Guang-ming Weng - [2018] APO 69

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Guang-ming Weng [2018] APO 69

Patent Application: 2013202063

Title:Ring, Ultra-Low-Speed, Large-Capacity Generator

Patent Applicant:                   Guang-ming Weng
Delegate:  M. G. Kraefft
Decision Date:  19 October 2018
Hearing Date:  Written submissions filed on 12 September 2018

Catchwords: PATENTS – section 223 – application for extension of time to gain acceptance of patent application – whether error or omission or circumstances beyond control led to failure to gain acceptance – grounds not made out – nature of alleged invention also meant extension of time would serve no useful purpose – extension of time refused.

Representation: Self-represented.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013202063

Title:Ring, Ultra-Low-Speed, Large-Capacity Generator

Patent Applicant: Guang-ming Weng
Date of Decision: 19 October 2018
DECISION
The grounds available under sub-section 223(2) have not been made out. Moreover, in the present case, even if made out, an extension of time would serve no useful purpose.
The application for an extension of time is refused.
REASONS FOR DECISION
BACKGROUND

Guang-ming Weng (“the applicant”) filed patent application 2013202063 on 13 March 2013. This is the priority date of the application. The application was absent of claims defining the invention.
On 12 August 2013, the applicant filed new description pages, a set of claims, drawings and an abstract. This filing was treated as a request to amend the specification under Section 104. The request was allowed on 3 September 2013.
The applicant requested examination of the application on 20 April 2016. Consequently the application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”). Amendments to Sections 7, 40 and 49 of the Act apply to the present case as a consequence of Schedule 1, items 55(1)(e) and 55(4)(b), and Schedule 6, item 133(7)(e), of the Raising the Bar Act. The applicant requested examination after 15 April 2013.
A first examination report was issued on 9 February 2017. As indicated in that report, and pursuant to sub-regulation 13.4(1)(b), the applicant had 12 months until 9 February 2018 to obtain acceptance of the application. The report contained objections that the specification did not comply with Section 40 of the Act (support, disclosure, clarity, lack of unity), and that certain claims were not novel and lacked an inventive step. Furthermore, the report noted an absence of a Statement of Proposed Amendments to formally propose amended claims that the applicant filed with the request for examination. Nonetheless the examiner indicated that he considered those claims when preparing the report.
Despite numerous items of correspondence between the applicant and the Patent Office, by way of further informal amendments to the specification, submissions from the applicant and further examination reports, the applicant was unable to obtain acceptance of the application within the available time. The final examination report dated 29 January 2018, maintained objections under Section 40, included an objection that the claimed invention was not useful, and reserved…

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: Guang-ming Weng [2018] APO 69
Case: [2018] APO 69
Decision Date: 19 October 2018

CaseChat Overview and Summary

Guang-ming Weng applied for a patent for an ultra-low-speed, large-capacity generator, but the application lapsed due to failure to gain acceptance within the required time. Weng applied for an extension of time under Section 223 of the Patents Act 1990, but the Delegate refused the application. The court was required to determine whether the Delegate's decision was correct. The court found that the applicant's submissions did not constitute errors or omissions in the context of sub-section 223(2)(a), and the applicant had demonstrated a lack of understanding of the requirements for acceptance of a patent application. Additionally, the applicant had not provided any indications of any occurrence that fits the description of circumstances beyond control. The court also found that an extension of time would serve no useful purpose in this case, as the claimed invention did not appear to satisfy the requirement of being useful and the concept of generating power by relative movement between magnets and coils of electrically conductive wires has been well known. Therefore, the Delegate's decision to refuse the application for an extension of time was correct.

The application for an extension of time is refused.

Orders