CQMS Pty Ltd v Sandvik Intellectual Property AB - [2025] APO 1

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v Sandvik Intellectual Property AB [2025] APO 1
Patent Application: 2016430503

Title:Attachment status monitoring of ground engaging tools (GET) at heavy machinery

Patent Applicant: Sandvik Intellectual Property AB

Opponent:CQMS Pty Ltd

Delegate:Pradnya Satarkar

Decision Date: 28 January 2025

Hearing Date: 29 October 2024, via videoconference

Catchwords: PATENTS - opposition to the grant of the patent under s59 – construction – inventive step – utility – support – clear enough and complete enough disclosure – best method known to the applicant – opposition successful on the ground of inventive step – costs awarded – applicant given opportunity to amend

Representation: Counsel for the applicant: Mr Marcus Fleming
Patent attorney for the applicant: Mr Chris Schlicht and Mr Peter Wassouf of Phillips Ormonde Fitzpatrick

Counsel for the opponent: Mr Peter Creighton-Selvay
Patent attorney for the opponent: Dr Andrew Scott of James & Wells

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2016430503

Title:Attachment status monitoring of ground engaging tools (GET) at heavy machinery

Patent Applicant: Sandvik Intellectual Property AB
Date of Decision: 28 January 2025

DECISION
The Opposition is successful. Claims 1-17 and 20 do not involve an inventive step.
I allow the Applicant two (2) months from the date of this decision to propose amendments to
overcome the lack of inventive step.
I award costs according to Schedule 8 against the Applicant, Sandvik Intellectual Property AB.

REASONS FOR DECISION
Background

Patent application 2016430503 (the application) was filed in the name of Sandvik Intellectual Property AB (the Applicant) on 25 November 2016 as PCT application no. PCT/EP2016/078841 and entered the Australian National Phase on 15 May 2019. The application has an earliest priority date of 25 November 2016.
Following examination, the application was advertised accepted on 02 February 2023. CQMS Pty Ltd (the Opponent) filed a Notice of Opposition under section 59 of the Patents Act1990 (the Act) on 02 May 2023.
The statement of grounds and particulars (SG&P) was filed on 02 August 2023. Evidence in Support (EIS) was filed on 02 November 2023. Evidence in Answer (EIA) was filed on 02 February 2024. Evidence in Reply (EIR) was filed on 26 March 2024.
The Opponent filed a written summary of submissions (the Opponent’s Written Submissions) on 15 October 2024. The Applicant filed their summary of submissions (the Applicant’s Written Submissions) on 22 October 2024.
Grounds of opposition
The SG&P identified the following grounds of opposition:
·Lack of novelty
·Lack of inventive step
·Lack of clarity
·Lack of best method
·Lack of support
·Lack of sufficiency
·Lack of manner of manufacture
·Lack of utility
At the hearing, the grounds of novelty, clarity and manner of manufacture were not pressed. The ground of best method was raised in a manner which did not reflect the particularisation in the SG&P. This ground of lack of best method in the particular form was first raised in the Opponent’s Written Submissions. At the…

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: [2025] APO 1
Decision Date: 28 January 2025

CaseChat Overview and Summary

CQMS Pty Ltd (the Opponent) opposed the grant of a patent to Sandvik Intellectual Property AB (the Applicant) for its invention titled ‘Attachment status monitoring of ground engaging tools (GET) at heavy machinery’. The Applicant filed a patent application on 15 May 2019. The Opposition was heard on 29 October 2024. The Decision was handed down on 28 January 2025. The Decision was that the Opposition was successful on the ground of lack of inventive step. The Opposition failed on all other grounds. The Applicant was given two months from the date of the Decision to propose amendments to overcome the deficiencies identified in this Decision. Costs were awarded to the Opponent.

The Opponent submitted that the patent application lacked novelty, inventive step, clarity, best method, support, sufficiency and utility. At the hearing, the grounds of novelty, clarity and manner of manufacture were not pressed. The ground of best method was raised in a manner which did not reflect the particularisation in the Statement of Grounds and Particulars (SG&P). At the hearing, I mentioned to the parties that if I considered this ground relevant, I would write to parties and seek their views on the ground. I did not consider this ground relevant in this case.

The Opposition was successful on the ground of lack of inventive step. Claims 1-17 and 20 did not involve an inventive step in light of US 2016/0237657 A1 (D7) combined with the common general knowledge (CGK) at the priority date. Claims 18 and 19 were found to be inventive over D7.

The Opposition failed on all other grounds. The specification was found to be clear enough and complete enough for the skilled person to perform the invention across the scope of the claims. The specification was found to provide sufficient information to enable the skilled person to perform the invention across the scope of the claims without undue burden or the need for further invention. The claims were found to be supported by matter disclosed in the specification. The specification was found to comply with the need to supply the best method as per s 40(2)(aa). The claims were found to have utility.

Orders