GOULD INC. - [1988] APO 44

In the Matter of the Patents Act 1952 - and - In the Matter of Application Nos. 539758 and 541978 for Patents by GOULD INC. - and - In the Matter of Consideration of Sealing under Section 62.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:

Background

GOULD INC. lodged two applications relating to lead-acid storage cells which were advertised accepted as Nos. 539758 and 541978 on 11 October, 1994 and 31 January, 1985 respectively. The CHLORIDE GROUP opposed both applications and completed service of evidence in support of both actions by the end of January 1986. GOULD was granted extensions up to 30 April, 1988 for service of evidence-in-answer on both actions, but CHLORIDE withdrew both oppositions on 13 April, 1988, before GOULD had served any evidence- in-answer.

In accordance with office practice a delegate of the Commissioner then considered whether patents ought to be sealed on the GOULD applications having regard to the evidence placed on file by CHLORIDE. As a result, GOULD was advised in writing on 30 May and 7 June, 1988 (for the respective applications) that in the view of the delegate the applications in question included claims that were prior published and claims that were otherwise not novel.

The applicant was offered three options:

(i) request amendment under section 77 to remove the problem;
(ii) request to be heard in the matter;
(iii) lodge submissions in rebuttal.

The applicant chose to be heard, and a hearing was set down for 12 August, 1988 in Melbourne. Mr. M.J. Royal of Phillips, Ormonde & Fitzpatrick, patent attorneys of Melbourne, attended the hearing as representative of GOULD.

The Applications

The facts of the applications are sufficiently close that I need only consider one in detail. For this purpose I have selected No. 539758.

This application relates to lead-acid cells and batteries. In particular it relates to maintenance free sealed cells capable of rapid deep cycling, that is, fully discharging and recharging daily. Towards the end of the charging cycle any lead-acid cell loses water through electrolysis. In a conventional flooded electrolyte battery this is replaced by topping up with water at regular intervals; in a sealed maintenance free battery the loss is almost reversed by recombination. During charging the voltage of the cell rises and oxygen is formed at the positive electrode well before hydrogen is formed at the negative electrode. In a recombinant battery this oxygen is allowed to diffuse through the separator, which separates the positive and negative plates, and to react with hydrogen at the negative plate to "reform" water. In order for the diffusion to occur, there must be voids in the separator; that is, the latter is not completely saturated by electrolyte, but in order for the battery to operate properly, this wet separator must be tightly pressed between the electrode plates. Furthermore, to allow oxygen recombination to occur during rapid recharge as is required in daily deep cycling, the cells are pressurised with safety valves operating at up to 50 psig, which…

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

AGLC: GOULD INC. [1988] APO 44
Case: [1988] APO 44
Decision Date: 28 November 1988

CaseChat Overview and Summary

Gould Inc. filed two patent applications for lead-acid storage cells, which were accepted by the Commissioner for Patents. The Chloride Group opposed both applications, but later withdrew the oppositions before any evidence-in-answer was served by Gould. The Commissioner's delegate considered whether the patents should be sealed based on the evidence provided by Chloride and advised Gould that the applications included claims that were either prior published or not novel. Gould chose to be heard on the matter, and a hearing was scheduled. The primary legal issue was whether the Commissioner had the authority to refuse to seal a patent on an accepted application that was not opposed, and if so, under what circumstances. Gould argued that the Commissioner lacked the power to refuse to seal a patent in such cases, as the statutory language and absence of specific appeal provisions indicated a mandatory duty to seal the patent. Gould also contended that the Commissioner's refusal to seal the patent without allowing them to present evidence was unjust and anomalous.

The court examined the historical development of the practice in both the UK and Australia, and concluded that the Commissioner has the inherent power to refuse to seal a patent if it would be clearly invalid. The court found that the Commissioner's duty is to protect the public and ensure that the Crown grant is not improperly given. The court also held that the term "clearly invalid" should be interpreted narrowly, and that the Commissioner can only refuse to seal a patent if the invalidity is evident without needing to consider conflicting expert evidence. The court further determined that the lack of specific appeal provisions in the relevant sections of the Patents Act does not limit the Commissioner's power to refuse to seal a patent in cases of clear invalidity.

In applying the law to the facts of the case, the court found that there was no clear invalidity in the Gould applications. While there were some differences between the claims and the prior art disclosed by Chloride, the expert opinion provided by Chloride was not sufficient to establish clear invalidity without allowing Gould an opportunity to present its own expert evidence. The court concluded that the Commissioner had no duty to refuse to seal the patents on applications 539758 and 541978, and directed that the applications proceed to sealing.

Order: The applications 539758 and 541978 shall proceed to sealing forthwith.

Orders