Hitachi, Ltd v Hoover (Australia) Pty Limited and Simpson Limited

[1989] APO 6

In the Matter of the Patents Act 1952

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In the Matter of Patent Application 533370 in the Name of HITACHI, LTD.

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In the Matters of Oppositions under Section 59 thereto by HOOVER (AUSTRALIA) PTY. LIMITED and SIMPSON LIMITED.

FINAL DECISION OF AN ACTING ASSISTANT COMMISSIONER OF PATENTS:
         In my decision in this matter dated 9 September 1985 I found that the oppositions were successful on the grounds that the accepted claims were anticipated and the accepted specification did not comply with section 40.  I also found that the specification as proposed to be amended by a request lodged on 15 July 1985, shortly before the hearing, did not overcome certain opposition grounds.  I afforded the applicant an opportunity to seek leave to amend its specification in order to claim novel subject matter.
         On 31 October 1985, the applicant filed a fresh request to amend.  Following actions under sections 79 and 80, the request was eventually advertised pursuant to section 81 in the Official Journal on 14 April 1988.  The opponents lodged oppositions under section 82 to this request and served evidence‑in‑support on 7 October 1988.  Subsequently, Hitachi filed a further request to amend on 20 October 1988 with a view to addressing the matters raised in the section 82 oppositions.  This request was advertised pursuant to section 81 in the Official Journal on 17 November 1988.  The nature of the further

request was such that its allowance was contingent upon the allowance of the earlier request lodged 31 October 1985.  No opposition was filed to the further request, in fact the opponents formally withdrew their oppositions under section 82 on the understanding that both requests were to be allowed at the same time.  The requests were so allowed on 9 March 1989 and the specification amended at that time in accordance with those requests.
         The opponents advised that they did not wish to be further heard on the section 59 oppositions.  I am therefore in a position to finalize those oppositions.
         I am satisfied that the amendments to the complete specification remove the grounds of opposition which I found applicable in my earlier findings.  I direct therefore that the application and complete specification as amended proceed to sealing.
         I award any costs associated with the withdrawn section 82 oppositions against the applicant.

(J.L. ROVETA)

Patent attorneys for the applicant: F.B. Rice & Co., Sydney