Fw: Electrowatt Technology Innovation Corp v ABB Inc
[2009] APO 9
•1 June 2009
ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 688711 in the name of ABB Inc
Title: Method and apparatus for electronic meter testing
Action: Final determination of an opposition under section 59 by Electrowatt Technology Innovation Corp
Decision: Issued 01 June 2009
Abstract
By earlier decision, a Delegate of the Commissioner found that all claims of patent application 688711 lacked inventive step.
An opportunity was provided for the applicant to rectify the situation and the applicant filed amendments. However, it was reported to the applicant that the amendments were considered not allowable as the specification would not comply with subsection 40(3). No further correspondence in relation to the amendments was received and no amendments have ever been allowed.
The Commissioner believed that it was reasonable to conclude that the applicant did not intend to propose an amendment that overcame the adverse findings of the earlier decision and wrote to the parties inviting comment. No comments were received. The Commissioner decided that it was appropriate for this matter be finally determined.
As no amendments have ever been allowed, the claims are in the same form that the Delegate found to lack inventive step.
Patent application number 688711 together with each and every one of claims 1 to 37 is refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 688711 by ABB Inc, and the final determination of an opposition under section 59 by Electrowatt Technology Innovation Corp
BACKGROUND
In a decision made on 19 December 2000 in relation to this application and patent application 689059, a Delegate of the Commissioner found that all claims of both applications lacked an inventive step in light of a single non-patent document combined with common general knowledge (ABB Power T&D Co Inc v Electrowatt Technology Innovation Corp [2000] APO 75). The Delegate allowed the applicant (“ABB”) 60 days from the date of the decision to make suitable amendments to both applications.
In relation to patent application 689059, while amendments were filed and allowed, the application was refused (ABB Power T & D Company Inc v Electrowatt Technology Innovation Corp [2002] APO 10) on the basis that the amended claims still lacked an inventive step.
In relation to the present application (688711), amendments were proposed by the applicant on 16 February 2001. A copy of the amendments was sent to the opponent (“Electrowatt”) on 26 February 2001 with a time period of 2 months within which to file comments. On 2 March 2001, an examiner considered ABB’s amendments and issued a report which stated that the amendment was not allowable as the specification would not comply with subsection 40(3). Specifically, the examiner found that some of the amended claims were not clear. The examiner also noted that, in their opinion, the amendments did not overcome the Delegate’s finding in regard to lack of inventive step.
On 26 April 2001, Electrowatt filed comments in regard to the amendments which stated that, while they considered the amendments to be allowable, they did not overcome the Delegate’s finding in regard to lack of inventive step. A copy of these comments were sent to ABB on 2 May 2001 attached to another examiner’s report which restated that the amendment was not allowable as the specification did not comply with subsection 40(3), and the amendments did not overcome the Delegate’s finding in regard to lack of inventive step.
Apart from a 2003 request to change the name of the applicant from ABB Power T & D Company Inc to ABB Inc., no correspondence in relation to the amendments or the opposition in general was received.
On 28 April 2009, the Commissioner wrote to the parties noting that no action had been taken for eight (8) years to overcome the objections to the amendments or the adverse findings of the decision. The Commissioner noted that the substantive decision stated that amendments were to be proposed that were “directed at overcoming [the hearing officer’s] findings” otherwise the application would be refused. As the applicant had been aware for eight years that their proposed amendment was not allowable and did not overcome the adverse findings, the Commissioner believed that it was reasonable to conclude that the applicant did not intend to propose an amendment that overcame the adverse findings. Following the reasoning of the decision, the Commissioner was of the opinion that she could refuse the application.
ABB and Electrowatt were invited to provide comments as to why the Commissioner could not refuse the application. No comments were received. The Commissioner decided that it was appropriate for this matter be finally determined.
DECISION
At a final determination, the only question is whether amendments to the specification overcome the deficiencies identified in an earlier decision, and whether the amendments introduce any new deficiencies (See Ex parte Mole Engineering Pty. Ltd. (1981) 35 ALR 119 and Perkin-Elmer v Varian Techtron Pty Ltd (1985) 5 IPR 321 at 322-323).
In the present case, the amendments that were proposed in 2001 have never been allowed and incorporated into the specification. As such, the claims that are on file are those claims which the Delegate of the Commissioner found to lack an inventive step. The applicant did not indicate that they intend to file further amendments.
The existence of claims in the same form as they were before the Delegate requires that the application must be refused.
I therefore make a final determination that patent application number 688711 together with each and every one of claims 1 to 37 is refused.
GREG POWELL
Delegate of the Commissioner of Patents
01 June 2009Patent attorneys for the applicant : Peter Maxwell & Associates, Sydney
Patent attorneys for the opponent : Spruson & Ferguson, Sydney
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