Gradient Technologies LLC v Jabez7 Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Gradient Technologies LLC v Jabez7 Pty Ltd. [2019] APO 11

Patent Application:                2010246907

Title:Magnetic field apparatus

Patent Applicant:                   Jabez7 Pty Ltd

Opponent:  Gradient Technologies LLC

Delegate:  Greg Powell

Decision Date:  25 March 2019

Hearing Date:  14 September 2018, in Canberra

Catchwords:  PATENTS – section 59 – opposition to the grant of a patent – novelty – claims found to be novel – inventive step – problem known to the person skilled in the art – suitable person skilled in the art – documents ascertained, understood and regarded as relevant – lack of inventive step not established – lack of clarity and fair basis – lack of clarity and fair basis not established – opposition unsuccessful – costs awarded

Representation:  Representative for the Applicant:  James Hermans

Patent attorney for the opponent:  Sylvan Browne and Beata Khaidurova, FB Rice Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2010246907

Title:Magnetic field apparatus

Patent Applicant:                   Jabez7 Pty Ltd

Date of Decision:                   25 March 2019

DECISION

The opposition is unsuccessful.  Subject to appeal, I direct the application proceed to grant.

REASONS FOR DECISION

1. Patent application 2010246907 (“the present application”) was filed on 12 May 2010, as international application PCT/AU2010/000551 in the name of Jabez7 Pty Ltd (“the applicant”).  The application entered the national phase in Australia on 13 December 2011.  The present application claims a priority date of 13 May 2009.

2. The present application was advertised as accepted on 14 July 2016.  A notice of opposition was filed by Gradient Technologies LLC (“the opponent”) on 14 October 2016.  A statement of grounds and particulars (the “SGP”) was filed on 16 January 2017.  An amended SGP was filed on 26 September 2017.  This amendment was allowed on 13 October 2017 and the opposition proceeds on the basis of the amended SGP.

3. Evidence in support was filed on 18 April 2017.  This comprised:

   ·a declaration dated 16 January 2017 by Marcus Julian Caulfield bringing into evidence the documents mentioned in the SGP;

   ·a first declaration dated 17 April 2017 by Anthony C. Morcos with supporting exhibits TM-1 to TM-3 (“Morcos 1”); and

   ·a first declaration dated 13 April 2017 by John C. Townsend (“Townsend 1”).

4. Evidence in answer was filed on 20 July 2017.  This comprised:

   ·a declaration dated 20 July 2017 by James Hermans with supporting exhibits Q1 to Q12.

5. Evidence in reply was filed on 26 September 2017.  This comprised:

   ·a second declaration dated 25 September 2017 by Anthony C. Morcos with two unlabelled attachments (“Morcos 2”);

   ·a third declaration dated 25 September 2017 by Anthony C. Morcos (“Morcos 3”);

   ·a second declaration dated 13 September 2017 by John C. Townsend (“Townsend 2”); and

   ·a declaration by dated 26 September 2017 by Beata Khaidurova.

   The invention as described

6. The present application states at page 1:

   “The present invention relates to a method and apparatus for applying a magnetic field to a…