EIS GmbH v Novoluto GmbH - [2022] APO 29

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
EIS GmbH v Novoluto GmbH [2022] APO 29

Patent Application: 2018203659
Title:Stimulation device having an appendage

Patent Applicant:                   Novoluto GmbH
Opponent:  EIS GmbH
Delegate:  R Subbarayan
Decision Date:  28 April 2022
Hearing Date:  Written submissions filed 18 February 2022

Catchwords: PATENTS - section 59 – final determination – amendments overcome deficiencies identified in previous decision – application to proceed to grant

Representation: Patent attorney for the applicant: Spruson & Ferguson
Patent attorney for the opponent: Pizzeys Patent and Trade Mark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018203659

Title:Stimulation device having an appendage

Patent Applicant: Novoluto GmbH
Date of Decision: 28 April 2022
DECISION
The amendments to the specification overcome the deficiencies identified in the first decision in this s59 opposition and do not introduce new deficiencies.
Subject to any appeal, I direct the application proceed to grant.
REASONS FOR DECISION
Background

The matter relates to patent application 2018203659 in the name of Novoluto GmbH (the Applicant).
Following an opposition by EIS GmbH (the Opponent), a decision EIS GmbH v Novoluto GmbH [2021] APO 1 was issued on 5 January 2021 (the first decision). In the first decision I found that claims 1-4, 6-13, 15-20, 22-27, and 29-30 are not supported by matter disclosed in the specification and gave the Applicant two months to propose suitable amendments to overcome this adverse finding.
The Applicant filed proposed amendments to the specification on 5 March 2021. The Opponent filed comments on 23 March 2021 submitting that the proposed amendments are not allowable.
On 3 June 2021, the Applicant withdrew the earlier amendment request and filed a new set of proposed amendments to the specification. The Opponent filed comments on 25 June 2021 submitting that the proposed amendments are not allowable.
An examination report was issued on 31 August 2021 with a finding that the proposed amendments are not allowable as they would not comply with s102(2)(b) of the Act. Following a telephone conversation with the applicant, the Office issued a correspondence on 17 September 2021 stating that there had been a change of mind and that the proposed amendments are allowable. The amendments were advertised for opposition purposes in the Official Journal of 25 November 2021. As the amendments were not opposed, the parties were advised on 4 February 2022 that the amendments have been allowed.
On 9 February 2022, the Office advised the parties that the opposition is due for final determination and whether they wish to be heard in this matter.
On 18 February 2022, the Opponent advised that they do not wish to be heard but resubmitted their comments of 25 June 2021 as to why the amendments are not allowable.
The Applicant advised that they did not wish to be heard.
Applicable Law
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981]…

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.

Continue reading EIS GmbH v Novoluto GmbH

Details

AGLC: EIS GmbH v Novoluto GmbH [2022] APO 29
Case: [2022] APO 29
Decision Date: 28 April 2022

CaseChat Overview and Summary

The case of EIS GmbH versus Novoluto GmbH was before the Federal Court, with the matter concerning a patent application and an opposition under section 59. The opposition had previously been upheld, but the applicant sought to amend the patent specification to address the deficiencies noted by the court. The central issue before the court was whether the proposed amendments to the patent specification were sufficient to overcome the deficiencies previously identified and whether these amendments introduced any new deficiencies.

The court examined the amended specification in detail, considering whether the changes made addressed the concerns raised in the earlier decision. The court assessed whether the amended specification now met the statutory requirements and adequately disclosed the invention. The court also evaluated whether the amendments introduced any new issues or complexities that might render the patent invalid or unclear.

Having reviewed the amendments, the court found that they successfully addressed the deficiencies previously identified and did not introduce new deficiencies. The court concluded that the amended specification met the necessary standards for patentability. Consequently, the court ruled in favour of the applicant and directed that the application proceed to grant, subject to any potential appeal.

The court's decision included a formal direction for the patent application to proceed to grant, provided no appeal was lodged against the decision. This ruling effectively resolved the opposition and paved the way for the grant of the patent, contingent upon the completion of any further formal steps required by the patent office.

Orders

Orders of the court

The amendments to the specification overcome the deficiencies identified in the first decision in this s59 opposition and do not introduce new deficiencies.

Subject to any appeal, I direct the application proceed to grant.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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