Innovia Security Pty Ltd v De La Rue International Limited - [2014] APO 18

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Innovia Security Pty Ltd v De La Rue International Limited [2014] APO 18

Patent Application: 2008243094

Title:Arrays of microlenses and arrays of microimages on transparent security substrates

Patent Applicant: De La Rue International Limited

Opponent: Innovia Security Pty Ltd

Delegate: Dr N. R. Madsen

Decision Date: 1 April 2014

Hearing Date: Written submissions completed on 7 March 2014

Catchwords: PATENTS – amendment of the statement of grounds and particulars – ground of utility added – amendment requested after completion of evidence in reply – error or omission established – balance favours exercising of Commissioner’s discretion – period allowed for applicant to file further evidence

Representation: Patent applicant: Davies Collison Cave
Opponent:Watermark

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2008243094

Title:Arrays of microlenses and arrays of microimages on transparent security substrates

Patent Applicant: De La Rue International Limited

Date of Decision: 1 April 2014

DECISION

Amendment to Statement of Grounds and Particulars allowed

No award of costs

The applicant has one month to file further evidence

REASONS FOR DECISION

Background

Patent application number 2008243094 was filed by De La Rue International (De La Rue) on 3 November 2008 as a divisional application of 2005238699. The application was accepted on 7 July 2011. On 28 October 2011, Securency International Pty Ltd, now Innovia Security Pty Ltd (Innovia), filed a Notice of Opposition to the application followed by a Statement of Grounds and Particulars (SGP) on 30 January 2012. The SGP included novelty, inventive step, manner of manufacture and Section 40 as grounds of opposition to the application.

Evidence in support was filed and complete by 30 January 2013. Evidence in answer was filed and complete by 16 October 2013. A number of extensions of time were granted to both parties during these evidence periods.
On 16 October 2013, the applicant filed a request to amend the specification and a first statement of voluntary amendments under Section 104. In response, the opponent commented on these amendments as being not allowable. The applicant filed a second set of voluntary amendments on 18 November 2013 in order to address the comments of the opponent. The Commissioner advertised the request to amend the specification on 16 January 2014.

The opponent filed and completed evidence with evidence in reply on 16 January 2014. On 22 January 2014 the opponent filed a request to amend the SGP. While the proposed amendment provided new particulars under the current grounds of opposition it also sought to add the new ground of utility as well as to add new particulars to support this ground.
On 13 February 2014 the applicant filed an objection and request to be heard in regard to the requested amendment to the SGP. A delegate of the Commissioner determined that the hearing would be based upon written submissions. Both parties have filed written submissions.

The relevant law

As a consequence of the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 there are substantial changes to Chapter 5 of the Patents Regulations…

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.

Continue reading Innovia Security Pty Ltd v De La Rue International Limited

Details

AGLC: Innovia Security Pty Ltd v De La Rue International Limited [2014] APO 18
Case: [2014] APO 18
Decision Date: 1 April 2014

CaseChat Overview and Summary

Innovia Security Pty Ltd sought to oppose the grant of a patent to De La Rue International Limited on several grounds, including novelty, inventive step, and manner of manufacture. De La Rue filed a divisional application of an earlier patent application, and Innovia filed a Notice of Opposition, followed by a Statement of Grounds and Particulars (SGP) on 30 January 2012. Innovia later sought to amend the SGP to include a new ground of opposition, lack of utility, which was inadvertently omitted from the original SGP. De La Rue opposed the amendment, arguing that it was untimely and prejudicial.

The court had to determine whether the Commissioner had the discretion to allow the amendment of the SGP to include the new ground of opposition. The court noted that the Commissioner may amend the SGP if they reasonably believe that the amendment corrects an error or omission by the opponent. The court found that Innovia had demonstrated an error or omission in the original SGP, as it was their intention to include the ground of lack of utility but it was inadvertently omitted by their attorney. The court also considered the opponent's conduct, including any unreasonable delay in correcting the error or omission, and whether there had been a full and frank disclosure. The court found that Innovia had not unreasonably delayed rectifying the error or omission and had provided a sufficiently full and frank disclosure.

The court also considered the interests of the parties and the public interest. The court found that the interest of the opponent in being able to oppose the application on the ground of utility outweighed that of the applicant. The court also found that the public interest in having the opposition determined on its merits in regard to all possible grounds outweighed the potential delay in resolution of the opposition.

The court allowed the amendment to the SGP and directed that De La Rue had one month to file further evidence in regard to the new ground of utility. The court made no award of costs to either party.

Orders