Firebelt Pty Ltd v Macdonald Johnston Engineering Pty Ltd - [2001] APO 24

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 676371 in the name of FIREBELT PTY LTD

Title: Waste Collection Vehicle

Action: Opposition thereto by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD under section 59 of the Patents Act 1990; hearing.

Decision: Issued
Abstract

The invention relates to a refuse collection vehicle having a particular combination of divided storage tank, side loading bin mechanism, refuse transfer mechanism and rear door assembly involving an inner and an outer door.

The relevance of some brochures about a refuse vehicle, and other material about a seminar and a conference were considered for novelty and inventive step purposes. The relevance to this opposition of findings by the Federal Court in an action concerning a related petty patent was also considered.

It was held that:

1.   claims 6 and 13 lacked clarity and offended against section 40;
2.   the invention defined by claims 1, 2, 3, 6, 9 and 12 lacked novelty in the light of the disclosures in several brochures concerning an Enviro-Pack 1000 vehicle;
3.   the invention defined by claim 1 lacked an inventive step in the light of the common general knowledge;
4.   the invention defined by claims 1 to 6, 9, 11, 12 and 14 lacked an inventive step in the light of the information in the Enviro-Pack 1000 brochures and the common general knowledge;
5.   the invention defined by claim 1 lacked an inventive step in the light of the information about the so-called "Hickey proposal" and the common general knowledge; and
6.   the ground of not an manner of manufacture had not been established.

The applicant was afforded an opportunity to amend the specification in order to claim patentable subject matter.

Costs were awarded against the patent applicant Firebelt Pty Ltd.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 676371 by FIREBELT PTY LTD, and opposition thereto by MACDONALD JOHNSTON ENGINEERING COMPANY PTY LTD under section 59 of the Patents Act 1990.

BACKGROUND

Patent Application No. 676371 was filed on 4 October 1994 by Firebelt Pty Ltd ("Firebelt") as a divisional application of application 651031. The application was originally numbered 74430/94 and when advertised accepted on 6 March 1997 was given the serial number 676371. On filing the application was associated with an earlier Australian provisional specification numbered PM7626 which had been filed on 24 August 1994. Parent application 651031 was filed on 10 February 1993 as a PCT application and claims an earliest possible priority date of 10 February 1992. Application 651031 is subject to a concurrent opposition.

A notice of opposition to application 676371 was filed on 6 June 1997 by MacDonald Johnston Engineering Company Pty Ltd ("MacDonald"), and a statement of grounds and particulars followed on 6 September 1997. Evidence in support, answer and reply were duly filed and further evidence was permitted to be filed on behalf of the patent applicant.

The statement of grounds and particulars lists as grounds…

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 Firebelt Pty Ltd v Macdonald Johnston Engineering Pty Ltd

Details

AGLC: Firebelt Pty Ltd v Macdonald Johnston Engineering Pty Ltd [2001] APO 24
Case: [2001] APO 24
Decision Date: 28 May 2001

CaseChat Overview and Summary

In the case of Firebelt Pty Ltd v Macdonald Johnston Engineering Pty Ltd, the parties were engaged in a dispute over the validity of patent application 676371 for a waste collection vehicle. The opponent, MacDonald Johnston Engineering Pty Ltd, filed an opposition to the patent application under section 59 of the Patents Act 1990, arguing that the claims lacked clarity, were not novel, and lacked an inventive step. The decision of the delegate of the Commissioner of Patents was that the opposition was successful on certain grounds. The court found that claims 6 and 13 were unclear and offended against section 40 of the Patents Act 1990. Additionally, the invention defined by claims 1, 2, 3, 6, 9, and 12 lacked novelty in light of certain brochures concerning an Enviro-Pack 1000 vehicle. The invention defined by claims 1 to 6, 9, 11, 12, and 14 also lacked an inventive step in light of the common general knowledge and the information in the Enviro-Pack 1000 brochures. The court awarded costs against the patent applicant, Firebelt Pty Ltd, and afforded the applicant an opportunity to propose amendments to the specification to overcome the grounds of opposition found to apply.

Orders