Evans Deakin Engineering Pty Ltd v the ANI Corporation Ltd

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 of Freehills Carter Smith Beadle, Sydney, appeared for the applicant. Mr Anese, patent attorney of Cullen & Co, Brisbane, appeared for the opponent. Both parties appeared by telephone.
The applicant filed a divisional application 10025/02 on 3 January 2002 with a first examiners report being issued on 17 October 2002.
SUBMISSIONS
Mr Anese sent in submissions and spoke to these while Mr Savage referred to his letter of 13 February 2002 and elaborated on the issues contained therein.
In the earlier decision on this opposition, the delegate found that claims 1-9, 11-15 lacked fair basis. Mr Savage submitted that the issue of fair basis that was raised in the decision was one of conformity and that through the removal of the object clause this lack of conformity was overcome. He further submitted that that it was open to the applicant to claim and define a different invention to the invention that the hearing officer concluded was the subject matter of the specification. Mr Savage agreed that the invention as disclosed in the specification before the hearing officer lacked fair basis but he steadfastly maintained that it was open to him to define a different invention, which was also fairly based on the matter defined in the specification. As a consequence that lack of conformity was, in his submission, removed. Mr Savage also discussed the removal of the object clause resulted in the claims now being fairly based in terms on the law on fair basis.
Mr Anese took a different view of the matter and submitted that the removal of the object clause did not overcome the issue of disconformity. In his opinion, to so do would make a mockery of the decision. He submitted that the proper course of action was to appeal the decision. He also strongly submitted that the delegate’s decision was not purely founded on the object clause and that to consider the applicant’s submission would amount to re-opening matters that already being decided. Mr Anese pointed that the issues of priority date, novelty and inventive step would need to be reconsidered if the applicant’s submission were to be successful.
Mr Anese submitted that the matter for decision was a final determination and that the delegate’s decision has not been complied with or appealed. He submitted that the delegate cannot reconsider his findings and must therefore refuse the application.
He further pointed out that the applicant had filed a divisional application and hence the applicant had a further opportunity to argue its case.
DECISION
In my view, Mr Anese has correctly stated the position in that the delegate is not empowered to reconsider his findings: R v Smith (Commissioner of patents); ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340. This has been applied by the Commissioner in a number of cases. In American National Can Company v W.R.Grace & Co. -Conn [2000] APO 47 (26 July 2000) where the delegate stated;
“A final determination is an opportunity to examine whether the amendments to the specification overcome the deficiencies identified in the earlier decision, and whether the amendments introduce any new deficiencies. Matters that were decided in the earlier decision have been decided once and for all, and are not open to challenge in this hearing. This is made very clear in Perkin-Elmer Corp v Varian Techtron Pty Ltd (1985) 5 IPR 321 at 322-323.”
In Queensland Plumbing Pty Ltd v Trade Waste Diversion Pty Ltd 27 IPR 303, the delegate after considering ex parte Mole (supra) the delegate concluded;
“As a result, I am estopped in a hearing such as the present from reconsidering any matter that was determined in my earlier decision. It also follows that this hearing is not an opportunity to rectify inadequacies of the case previously presented by a party. Neither is this hearing in any manner or form a de facto appeal or review of my earlier decision.”
In my view, the amended specification still lacks fair basis for the reasons stated in my original decision. In the summary portion of my decision, I stated the following.
"With the exception of claim 10, the claims lacked fair basis as they excluded an essential feature of the invention, such essentiality being derived from the only stated object of the invention and from the preferred embodiments."
It is clear that the deletion of the stated object clause does not alter my decision that with the exception of claim 10 an essential feature of the invention has not been defined. That is, the removal of the object clause does not provide any real and reasonably clear disclosure of the invention as currently defined by claims 1-9, 11-15.
The proper course of action was for the applicant to appeal the delegate’s decision; Iluka Midwest Ltd v Technological Resources Pty Ltd [2002] FCA 1233.
If the applicant had amended the specification to remove all grounds found in the original decision then the application could have proceeded to sealing. See for example the following decisions of the delegate: Technological Resources Pty Limited v RGC Mineral Sands Limited [2001] APO 45 (10 September 2001), Ball Corporation v American National Can Company [2000] APO 43 (15 June 2000), Lucent Technologies Inc v Geca Tapes B.V. and Pacific Dunlop Limited [1999] APO 59 (24 September 1999), and Kabushiki Kaisha Universal v Ainsworth Nominees Pty Ltd [1998] APO 30 (25 May 1998).
To me, the submissions of Mr Savage also amount to a reconsideration of my findings in the original decision. The argument put to me by Mr Savage was that as it was legitimate to amend any specification to define a different invention, it would also be legitimate to do so in response to a delegate's decision on an opposition. However, the decision found that some of the claims lacked fair basis. The decision was also specific as to how this lack of fair basis can be overcome. Consequently, it is not now open for the applicant to argue that there is a different invention in the specification, which can now be defined in the current application. Given that the original decision was specific on how the lack of fair basis can be overcome, I cannot see how redefining the invention of the application would overcome my findings on fair basis can be successful. This could only occur if I reconsidered my findings in the original decision. This I cannot do: ex parte Mole (supra).
I find that the ground of lack of fair basis is still outstanding. While there is clearly patentable subject matter, the applicant has not elected, at this stage, to amend the specification in such a way as to comply with the original decision. I note that in ABB Power T & D Company Inc v Electrowatt Technology Innovation Corp [2002] APO 10 (26 March 2002) and John Andrew Willems v Total Energy Systems [1999] APO 67 (20 October 1999) the delegates refused the applications. Nevertheless, there was an implicit recognition in these cases that a further opportunity to amend could be given. In Plantagenet Holdings Pty Ltd v Natura-Min Pty Ltd [1998] APO 59 (15 October 1998), the delegate took the view that as a genuine attempt was made to propose amendments, a further period in which to propose suitable amendments was allowable.
I am of the view that the proposed amendments were a genuine attempt to satisfy my decision. As there is clearly patentable subject matter disclosed in the application, I believe that the applicant should be a further opportunity to propose suitable amendments. I do not believe that it would take long to draft suitable amendments. Hence, I will give the applicant 28 days for the date of this decision to propose suitable amendments. In the absence of any request to amend, the Commissioner may set the application for a hearing with a view to refusal of the application.
Costs
Costs normally follow the event. I see no reason for not following normal practice. Hence, I award costs in this matter against the applicant Evans Deakin Engineering Pty Ltd and to the opponent, The ANI Corporation Ltd.
G.M.Cox
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Freehills Carter Smith Beadle, Sydney
Patent attorneys for the opponent : Cullen & Co, Brisbane

[2003] APO 8

14 February 2003