callinans

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013200095

Title:Wear assembly

Patent Applicant: Esco Corporation
Date of Decision: 17 May 2018
DECISION
The proposed amendment of 14 March 2017 is for the purpose of correcting a clerical error. I therefore direct that this amendment request be allowed and the amendment therein incorporated into the specification. I award costs according to Schedule 8 against the opponent CQMS Pty Ltd.
REASONS FOR DECISION
BACKGROUND

Patent application 2013200095 in the name of Esco Corporation (ESCO) was filed on 8 January 2013. A request for examination was filed on 22 March 2013. Following examination, the application was accepted and the notice of acceptance was advertised on 2 October 2014. The grant of a patent was opposed by two parties, namely CQMS Pty Ltd (CQMS) and Caterpillar Inc. (Caterpillar). Both oppositions were heard together on 9 August 2016 and the written decision of the delegate of the Commissioner was issued on 19 December 2016 (the s59 Decision). In the s59 Decision, the delegate found that claims 7 to 10 were not novel and allowed ESCO a period of two months from the date of the Decision to propose amendments to overcome this adverse finding.
On 7 February 2017, ESCO filed, under section 104 of the Patents Act 1990 (the Act), a request to amend the patent specification along with a statement of proposed amendments (Amendment #1). The Commissioner invited comments from both opponents before deciding whether the proposed amendments were allowable.
On 24 February 2017, CQMS filed their comments explaining why the proposed amendments were not allowable.
Caterpillar did not file any comments.
On 28 February 2017, ESCO had a telephone discussion with the Patent Opposition team of IP Australia (the Office) in which ESCO stated that on review of CQMS’s comments, it had come to their attention that there was a typographical error in the proposed amendments of Amendment #1 and that they wished to correct it. ESCO was requested by the Patent Opposition team not to immediately file any correction to Amendment #1, but to instead wait and file it in response to an adverse examination report from the Office.
The Office did not issue any adverse examination report, but…

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: [2018] APO 32
Decision Date: 17 May 2018

CaseChat Overview and Summary

The case involves CQMS Pty Ltd opposing a request by Esco Corporation to amend its patent application. The opposition was heard by the Delegate of the Commissioner of Patents, R Subbarayan, on 28 February 2018. The main issue was whether the proposed amendment by Esco Corporation was allowable under the relevant provisions of the Patents Act 1990. Specifically, the opposition centred on the nature of the amendment as either a clerical error or a substantive change that would render it not allowable under the Act.

Esco Corporation argued that the proposed amendment was intended to correct a clerical error in a previous amendment and was therefore allowable under the Act. CQMS Pty Ltd contended that the proposed amendment did not fall within the scope of the original claims and was therefore not allowable. The court had to determine whether the amendment was indeed a clerical error or a substantive change that would not be allowable. The court found that the amendment was made to correct a typographical error and therefore fell within the exception for clerical errors under the Act. The opposition was thus dismissed and costs were awarded to Esco Corporation.

Orders