Evans Deakin Engineering Pty Ltd v the ANI Corporation Ltd - [2003] APO 8

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 695779 in the name of Evans Deakin Engineering Pty Ltd

Title: Lifter Bar

Action: Final Determination: Opposition under s59 of the Patents Act 1990 by The ANI Corporation Ltd

Decision: Issued .
Abstract

In his decision on the substantive opposition the delegate found that apart from claim 10, the claims lacked fair basis. The applicant filed amendments to remove the object clause but no amendments were made to the claims. The applicant argued that the amendment removed the lack of fair basis. The applicant further argued that it was permissible to amend the specification to define a different invention.
These submissions were not upheld. The deletion of the stated object clause did not alter the delegate's decision that with the exception of claim 10 an essential feature of the invention had not been defined. The removal of the object clause did not provide any real and reasonably clear disclosure of the invention as currently defined by claims 1-9, 11-15.
The proposed amendments were a genuine attempt to satisfy the delegate's decision and as there was clearly patentable subject matter disclosed in the application, the applicant was given a further opportunity to propose suitable amendments.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 695779 by of Evans Deakin Engineering Pty Ltd and opposition thereto by The ANI Corporation Ltd under s59 of the Patents Act 1990 and final determination thereto.

BACKGROUND

A decision on the opposition was handed down on 15 November 2001. In that decision, the delegate found that claims 1-9,11-15 lacked fair basis and he provided 60 days from the date of the decision "in which to propose suitable amendments". On 3 January 2002, the agent for the applicant filed a request to amend under s104 of the Patents Act 1990 and these amendments were allowed on 10 October 2002.
In essence the amendments deleted the object clause of the specification. No amendments were made to the claims. The examiner reported that while the amendments were prima facie allowable, they did not overcome the hearing officer's decision. In an Official Letter dated 25 January 2002, a delegate reported these matters to the applicant and asked for comment. In a letter dated 13 February 2002, the patent attorney for the applicant responded and essentially argued that the deletion of the object clause removed the ground of lack of fair basis. In response to the proposed amendments, the patent attorney for the opponent submitted that the proposed amendments did not overcome the hearing officer's decision.
Mr Savage, patent attorney for the applicant, requested an opportunity to be heard if the hearing officer were to refuse the application. Mr Anese, patent attorney for the opponent, requested an opportunity to be heard if the application was not going to be refused.
Consequently, the matter was set for a hearing on 12 November 2002 in Canberra. Mr Savage, patent attorney…

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: [2003] APO 8
Decision Date: 14 February 2003

CaseChat Overview and Summary

In Evans Deakin Engineering Pty Ltd v the ANI Corporation Ltd, the delegate of the Commissioner of Patents considered an application for a patent by Evans Deakin Engineering Pty Ltd, which was opposed by the ANI Corporation Ltd. The opposition was based on various grounds, including lack of fair basis in several claims of the patent application. Following an initial decision that some claims lacked fair basis, the applicant attempted to amend the specification by deleting the object clause but did not alter the claims themselves.

The legal issues before the court were whether the deletion of the object clause, without amending the claims, could rectify the issue of lack of fair basis and whether it was permissible for the applicant to redefine the invention in response to the opposition decision. The applicant argued that the amendments removed the lack of fair basis and that it was permissible to redefine the invention. The opponent argued that the amendments did not address the deficiencies and that the delegate could not reconsider his findings.

The delegate found that the deletion of the object clause did not resolve the issue of lack of fair basis. The court held that the delegate was not empowered to reconsider his findings and that matters decided in the earlier decision were not open to challenge in the subsequent hearing. The delegate concluded that the amended specification still lacked fair basis for the reasons stated in the original decision. While the delegate acknowledged that there was patentable subject matter disclosed, the applicant had not amended the specification in a way that complied with the original decision. The delegate granted the applicant a further opportunity to propose suitable amendments, giving them 28 days to do so. In the absence of any amendments, the Commissioner could set the application for a hearing with a view to refusal.

In conclusion, the court ruled that the delegate could not reconsider his findings and that the applicant should be given another opportunity to propose suitable amendments. Costs were awarded to the opponent, the ANI Corporation Ltd.

Orders