Crimsafe Security Solutions Pty Ltd v Wamlez Pty Ltd - [2023] APO 30

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Crimsafe Security Solutions Pty Ltd v Wamlez Pty Ltd [2023] APO 30

Patent Application: 2014200312

Title:Fastener Driver

Patent Applicant: Wamlez Pty Ltd

Opponent: Crimsafe Security Solutions Pty Ltd

Delegate: S.E. Howard

Decision Date: 19 May 2023

Hearing Date: 2 March 2023 via video conference

Catchwords: PATENTS – opposition under section 104 – amendments do not comply with s 102(1) – claims as proposed to be amended do not in substance fall within the scope of the claims before amendment – amendments do not comply with s 102(2)(a) – s 102(2)(b) – claims as proposed to be amended are clear and succinct – amendments are supported – s 40(3) – specification as proposed to be amended satisfies clear enough and complete enough disclosure requirements– s 40(2)(a) – r 5.23 documents not considered

Representation: Counsel for the applicant: Peter Creighton-Selvay
Patent attorney for the applicant: Ashley Dickson of Raven IP
Counsel for the opponent: Ben Fitzpatrick
Patent attorney for the opponent: Michael Finney of Bennett and Philp Lawyers

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2014200312

Title:Fastener Driver

Patent Applicant: Wamlez Pty Ltd

Date of Decision: 19 May 2023

DECISION

The opposition is successful. I refuse the amendments.

I award costs according to Schedule 8 against the Applicant, Wamlez Pty Ltd.

REASONS FOR DECISION

Background

This matter relates to patent application 2014200312 (‘the application’), filed in the name of Wamlez Pty Ltd (‘the Applicant’) on 17 January 2014 which claims, following an extension of time, an earliest priority date of 10 December 2012 from provisional application 2012905366.

Following two examination reports, the application was accepted on 27 July 2017 and advertised as such on 17 August 2017. The application was granted on 30 November 2017.
On 27 October 2020, Wynnes Patent and Trademark Attorneys Pty Ltd requested re-examination of the application. The application was subject to three adverse re-examination reports and one adverse voluntary amendment report before a non-adverse re-examination report was issued on 20 September 2021. Proposed amendments filed during the course of re-examination, including amendments filed on 11 January 2021, 17 February 2021, 19 May 2021 and 18 August 2021 were considered allowable and were advertised for opposition on 7 October 2021. It is important to note that all filed amendments included substitution of all the claim pages while the amendments filed on 19 May 2021 also included replacement of the description and drawings pages.
On 3 December 2021, Crimsafe Systems Solutions Pty Ltd (‘the Opponent’) filed a Notice of Opposition to the request to amend under section 104 of the Patents Act 1990 (‘the Act’). The Statement of Grounds and Particulars (‘SGP’) was filed on 22 December 2021. Evidence in Support (‘EIS’) was filed by 24 March 2022 and included a declaration by Rameshkumara Ramachandran (‘Ramachandran1’) dated 8 March 2022 with supporting Annexures A-C (hereinafter referred to as R1-A to R1-D, noting that there are two Annexure C).…

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: [2023] APO 30
Decision Date: 19 May 2023

CaseChat Overview and Summary

Crimsafe Security Solutions Pty Ltd opposed a patent application made by Wamlez Pty Ltd. The dispute arose in the Federal Court of Australia, where the opposition was heard and determined. The central issue before the Court was whether the proposed amendments to Wamlez's patent application complied with the requirements of sections 102 and 40 of the Patents Act 1990 (Cth).

The Court had to decide whether the proposed amendments to the patent claims met the criteria specified in section 102(1) and (2). Specifically, the Court examined whether the amendments did not comply with the requirement that they must not introduce new matter and that they must fall within the scope of the original claims. The Court also assessed whether the amended claims were clear and succinct. Additionally, the Court considered whether the proposed amendments to the specification satisfied the disclosure requirements under section 40(2)(a) and (3). The Court did not consider documents referenced in rule 5.23.

The Court found that the proposed amendments did not comply with section 102(1) of the Act as they introduced new matter. However, the Court held that the amendments were supported and did comply with section 102(2)(b) as the amended claims were clear and succinct. The Court also found that the proposed amendments to the specification met the disclosure requirements under section 40(2)(a) and (3). Consequently, the Court held that the opposition was well-founded and allowed it.

Orders