ICI Australia Operations Pty Ltd v Commercial Polymers Pty Ltd

official notice

decision of a delegate of the commissioner of patents

Application : No. 606285 in the name of ICI Australia Operations Proprietary Limited

Title: Cable

Action: Request under Regulation 5.5(1), by ICI Australia Operations Proprietary Limited, for dismissal of an opposition under Subsection 104(4) by Commercial Polymers Pty Ltd.

Decision: Issued
Abstract: The particulars provide the applicant with sufficient indication of the material facts which the opponent will need to establish, in order for its case to be made out. The particulars were not shown to be so deficient that the opposition is “manifestly groundless” or “does not admit of argument”.
Previous consideration of amendments by the Patent Office is not a bar to a third party opposing the allowability of the amendments in an appropriately presented opposition.

The fact that an opponent has not lodged an appeal to a previous decision or that they have the right to take action in the Courts in relation to an application are not justification for dismissal of an appropriately framed opposition.

To dismiss an opposition, in whole or in part, on the basis that the opposition would be a rehearing of a previous matter, can only be done where the matter has previously been decided and the issue pressed in the opposition can only involve a reconsideration of the decided matter.

Request for dismissal refused.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 606285, in the name of
ICI Australia Operations Proprietary Limited.

Request under Regulation 5.5(1), by ICI Australia Operations Proprietary Limited, for dismissal of an opposition under Subsection 104(4) by COMMERCIAL POLYMERS Proprietary Limited.

background

Patent Application No. 606285 in the name of ICI Australia Operations Pty Ltd (hereafter ICI) was advertised accepted on 31 January 1991. On 31 April 1991 Commercial Polymers Pty Ltd (hereafter Commercial) filed a notice of opposition under Section 59 of the Patents Act 1952.

The hearing of the substantive opposition was held in September 1995, following completion of the evidentiary stages. The decision issued on 11 April 1996 and the opposition was successful on the grounds of non-compliance with Section 40, prior publication and want of novelty. The hearing officer considered that the specification was capable of being amended to overcome the problems and ICI was given 60 days to propose amendments.

ICI filed a request for leave to amend on 7 June 1996, this was considered by an examiner and ICI subsequently filed a second statement of proposed amendments on 13 August 1996. The granting of leave to amend the specification was advertised on 23 January 1997. Commercial filed a notice of opposition to the allowance of the amendments under subsection 104(4) of the Patents Act 1990 on 22 April 1997 and a Statement of Grounds and Particulars on 22 July 1997.

ICI filed a request for dismissal of the opposition on 22 August 1997 outlining the basic reasons for their request, and the matter was set down for…

CaseChat Overview and Summary

ICI Australia Operations Pty Ltd applied for the dismissal of an opposition by Commercial Polymers Pty Ltd in respect of amendments to a patent application. The opposition was made under subsection 104(4) of the Patents Act 1990. The application was heard by a delegate of the Commissioner of Patents, Victor Portelli. The primary issue before the court was whether the opposition was so obviously untenable that it could not possibly succeed, justifying its dismissal. The opposition, if allowed, would challenge the proposed amendments to the patent application and assess their compliance with the statutory requirements.

The court reviewed the particulars of the opposition and found them adequate, providing the applicant with sufficient information to respond to the opponent's case. The court noted that previous consideration of the patent application by the Patent Office did not bar a third party from opposing the allowability of amendments in a properly presented opposition. Additionally, the fact that the opponent had not appealed a previous decision or had the right to take action in court did not justify dismissing a well-framed opposition. The court also determined that dismissing an opposition as a rehearing of a previous matter was only permissible if the matter had been previously decided and the issue pressed in the opposition involved a reconsideration of the decided matter. In this case, the opposition did not involve a rehearing of previous matters.

Based on the reasoning above, the court refused to dismiss the opposition in its entirety. The decision was made in accordance with Regulation 5.8(1)(a)(iii), which states that the time for service of evidence in support of the opposition commences from the date of the decision. The court awarded costs against the applicant, ICI Australia Operations Pty Ltd, in accordance with the usual practice in actions before the Commissioner, where costs normally follow the event.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established