Duoguard Australia Pt Ltd v Vector Corrosion Technologies Ltd - [2015] APO 29

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Duoguard Australia Pt Ltd v Vector Corrosion Technologies Ltd [2015] APO 29

Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patentee:  Vector Corrosion Technologies Ltd
Opponent:  Duoguard Australia Pt Ltd
Delegate:  Dr S.D. Barker
Decision Date:  24 June 2015
Hearing Date:  Matter decided on the basis of written submissions
Catchwords:  PATENTS – opposition to allowance of an amendment – request for dismissal of opposition – previous decision on earlier amendments – the need to construe the specification before and after amendment (and noting that the claims are quite complex) is a matter that is more appropriately dealt with in a hearing of the substantive matter, and not in a dismissal

Representation: Patent applicant: IP Gateway
Opponent:Callinans

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patent Applicant: Vector Corrosion Technologies Ltd
Date of Decision: 24 June 2015
DECISION
Request for dismissal of the opposition refused.
Costs according to Schedule 8 awarded against the patentee.
REASONS FOR DECISION

AU 2005238278 is an Australian patent (the patent) accepted on 12 January 2010 and sealed on 27 May 2010. The patent is derived from PCT application PCT/GB2005/001651 and claims priority from UK patent application GB 0409521.2.
On 17 November 2011 IP Australia recorded an assignment of the patent in favour of Vector Corrosion Technologies Ltd (the patentee). On 18 November 2011 the patentee filed a request to amend the specification and a statement of proposed amendments which would replace the claim set as filed. On 4 April 2012 Concrete Preservation Technologies Ltd filed a notice of opposition to the amendments. The opposition to the amendments was successful (see Concrete Preservation Technologies v Vector Corrosion Technologies [2013] APO 71).
On 14 January 2014 the patentee filed a further statement of proposed amendments. The amendments were similar to those filed previously. On 8 July 2014 Duoguard Australia Pty Ltd (the opponent) filed a notice of opposition to the amendments. The patentee filed a request for dismissal on 8 September 2014. Written submissions were filed on 1 October 2014 and 8 October 2014. Subsequently there was some confusion about the arrangements for deciding the matter, and the Commissioner wrote to the parties again on 24 April 2015 and 18 June 2015. The matter has been decided on the basis of the written submissions.
The Law
Dismissal of an opposition is provided for in regulation 5.17. The basic principle that governs dismissal of an opposition was set out in Les Laboratoires Servier v Apotex Pty Ltd [2008] APO 11 (the Servier decision): an opposition may be dismissed if it is considered to have no reasonable prospects of success.
In Memcor Australia Pty Ltd v Zenon Environmental Inc. [2008] APO 14 I considered a very similar factual situation. I said:
"The present case is unusual in that there is an earlier decision on the allowability of essentially the same amendment. The decision followed a hearing of the same parties on essentially the same grounds. There is…

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: [2015] APO 29
Decision Date: 24 June 2015

CaseChat Overview and Summary

Duoguard Australia Pty Ltd opposed an amendment to Australian Patent 2005238278 (the patent) by Vector Corrosion Technologies Ltd. The opposition was filed on 8 July 2014. The patentee filed a request for dismissal of the opposition on 8 September 2014. The matter was decided on the basis of written submissions. The Commissioner found that the request for dismissal was not appropriate, and costs were awarded against the patentee. The key issue was whether the opposition had reasonable prospects of success. The Commissioner concluded that the need to construe the specification before and after amendment was a matter more appropriately dealt with in a hearing of the substantive matter. The Commissioner found that the opposition had reasonable prospects of success.

The Commissioner considered whether dismissal was appropriate in light of an earlier decision on essentially the same amendment. The Commissioner noted that the particulars of the opposition were different, and the amendments to the specification were not identical to those considered in the previous amendment. The earlier decision did not read directly onto the present claims. However, the Commissioner considered whether the earlier decision, in so far as it may contemplate the amendments that are now made, made any suggestion or implication that the present amendment was allowable. The Commissioner concluded that the need to construe the specification before and after amendment (and noting that the claims are quite complex) was a matter that was more appropriately dealt with in a hearing of the substantive matter, and not in a dismissal.

The Commissioner considered the basic principle that governs dismissal of an opposition: an opposition may be dismissed if it is considered to have no reasonable prospects of success. The Commissioner considered factors that could make it reasonable to expect a different outcome, including different grounds of opposition, different particulars of opposition, substantial differences between the claims, different evidence that will be led, and clear deficiencies in the original decision. The Commissioner concluded that the opposition had reasonable prospects of success, and the request for dismissal was not appropriate. The Commissioner awarded costs against the patentee.

The Commissioner's decision was based on the written submissions and the relevant law. The Commissioner found that the need to construe the specification before and after amendment was a matter more appropriately dealt with in a hearing of the substantive matter. The Commissioner found that the opposition had reasonable prospects of success, and the request for dismissal was not appropriate. The Commissioner awarded costs against the patentee.

Orders