Duoguard Australia Pty Ltd v Vector Corrosion Technologies Ltd - [2015] APO 86

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Duoguard Australia Pty Ltd v Vector Corrosion Technologies Ltd [2015] APO 86

Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patent Applicant: Vector Corrosion Technologies Ltd

Opponent: Duoguard Australia Pty Ltd

Delegate: Dr S.D. Barker

Decision Date: 7 December 2015
Hearing Date: Written Submissions completed on 21 September 2015

Catchwords: PATENTS – opposition to amendments – amendments allowable – costs awarded against opponent

Representation: Patent applicant: IP Gateway Patent and Trade Mark Attorneys Pty Ltd
Opponent: Callinans

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2005238278

Title:Sacrificial Anode Assembly

Patent Applicant: Vector Corrosion Technologies Ltd

Date of Decision: 7 December 2015
DECISION
The opposition is unsuccessful – I allow the amendments.
I award costs according to Schedule 8 against Duoguard Australia.
REASONS FOR DECISION
Background

AU 2005238278 is an Australian patent (the patent) accepted on 12 January 2010 and granted 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 18 November 2011 Vector Corrosion Technologies Ltd (the patentee) filed a request to amend the specification and a statement of proposed amendments (the earlier amendments) which would replace the claim set as granted.
On 4 April 2012 Concrete Preservation Technologies Ltd filed a notice of opposition (the earlier opposition) to the earlier amendments.
On 20 December 2013 a decision (the earlier decision) issued in relation to the earlier opposition, being Concrete Preservation Technologies v Vector Corrosion Technologies [2013] APO 71. The earlier decision established that the earlier amendments were not allowable.
On 24 January 2014 the patentee filed a request to amend the specification and a statement of proposed amendments (the amendments) which would replace the claim set as granted.
On 8 July 2014 Duoguard Australia Pty Ltd (the opponent) filed a notice of opposition (the opposition) to the amendments. A statement of grounds and particulars (SGP) was filed by the opponent on 8 August 2014.
Evidence in support (EIS) was filed by the opponent on 9 October 2014. This comprised:
·a statutory declaration by Mr Jeffrey Pritchard (Pritchard), with supporting exhibits JP-1 to JP-3;
·a first statutory declaration by Mr Gareth Kevin Glass (Glass#1); and
·a first statutory declaration by Professor Nick Birbilis (Birbilis#1), with supporting exhibits NB-1 to NB-7.
Evidence in answer (EIA) was filed by the patentee on 15 December 2014. This comprised:
·a statutory declaration by Mr John S. Tinnea (Tinnea).
Evidence in reply (EIR) was filed by the opponent on 16 February 2015. This comprised:
·a second statutory declaration by Mr Gareth Kevin Glass (Glass#2), with supporting exhibits GG-1 to GG-10; and
·a second statutory declaration by Professor Nick Birbilis (Birbilis#2).
The opponent’s submissions (opponent’s submissions) were filed on 31 August 2015. The patentee’s submissions (patentee’s submissions) were filed on 14 September 2015. The…

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 86
Decision Date: 7 December 2015

CaseChat Overview and Summary

The applicant, Vector Corrosion Technologies Ltd, filed a request to amend the specification of Australian patent 2005238278, relating to a sacrificial anode assembly, by replacing the claim set as granted. The opponent, Duoguard Australia Pty Ltd, filed a notice of opposition to these amendments. The delegate of the Commissioner of Patents, Dr S.D. Barker, examined the amendments and the grounds of opposition, and concluded that the amendments were allowable. The delegate found that the amendments did not claim matter not in substance disclosed in the specification as filed, did not result in the claims not falling within the scope of the claims before amendment, and did comply with s40(2) or s40(3). The delegate therefore allowed the amendments and awarded costs against the opponent. The grounds of opposition related to the alleged inconsistency in the definition of "steel reinforcement" in the amended claims, the introduction of "passivate" in the first protection step, the introduction of two different treatments, and the removal of the reference to "assembly" in conjunction with other amendments. The delegate found that the amendments did not result in any ambiguity, were in substance disclosed in the specification as filed, and fell within the scope of the claims before amendment. The delegate concluded that the opposition failed on all grounds and allowed the amendments.

Orders