Duoguard Australia Pt Ltd v Vector Corrosion Technologies Ltd
[2015] APO 29
•24 June 2015
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 disagreement between the parties as to the relevance of the earlier decision, and the appropriateness of some previous office decisions on dismissal. Consequently I will approach the subject from first principles."
Consideration of those principles led me to conclude that the Commissioner has the power to deal with a new opposition, and the previous decision does not give rise to an issue estoppel. The key question is whether there are reasonable prospects of success in the opposition.
"The Commissioner can dismiss an opposition if there are no reasonable prospects of success. In a situation where essentially the same claims have previously been the subject of an opposition, the question immediately arises as to why it is reasonable that there could be a different outcome. Factors that come to mind as to why it could be reasonable to expect a different outcome could be:
(i)different grounds of opposition
(ii)different particulars of opposition
(iii)substantial differences between the claims
(iv)different evidence that will be led
(v)clear deficiencies in the original decision"
It is worth bearing in mind what the delegate said in the Servier decision:
"This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established."
Application of the facts to the law
In the present case the particulars of the opposition are different, and the amendments to the specification are not identical to those considered in the previous amendment. Consequently, the earlier decision does not read directly onto the present claims. This suggests that dismissal is not appropriate. However, I have considered whether the earlier decision, in so far as it may contemplate the amendments that are now made, makes any suggestion or implication that the present amendment is allowable. If it does, there would be an implication that the same result would be expected in the present opposition (i.e. the opposition would be unsuccessful), and the opposition should be dismissed unless it is reasonable to believe that a different outcome might result.
The patentee's comments in their written submissions direct attention to the detail of the specification, and also the detail of my earlier decision. The comparison (at paragraphs 18 and 22) leads the patentee to the conclusion that the issues raised do not arise as a result of the amendment. To my mind, 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 (consistent with the guidance in the Servier decision).
It follows that I am not satisfied that it is appropriate to dismiss the opposition.
Costs
I see no circumstance that would justify departing from the normal outcome that costs should follow the event. I will award costs against the patentee.
Dr S.D. Barker
Delegate of the Commissioner of Patents
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