Eigen Technology Pty Ltd v CTA Australia Pty Ltd - [2023] APO 43

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Eigen Technology Pty Ltd v CTA Australia Pty Ltd [2023] APO 43
Patent:2008202373

Title:Tactile ground surface indicator

Patentee:CTA Australia Pty Ltd

Opponent:Eigen Technology Pty Ltd

Delegate:Dr N. R. Madsen – Deputy Commissioner of Patents

Decision Date: 4 August 2023

Hearing Date: Written submissions completed on 26 April 2023

Catchwords: PATENTS – opposition under section 104 – tactile ground surface indicator installation – allowability under subsection 102(1) considered – whether as a result of the amendments, the specification would claim matter not in substance disclosed in the specification as filed – claim scope – further consideration regarding claim scope and fair basis in context of grounds of re-examination recommended – amendment allowable – issues do not arise as a result of the amendment – no award of costs

Representation: Patent attorney for the patentee: Davies Collison Cave Pty Ltd
Patent attorney for the opponent: Churchill Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent:2008202373

Title:Tactile ground surface indicator

Patentee:CTA Australia Pty Ltd
Date of Decision: 4 August 2023
DECISION

As a result of the amendment requested on 11 November 2020, the specification does not claim matter not in substance disclosed in the specification as filed.
The opposition is unsuccessful, and I allow the amendment request of 11 November 2020.
I make no award of costs.
Reconsideration should be given to grounds of invalidity in the context of re-examination.
REASONS FOR DECISION
BACKGROUND

AU 2008202373 is an Australian patent (the patent) accepted on 13 July 2009 and granted on 19 November 2009 in the name of CTA Australia Pty Ltd (the patentee). The patent claims priority from provisional patent applications AU 2007903648 and AU 2007906297.
Since grant, the patent has been subject to several actions encompassing amendment, court action, and re-examination. The first amendments to the patent were allowed and advertised as such on 2 December 2010. In June of 2015 the Commissioner received a letter indicating that the patent was the subject of Federal Court proceedings, those Court proceedings being terminated later in 2015.
On 8 March 2017, the Commissioner received a request for re-examination from Roger Syn & Co. This instance of re-examination concluded on 4 July 2017 after three re-examination reports, without any proposed amendment. Further re-examination was instigated after a request received on 21 May 2018, this time by Churchill Attorneys on behalf of Eigen Technology Pty Ltd (the opponent). This concluded on 21 January 2019 after three re-examination reports, also without any proposed amendment. On 22 August 2019 the Commissioner received another request for re-examination, again by Churchill Attorneys on behalf of the opponent. In response to the re-examination report issued on 20 April 2020 the patentee filed amendments, and after a discussion with the Supervising Examiner responsible for re-examination of the patent, the patentee filed further amendments on 11 November 2020. A non-adverse re-examination report was issued on 20 November 2020, with the further amendments considered allowable by an examiner. Leave to amend was advertised on 7…

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: [2023] APO 43
Decision Date: 4 August 2023

CaseChat Overview and Summary

Eigen Technology Pty Ltd opposed an amendment to a patent held by CTA Australia Pty Ltd. The opposition was based on the contention that the amendment resulted in a claim to matter not in substance disclosed in the specification as filed, under subsection 102(1) of the Patents Act 1990. The invention related to a tactile ground surface indicator, with the amendment focusing on the substantial encasing of the stem by the casing prior to insertion into the ground. The key issue was whether the specification as filed disclosed the concept of "substantial encasement" of the projecting portion by the casing prior to insertion into a cavity.

The court considered the relevant law, including the test for fair basis under subsection 40(3) and the standard of proof required for oppositions to amendments. It found that the term "substantially" encompassed both complete and partial encasement, but the specification as filed only disclosed full lengthwise encasement or no encasement at all. The court held that the amendment did not result in a claim to matter not in substance disclosed in the specification as filed, as the issue of failure to be in-substance disclosed was already present in the claims prior to amendment. The court allowed the amendment, but recommended that reconsideration be given to claim construction and other substantive grounds in re-examination.

The court made no award of costs, considering the circumstances to be unusual, involving protracted re-examination proceedings and dismissal actions regarding the opposition to the present amendments.

Orders