Dorel Australia Pty Ltd v Britax Childcare Pty Ltd - [2016] APO 54

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Dorel Australia Pty Ltd v Britax Childcare Pty Ltd [2016] APO 54

Patent Application: 2010224308

Title:Tether strap

Patent Applicant:                   Britax Childcare Pty Ltd
Opponent:  Dorel Australia Pty Ltd
Delegate:  Dr V. Z. Kolev
Decision Date:  17 August 2016
Hearing Date:  25 May 2016, in Melbourne

Catchwords: PATENTS – opposition to the grant of a patent – inventive step – interpretation of “when used for” – whether tethering modifications for a child restraint system in a vehicle obvious – lack of inventive step not established – opposition fails on all grounds – costs awarded

Representation: Patent attorney for the applicant: Dr Anthony Lee of Madderns Patent & Trade Mark Attorneys
Patent attorney for the opponent: Mr Greg Noonan and Mr Jason Manakis of Freehills Patent Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010224308

Title:Tether strap

Patent Applicant: Britax Childcare Pty Ltd
Date of Decision: 17 August 2016
DECISION
Lack of inventive step is not established. Opposition is unsuccessful on all grounds. Subject to appeal, I direct that the patent application proceeds to grant. Costs are awarded against Dorel Australia Pty Ltd.
REASONS FOR DECISION
Background

The matter relates to patent application 2010224308 in the name of Britax Childcare Pty Ltd (the Applicant). The application was advertised as accepted on 13 November 2014. A notice of opposition was filed by Dorel Australia Pty Ltd (the Opponent) on 13 February 2015. A statement of grounds and particulars (SGP) was filed on 13 May 2015.
The evidence in support was completed on 13 August 2015. Evidence in answer was not filed.
The Opponent’s outline of submission for hearing (Opponent’s Summary) was filed on 19 April 2016. The outline of Applicant’s submissions (Applicant’s Summary) was filed on 27 April 2016.
Applicable Law and Onus
Throughout this decision, unless explicitly stated otherwise, any reference to an Act or a section, subsection, etc. of an Act refers to the Patents Act 1990 (the Act), and any reference to Regulations or a specific regulation refers to the Patents Regulations 1991 (the Regulations).
On 15 April 2013, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced which resulted in significant amendments to the Act and Regulations affecting, inter alia, the standard of proof required for an opposition to succeed. However, for patent applications having a request for examination filed before the commencement date of 15 April 2013, the standard of proof remains the one that was in force prior to that commencement date. According to this standard of proof, it must be established that it is practically certain (or, in other words, the Commissioner should be clearly satisfied) that the patent if granted would be invalid (Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742, at [17]; Commissioner of Patents v Sherman [2008] FCAFC 182, at [18]; F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, at [66-67]).
The request for examination with respect to the opposed application was filed on 21 January 2013, therefore the standard of proof mentioned above applies. In addition, the filing date of the request for examination being before 15 April 2013 also means that the application was examined under the Act and Regulations as in force before the amended provisions of the Raising the Bar Act and the same are also applicable to the present opposition proceedings.
It is well settled that the Opponent has the onus of establishing the facts supporting the grounds of opposition.
Grounds of Opposition and Evidence
The sole ground of opposition mentioned in the SGP is lack of inventive step in light of the common general knowledge considered separately or together with any one or more of documents D1-D7. However it is important to note that none of documents D1-D7 was later filed in evidence. During the hearing, the Opponent suggested that document D1 could be introduced in the opposition proceedings as I will discuss later in this decision.
The evidence on file consists of the evidence in support as follows:
·A declaration of Ms Kim Tat dated 12 August 2015 (Tat) with Exhibits KT-1 and KT-2;
·A declaration of Mr Ali Akbarian dated 06 August 2015 (Akbarian-1) with Exhibit AA-1;
·A declaration of Mr Ali Akbarian dated 12 August 2015 (Akbarian-2) with Exhibit AA-2.
Ms Kim Tat is a Car Seat Product Manager employed by the Opponent (Tat at [2]). As stated by the Opponent “[h]er declaration puts forward information regarding the Australian/New Zealand Standard (AUNZS 1754) for child restraints in a vehicle, and how the Standard is developed” (Opponent’s Summary at 1.5). The evidence relied upon by the Opponent for establishing lack of inventive step is Akbarian-1 and Akbarian-2 with the accompanying exhibits.
The Specification
The specification states that “[t]he present invention relates to means for improving securement of child restraint systems for vehicles, and particularly those child restraint systems comprising a base and an infant carrier which is removably securable to the base” (page 2, lines 2-4).
It is further explained that “[s]ome child restraint systems comprise a base and an infant carrier which is removably securable to the base, and which may, along with a stroller, form part of a ‘travel system’. The base is positioned upon a rear vehicle seat and secured to the vehicle by means of a vehicle seat belt, for example a lap/sash belt, and a tether strap then extends from the infant carrier to a vehicle anchorage point on a shelf behind the rear seat” (page 2, lines 13-17).
The improved securement means of the instant invention tethers both the base and the infant carrier to the vehicle anchorage point. Specific design configurations of the securement means are described in six embodiments with reference to Figures 1 to 16.
The specification ends with 15 claims. Claims 1 and 15 are independent and reproduced below:
“1. A securement means when used for securing a child restraint system in a vehicle, the child restraint system comprising a base and an infant carrier which is removably securable to the base, and where the securement means comprises a first tether strap extending from the vehicle anchor point to the infant carrier and releasably secured to the infant carrier so that the infant carrier is separable from both the tether strap and the base, and a tether element extending from the tether strap to the base of the child restraint system.
15. A tethering means when used for a child restraint system for use in a motor vehicle, wherein the child restraint system comprises a base and an infant carrier which is removably securable to the base, the tethering means comprising a first strap for releasably tethering the infant carrier with respect to a single anchorage point in the motor vehicle, and a tether extension element tethering the base of the child restraint system to the first strap so as to tether the base to the same vehicle anchor point.”
Claim Construction
An issue of contention is the interpretation of the expression “when used for” as in claims 1 and 15. Regarding claims 1-14, the Opponent emphasises that:
“It is important to observe that the claimed invention is not directed to a child restraint system per se adapted to be placed in a vehicle, nor is it directed to a child restraint system as such. Furthermore, the claimed invention is not directed to a tether strap, securement means or tethering means as such. The invention of each of claims 1-14 is directed to a "securement means":
" .... when used for securing a child restraint system in a vehicle ..... "
The child restraint system is parenthetically described as "comprising a base and an infant carrier which is removably securable to the base", i.e. it is a Type A child restraint system or capsule system. Claims 1-14 are therefore directed to the described securement means in combination with a Type A child restraint system actually in position in a motor vehicle, with or without a child in situ.” (Opponent’s Summary at 6.1)
Similarly, regarding claim 15, the Opponent notes:
“Claim 15 is slightly different in that it is directed to a tethering means:
" .... when used for a child restraint system for use in a motor vehicle .... "
There are other differences in the wording of claim 15 vis-à-vis claim 1 but it is clear that the tethering means is in situ in combination with a Type A child restraint system” (Opponent’s Summary at 6.2).
At the hearing, the Opponent clarified their submission that the expression “when used” coupled with the tenses of the verbs and the structure of the claims makes it clear that the claims are directed to the system in situ, i.e. the base positioned on the vehicle back seat, the infant capsule attached to the base, and the securement/tethering means attached to the infant capsule, the base and the vehicle anchorage point.
I disagree. Although the expression “when used for” has the significant effect of limiting the scope of the claims to the specific use of the securement/tethering means for the particular application as defined in the respective claims, this does not necessarily translate into the claims being strictly limited to a securement/tethering means only when it is in its fully attached in situ configuration.
Regarding the tenses of the verbs used in the claims as noted by the Opponent, I consider that the significance of the verbs is in defining the features of the securement/tethering means and the way it is used. It will be clear for the skilled addressee that, during its operation, the securement/tethering means will be periodically attached and detached, hence although the tenses of the verbs may reflect the in-use attached configuration, in the context of the claims, I do not consider this fact as a limitation of the scope to this configuration only.
With respect to claims 1-14, if I were to adopt the Opponent’s interpretation, it would mean that the securement means is “used for securing a child restraint system in a vehicle” only when it is fully attached in situ in the vehicle (when it is detached, technically, it is not securing anything). I consider this a very narrow interpretation of the expression “when used for securing a child restraint system in a vehicle”. Fair reading of the claims with a particular reference to the word “for”, which somewhat points towards intention and purpose, suggests a broader interpretation. The securement means as defined is a design feature having the purpose or use of securing the child restraint system. Regardless of whether it is fully attached or not, I consider that it is still used for that purpose.
The situation is even clearer regarding claim 15, which uses the expression “[a] tethering means when used for a child restraint system for use in a motor vehicle”. The child restraint system must be suitable for use in a motor vehicle, and the tethering means will be used for the child restraint system regardless of whether it is fully attached in situ or not.
In summary, I consider that the claims are neither directed to the defined securement/tethering means per se, nor to these means only when fully attached in situ. Rather, the claims are directed to the specific use of the securement/tethering means having the features as defined. During this specific use, the securement/tethering means will, at some point in time, be in a fully attached configuration, however at a different point in time, it will be in a partially detached configuration so as to remove or replace the infant capsule (see Figures 6a, 6b, 10, and 11 of the opposed application reproduced above for reference). I consider both of these configurations within the scope of the claims.
Inventive Step under Sections 18(1)(b)(ii), 7(2), and 7(3)
The test for inventive step was developed in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.” (at [45])
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202; 81 ALJR 1070, is was stated:
“In Alphapharm, this Court reiterated that "obvious" means "very plain", as stated by the English Court of Appeal in General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd. The majority in Alphapharm also confirmed that the question of whether an invention is obvious is a question of fact, that is, it is what was once a "jury question". Broadly speaking, the question is not a question of what is obvious to a court. As well as being a question of fact, the question of determining whether a patent involves an inventive step is also "one of degree and often it is by no means easy", because ingenuity is relative, depending as it does on relevant states of common general knowledge…
Further, as recognised in Beecham Group Ltd's (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always "is the step taken over the prior art an 'obvious step' or 'an inventive step'"? An inventive step is often an issue "borne out by the evidence of the experts". There is no distinction between obviousness and a lack of inventive step. A "scintilla of invention" remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be "some difficulty overcome, some barrier crossed". This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which "any fool" could devise. It also accords with the requirement in the United States that for an invention to be "non-obvious" it must be "beyond the skill of the calling".” (at [51-52], emphasis added, references removed)
Relevantly to this opposition, it is important to emphasise that obviousness is a question of fact that is to be established by evidence, and that the magnitude of technical or design differences between the prior art and the claimed invention (i.e. the “size” of the step) is not determinative of obviousness since a “scintilla of invention” is sufficient.
The problem
In formulating the problem as per Wellcome Foundation as quoted above, I will first consider what the specification states as the problem being addressed, however I will also consider whether the invention as claimed provides a solution to this problem. If it does not, then what the specification states as the problem is not, in fact, the problem actually solved by the claimed invention and I must re-formulate the problem accordingly.
As stated in the description, the object of the invention (which can also be understood as the problem being solved) is “to improve the safety of child restraint systems of the above described type, without substantially increasing the weight of the infant carrier or over complicating the process of attaching the infant carrier to and removing it from the base” (page 2, lines 19-21). Here, I consider that “child restraint systems of the above described type” refers to the child restraint systems described on page 2, lines 13-17 as quoted at paragraph [12] of this decision.
Next, I must answer the question of whether the invention as claimed provides a solution to this problem. This issue is strongly contested by the parties. Mr Akbarian states:
“As I mentioned in my First Declaration at paragraph 21, when the tether strap of the travel capsule was correctly attached I did not encounter any issues with safety. To state this in a different way, it is ultimately the responsibility of the driver of the vehicle to ensure that child restraint systems are correctly fitted and secured within the vehicle in accordance with the manufacturer's instructions. This is equivalent to ensuring that all occupants of the vehicle are wearing a seatbelt. Fitting the child restraint system in accordance with the manufacturer's instructions is what ensures the safety of the child restraint system.
The additional strap i.e. tether element, tether extension element, of the Patent Application does not increase the safely of the child restraint. Based on my experience the inclusion of the additional strap is simply making use of the tether strap more convenient. As mentioned above, it is driver responsibility to ensure the child restraint is correctly fitted in accordance with manufacturer instructions – this is regardless of whether there is an additional strap or not. If it is correctly fitted there is no safely issue.
I consider that the inclusion of the additional strap would have little or no effect on safety in the event of a vehicle accident...” (Akbarian-2 at [12-14], emphasis added)
And further:
“I note that page 8 lines 24-27 of the Patent Application states that an advantage of the embodiments shown in Figures 15 and 16 is said to be that the retention of the tether strap (602) to the base serves as a reminder to reconnect the tether strap to the infant carrier. This is what I described in my First Declaration at paragraph 20. This is no more than a visual reminder for the fitter of the child restraint to correctly secure the child restraint. There is no improvement to the safety of the child restraint - it must still be fitted in accordance with the manufacturer's instructions.
…As mentioned in paragraph 14, there is no additional degree of securement, particularly in the event of a vehicle accident. I consider that the additional strap has no relevance to safety.” (Akbarian-2 at [16-17], emphasis added)
I note that when analysing the relevance to safety, Mr Akbarian appears to focus on the safety from the point of view of reducing the effects of the impact (e.g. in a vehicle accident) on the child, given the child restraint system is fitted properly in the vehicle according to the manufacturer’s instructions. While this is a very important safety aspect, I cannot ignore the fact that safety during an accident is also affected by whether the child restraint system is properly installed. I consider that any variation to the design of the child restraint system that reduces the likelihood of improper installation will improve the safety of the child restraint system as it will reduce the probability or the severity of any possible injuries in an accident.
The statement in the description at page 8 lines 24-27, commented on by Mr Akbarian above, reads:
“An advantage of the embodiments of Figures 15 and 16 is the retention of the tether strap 602 to the base 2 of the infant restraint. This serves as reminder to reconnect the tether strap 602 to the infant carrier 4, and so it reduces the likelihood that the tether strap will be forgotten, such by being left on the parcel shelf or behind the seat of a hatchback or wagon.”
A secondary issue of contention emerged regarding the applicability of this statement to other embodiments of the invention. The Applicant asserted that despite the fact that the statement explicitly mentions only the embodiments of Figures 15 and 16 (reproduced below for reference), the benefit of the retention of the tether strap to the base is not limited only to these embodiments, but applies to all other embodiments. The Opponent disagreed, arguing that the tether strap is not wholly retained to the base in the majority of other embodiments, hence the above quoted part of the specification does not relate to a generic feature of the invention.
Firstly, I note that Mr Akbarian’s observation “[b]ased on my experience the inclusion of the additional strap is simply making use of the tether strap more convenient” (Akbarian-2 at [13] as quoted above) is not limited only to the embodiments of Figures 15 and 16, but refers generally to the claimed invention. Secondly, the only difference I can see between the embodiments as illustrated on Figures 15 and 16 (where the tether element 504/604 appears attached to the loop portion 502a/602a of the tether strap) and the embodiment of e.g. Figure 1 as reproduced for comparison below (where the tether element 104 is also attached to the loop portion 102a of the tether strap), is the point at which the tether strap (or its loop portion) is attached to the base – the rear of the base for Figures 15 and 16 and the front of the base for Figure 1. It is possible that the embodiments of Figures 15 and 16 provide a better reminder in comparison with the embodiment of Figure 1, however this does not mean that the configuration of Figure 1 will not serve as a reminder. On the balance of probabilities, I consider that the improved convenience in operation and reduced likelihood of forgetting to reattach the tether strap is applicable to the invention as claimed and not only to the embodiments of Figures 15 and 16.

In addition, as already mentioned, the Opponent argues that the claims are directed to the child restraint system in situ, i.e. the base positioned on the vehicle back seat (secured by the seatbelt), the infant capsule attached to the base, and the securement/tethering means attached to the infant capsule, the base and the vehicle anchorage point. Based on this interpretation, the Opponent argues that whatever benefits might be ascribed to the system when it is separated or detached (e.g. convenience of use) are of no relevance for the system as claimed, because the in situ installed and fully attached system does not improve the safety (following Akbarian-2). In other words, the benefits of convenience of use and higher likelihood of proper installation do not apply to the already properly installed system as claimed.
Following my construction of the claims as explained earlier, I cannot agree with the Opponent. Based on the above discussion, I conclude that the invention as claimed improves the safety and thus provides a solution to the problem as stated in the description.
Therefore I can formulate the problem as to improve the safety of child restraint systems of the type having a base and an infant carrier which is removably securable to the base, without substantially increasing the weight of the infant carrier or over complicating the process of attaching the infant carrier to and removing it from the base.
The person skilled in the art and the common general knowledge
In view of the above problem, I need to consider the legal construct of the hypothetical person skilled in the art.
The Opponent submits:
“The notional persons skilled in the relevant art "are those likely to have a practical interest in the subject matter of the invention" (Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) FCA 980, at [70] and [71]) or "those with practical knowledge and experience of the kind of work in which the invention is intended to be used" (Apotex Pty Ltd v AstraZeneca AB (No. 4) (2013) FCA 162). As has been made clear in the cases, these terms may apply to a range of persons including those responsible for designing and manufacturing products, and users of products who may be expected to be aware of both problems with and what works well with existing technology.” (Opponent’s Summary at 5.1, emphasis in the original)
With respect to their main Expert, the Opponent continues:
“Ali Akbarian is a qualified engineer who has been working full time since 2004 with Mobility Engineering and prior to that informally and then part time since 1997. As set out in paragraphs 8-11 of his first declaration, Ali Akbarian has extensive experience in relation to child restraints for motor vehicles, including correct fitting, training, certification, auditing and evaluation. He is also consulted by Australian child restraint manufacturers for advice on child restraints either in the market or in development, as elaborated on in paragraph 11 of his declaration.” (Opponent’s Summary at 5.2)
The Applicant submits:
“Mr Akbarian appears not to have been involved in any design task in relation to child restraints but instead appears to have had experience confined to fitting a range of different types of child restraint to vehicles that has been gained from his training, certification and auditing activities. As such, in the Applicant’s submission, the Commissioner cannot be satisfied that any conclusions drawn by Mr Akbarian are representative of the skilled addressee.” (Applicant’s Summary at [56])
During the hearing, the Opponent accepted that Mr Akbarian is not a designer, but nonetheless, in the Opponent’s submissions, he is qualified to give evidence on what constitutes the common general knowledge and on safety issues.
Without conclusively deciding the issue, I am prepared to assume that Mr Akbarian is qualified to give evidence on the types of child restraint systems forming part of the common general knowledge as well as on safety standard compliance, proper installation and convenience of use of these systems. Similarly, I am prepared to assume that both the “traditional” and “travel” systems as described in Akbarian-1 were part of the common general knowledge in Australia at the relevant date. As it will become evident later in this decision, this assumption will not affect the outcome of the opposition.
Inventive step in light of the common general knowledge
The Opponent states:
“The invention as claimed in claims 1 and 15 is nothing more than the combination of tethering both the base and the child carrier to the anchor point, in situ in the vehicle. It is the tethering arrangement of both of the commonly known forms of Type A child restraint systems before the priority date, in which the tether was respectively attached to the base and to the infant carrier. There is no claimed interactive feature, no co-operative relationship. All that can be said is that, whereas in the prior two systems either the infant carrier or the base was directly tethered to the anchor point, now both are. This modification, described as such in the specification of the opposed application at page 8 line 36 to page 9 line 2, is a trite and manifestly obvious modification relative to the common general knowledge in the art of child restraint systems.” (Opponent’s Summary at 9.1, emphasis in the original)
I do not consider that the evidence on file supports this statement. When, before sighting the application under opposition, Mr Akbarian was asked how he would improve the safety of capsule systems existing at the relevant date, he replied:
“I don't consider there was any need for safety improvements as the capsule systems on the market complied with the relevant Australian Standards and passed all the safety testing and evaluation including my own personal trials prior to including them into training and audit material.” (Akbarian-1 at [23])
Again I note that Mr Akbarian appears to be focussing on safety improvements from the point of view of compliance with the relevant standards and safety testing of properly installed systems. Mr Akbarian’s general conclusion about the application under opposition is summarised as:
“My overall impression is that the applicant of the Patent Application is trying to obtain a patent for a small variation on what has been done before.” (Akbarian-2 at [18], emphasis added)
Given Mr Akbarian’s focus on particular safety aspects and hence conclusion that “the additional strap has no relevance to safety” (Akbarian-2 at [17]), I consider that he is using the word “small” in its meaning of “insignificant”. In any case, I have no reasons to assume that Mr Akbarian uses the word “small” as equivalent to “obvious”.
It is important to note that despite his focus on particular safety aspects, Mr Akbarian recognised the potential safety problem with the possibility for improper installation:
“In my experience in training child restraint fitters, and in testing and evaluating the ease of use of child restraints, I found the biggest problem with the tether arrangement described in paragraphs 18 and 19 was that people would simply forget to place the tether strap around the capsule after placing the capsule onto the base or reconnect the clip to the top tether in the case of the "traditional capsule". There was also the possibility of the tether strap being lost, particularly if it was disconnected from the anchor point, for example moving the capsule system between cars, or when reselling the capsule system. By far though, the most significant problem was that users and fitters would forget to put the top tether in place around and attached to the capsule.” (Akbarian-1 at [20], emphasis added).
Furthermore, Mr Akbarian contemplated a possible way of solving this problem:
“During my time in training people how to correctly fit and use the travel capsule system I gave some thought to the problems I mentioned in paragraph 20 and I did consider that it would be good to have the tether strap permanently attached to the capsule simply so that it wasn't forgotten. However I considered that having the tether strap permanently attached to the capsule would be inconvenient as parents would then have to carry the tether strap and the capsule. It would also be inconvenient to engage/disengage the top tether from the vehicle anchor point each time the capsule was moved.” (Akbarian-1 at [22], emphasis added)
Importantly, I note that the solution considered by Mr Akbarian is not the same as the solution defined by the instant claims. During the hearing, the Opponent submitted, in essence, that the notional person skilled in the art, being a designer, would consider the solution of the instant claims obvious as it would be a plain alternative. In the absence of any evidence, I cannot accept this submission.
While I agree with the Opponent that different tests for obviousness could be applied, from which follows that the test for inventive step quoted above is not the only one applicable, I am not satisfied that the Opponent has presented an evidence based analysis demonstrating a lack of inventive step in light of the common general knowledge.
Consulting document D1 for the purposes of deciding the opposition
In the Opponent’s Summary, documents D1 and D7 were relied upon with respect to claims 2-7 (Opponent’s Summary at 1.3 and 10.2), however as already mentioned, none of these documents was filed in evidence. During the hearing, the Opponent suggested that I consider the information contained only in document D1.
Document D1 (Steelcraft Infant Carrier INSTRUCTION MANUAL Series 60/A/2004 published in 2008 as ©2008 Copyright Britax Childcare Pty. Ltd. Australia) was listed in and submitted together with the statement of ground and particulars. It does not form part of the evidence in support. Since the notice of opposition was filed on 13 February 2015 (i.e. after 15 April 2013) the amended provisions of the Raising the Bar Act apply with respect to the evidence. This means that document D1 can only be introduced into this opposition under regulation 5.23 as quoted below:
“5.23 Commissioner may consult documents
(1) For the purposes of deciding an opposition, the Commissioner may consult a document that:
  (a) is relevant to the opposition; and
  (b) has not been filed under this Chapter; and
  (c) is available in the Patent Office.
(2) If the Commissioner proposes to rely on the document, the Commissioner must give the parties:
  (a) notice of the Commissioner's intention to do so; and
  (b) a copy of, or access to, the document; and
  (c) an opportunity to give evidence or make representations about the document.”
The issue of consulting a document for the purposes of deciding an opposition was considered by a Delegate of the Commissioner in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16. After interpreting the discretionary powers under regulation 5.23 in light of the Explanatory Statement and the context of the Act and the Regulations, the Delegate concluded at [24-25] that:
“…a decision under regulation 5.23 must have regard to the nature of the information [contained in the document] and whether the information is likely, if not certain, to change the outcome of the opposition in a significant way.
If the new information is not likely to change the outcome of the opposition in a significant way, there is little advantage gained by bringing it into the opposition….”
Document D1 is a manual describing the use of a child restraint system of the type where the securement/tethering means is attached only to the infant carrier and not to the base. I note that this, in substance, is a specific example of the “travel” system described in Akbarian-1 which, for the purpose of obviousness determination, I assumed to be part of the common general knowledge.
For these reasons, I do not consider that the information contained in document D1 has the potential to change the outcome of this opposition. For the purpose of deciding the opposition I will not invoke regulation 5.23 with respect to document D1 and will not consider this document.
Inventive step summary
As I have already stated, I am not satisfied that the evidence on file presented by the Opponent supports finding of lack of inventive step in light of the common general knowledge. Furthermore, the evidence on file does not include any additional document (e.g. D1-D7) that the Opponent considers as information mentioned in subsection 7(3). Therefore, based on the evidence on file, I am not satisfied that the invention defined in any one of claims 1-15 does not involve an inventive step.
Conclusion and Costs
I have not established that the invention defined in any one of claims 1-15 does not involve an inventive step. Since lack of inventive step is the only ground of opposition, the opposition is unsuccessful on all grounds.
It is a normal practice that costs should follow the event and the parties’ submissions generally reflected this practice. I have found the opposition unsuccessful on all grounds and I can see no reason to depart from the normal practice. I award any costs according to Schedule 8 of the Patents Regulations 1991 against the Opponent.
Dr V. Z. Kolev
Delegate of the Commissioner of Patents