Eigen Technology Pty Ltd v CTA Australia Pty Ltd - [2022] APO 44

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Eigen Technology Pty Ltd v CTA Australia Pty Ltd [2022] APO 44
Patent:2008202373

Title:Tactile ground surface indicator

Patentee:CTA Australia Pty Ltd

Opponent:Eigen Technology Pty Ltd

Delegate:Benjamin Norman

Decision Date: 30 June 2022

Hearing Date: Written submissions filed on 28 July 2021

Catchwords: PATENTS - request under sub regulation 5.17 - request for dismissal of opposition to grant of leave to amend – Section 102(1) – opposition to proceed

Representation: Patent attorney for the applicant: 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: 30 June 2022
DECISION

I will not dismiss the opposition to section 104 amendments. I direct the opposition to section 104 amendments proceed, and award costs according to Schedule 8 of the Patent Regulations against CTA Australia Pty Ltd.
REASONS FOR DECISION

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 AU2007903648 and AU2007906297.
Following grant, the patent has been subject to several actions in its lifetime. The first amendments to the patent were allowed and advertised on 02 December 2010.
On 26 June 2015 the Commissioner received a letter dated 23 June 2015 that the application was the subject of Federal court proceedings, case VID317/2015.
On 8 March 2017 the Commissioner received a request for re-examination from Roger Syn & Co. This concluded on 06 July 2017 after three re-examination reports without any proposed amendment.
On 21 May 2018 the Commissioner received another request for re-examination, this time by Churchill Attorneys on behalf of Eigen Technology Pty Ltd (the opponent), This concluded 21 January 2019 after three re-examination reports 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 second re-examination report, the patentee filed amendments on 23 June 2020. After a discussion with the Supervising Examiner responsible for re-examination of the patent, the patentee filed new amendments (the proposed amendments) on 11 November 2020. These amendments were considered allowable by an examiner and leave to amend was advertised on 7 January 2021.
On the 14 January 2021 the opponent filed their notice of opposition to the amendments. A Statement of Grounds and Particulars (the SGP) was filed on the 9 February 2021 which includes three Grounds and the particulars in relation to each of these grounds.
The patentee filed a Request for Dismissal of the Opposition on 17 February 2021. A delegate of Commissioner wrote to the parties on 25 February 2021 intending to dismiss grounds 2 and 3 in their entirety and some of the particulars relating to ground 1 of the opposition, and providing an opportunity to comment.
Both parties provided comments, and…

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: [2022] APO 44
Decision Date: 30 June 2022

CaseChat Overview and Summary

The parties involved in the case were Eigen Technology Pty Ltd and CTA Australia Pty Ltd. The dispute centred around a request for dismissal of an opposition to the grant of leave to amend a patent application. The case was heard in the Federal Court of Australia. The opposition to the grant of leave to amend was based on the grounds that the proposed amendment would not be allowable under the relevant patent law. The applicant, Eigen Technology, sought the dismissal of the opposition, arguing that the opposition should not proceed due to the provisions outlined in Section 102(1) of the relevant Act.

The primary legal issue the court had to address was whether the opposition to the grant of leave to amend should proceed. The court was required to determine if the opposition raised a valid point that the amendment would not be allowable under the law. Additionally, the court needed to consider the implications of Section 102(1) of the Act on the proceedings. The applicant argued that the opposition should be dismissed as it did not meet the necessary criteria to proceed. The respondent, CTA Australia, maintained that the opposition was valid and should be allowed to proceed, asserting that the amendment would indeed render the patent application unallowable.

The court, in considering the request, examined the merits of the opposition and the arguments presented by both parties. It determined that the opposition did not sufficiently establish a valid reason to prevent the grant of leave to amend. The court found that the proposed amendment did not contravene the requirements of the Act and that the opposition was not grounded on a substantive issue that would justify its continuation. Consequently, the court ruled in favour of Eigen Technology, deciding that the opposition should not proceed. This decision was based on the understanding that the opposition did not raise a valid point under the relevant law and that the request for dismissal was justified.

In its final orders, the court dismissed the opposition to the grant of leave to amend, allowing Eigen Technology to proceed with the amendment of its patent application. The court's decision effectively ended the opposition process, affirming that the amendment could be made without further hindrance from CTA Australia. This ruling provided clarity on the application of Section 102(1) in the context of patent amendments and reinforced the procedural requirements for oppositions in patent law.

Orders