Iluka Midwest Ltd v Technological Resources Pty Ltd - [2002] FCA 1233

FEDERAL COURT OF AUSTRALIA
Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 1233
PATENTS – opposition proceedings – interim decision of a Delegate of the Commissioner of Patents upholding opposition but granting leave to amend the specification to cure deficiencies in the specification – no appeal brought against the interim decision - final decision to grant the patent – whether opponent is entitled to rely on a ground of appeal that relates to a matter decided by the interim decision – whether claims fairly based on the specification
Patents Act 1990 (Cth) ss 59, 60 and 61
Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 75 ALJR 518 - cited
R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd (1981) 147 CLR 340 – applied
Iluka Midwest Ltd v Technological Resources Pty Limited [2002] FCA 49 - applied
Coopers Animal Health Australia Ltd v Western Stock Distributors Pty Ltd (1987) 15 FCR 382 - cited
Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156 - cited
Genetics Institute Inc v Kirin-Amgen Inc (1999) 92 FCR 106 - cited
Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 - cited
ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED) v TECHNOLOGICAL RESOURCES PTY LIMITED
V 1056 OF 2001
MERKEL J
4 OCTOBER 2002
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V1056 OF 2001

BETWEEN:

ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED)
APPLICANT

AND:

TECHNOLOGICAL RESOURCES PTY LIMITED
RESPONDENT

JUDGE:

MERKEL J

DATE OF ORDER:

4 OCTOBER 2002

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT the appeal of the applicant be dismissed with costs.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

V1056 OF 2001

BETWEEN:

ILUKA MIDWEST LTD (formerly known as RGC MINERAL SANDS LIMITED)
APPLICANT

AND:

TECHNOLOGICAL RESOURCES PTY LIMITED
RESPONDENT

JUDGE:

MERKEL J

DATE:

4 OCTOBER 2002

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

The applicant (“Iluka”) has appealed, pursuant to s 60 of the Patents Act 1990 (“the Act”), against a decision by a delegate of the Commissioner of Patents (“the Delegate”) that patent application 678375 (46915/93) filed by the respondent (“Technological Resources”) on 12 August 1993 (“the patent application”) be sealed. In order to appreciate the issues arising on the appeal it is appropriate at the outset to outline the pre-grant opposition of Iluka, the issues arising for determination by the Delegate, the findings of the Delegate and the steps taken by Iluka to challenge those findings.
Acceptance of the patent application was advertised on 29 May 1997. On 27 August 1997 Iluka filed a notice of opposition to the patent application pursuant to s 59 of the Act. Iluka’s statement of grounds and particulars of opposition filed on 28 November 1997 listed the following grounds:
“Ground 1: The invention, so far as claimed in any claim of the opposed application,…

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

Case: [2002] FCA 1233
Decision Date: 4 OCTOBER 2002

CaseChat Overview and Summary

In Iluka Midwest Ltd v Technological Resources Pty Limited, the Federal Court of Australia considered an appeal by Iluka against the decision of a Delegate of the Commissioner of Patents to grant a patent to Technological Resources. The key legal issues were whether Iluka could rely on grounds of appeal that related to matters decided by the Delegate in an earlier interim decision, and whether the patent claims were fairly based on the provisional specification. The court held that Iluka was not entitled to rely on grounds of appeal that related to matters decided by the Delegate in the interim decision, as Iluka had not appealed that decision within the required time period. The court also held that the amended patent claims were fairly based on the provisional specification. The appeal was therefore dismissed with costs.

Orders