Daido Metal Co. Ltd v Gould Inc

In the Matter of the Patents Act 1952
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In the Matter of Patent Application No. 509526 in the Name of DAIDO METAL CO. LTD.
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In the Matter of Opposition thereto by GOULD INC.

FINAL DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        In an interim decision in this matter dated 7 November, 1984, Supervising Examiner Mr. P. Kilborn found that the complete specification failed to comply with section 40 and that claim 6 had been prior published. The applicant was allowed sixty days to request amendment of the complete specification.
        On 23 January, 1985, the applicant lodged a section 77 request to amend the complete specification. Subsequent to proceedings under section 79, the request to amend was advertised on 4 July, 1985. The request was allowed on 24 October, 1985 and the amendments were incorporated into the complete specification.
        I am satisfied that the amendments remove the basis for the earlier finding that the complete specification did not comply with section 40 and that claim 6 was prior published.
        I am of the opinion that there is no lawful ground for objection to the application or complete specification and, therefore, I direct that the application and amended complete specification proceed to sealing, subject to any appeal.

Costs in the matter of the section 59 opposition are as determined at the time of and as set out in the interim decision.

(J.L. ROVETA)

CaseChat Overview and Summary

Daido Metal Co. Ltd sought to have a patent granted for an invention related to a metal working process, but faced an opposition from Gould Inc. The dispute was examined by a Supervising Examiner of Patents, who initially found that the patent application did not comply with the relevant statutory requirements and that one of the claims had been previously disclosed. The examiner allowed the applicant a period to amend the application and, after further proceedings, the applicant lodged an amended version. The Supervising Examiner concluded that the amendments satisfactorily addressed the initial objections and that there were no grounds for further objection to the patent application.

The legal issues that the Supervising Examiner had to decide included whether the patent application complied with the statutory requirements of the Patents Act and whether any of the claims had been previously published. The examiner also needed to determine if the amendments proposed by the applicant adequately resolved the initial objections raised in the interim decision.

In reaching the decision, the Supervising Examiner considered the initial objections raised in the interim decision and the amendments proposed by the applicant. The examiner found that the amendments were sufficient to address the compliance issues and that there was no longer any basis for the prior objections. The examiner concluded that there were no lawful grounds for objecting to the patent application and directed that the application proceed to sealing, subject to any appeal. The costs associated with the opposition were to be determined as per the interim decision.

The Supervising Examiner's final orders included directing that the patent application and the amended complete specification proceed to sealing. The decision also noted that the costs associated with the opposition would be as determined in the interim decision, and that the decision was subject to any appeal that might be lodged.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established