Innovia Security Pty Ltd v De La Rue International Limited - [2015] APO 77

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v De La Rue International Limited [2015] APO 77

Patent Application: 2010311176

Title:Improvements in security devices

Patent Applicant:                   De La Rue International Limited
Opponent:  Innovia Security Pty Ltd
Delegate:  Xavier Gisz
Decision Date:  24 November 2015
Hearing Date:  19 August 2015, in Canberra

Catchwords: PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty and inventive step – claims 1-28 are novel – claims 1-28 lack inventive step in light of D1 (WO 2008/043981) whether dependent claims are appended to claim 1 or claim 2 – costs awarded against the applicant

Representation: Patent applicant: Tom Cordiner of counsel for Davies Collison Cave
Opponent:Dr Grant Jacobsen of Watermark Patent and Trade Mark Attorneys and Ian Lindsay of Innovia Security Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010311176

Title:Improvements in security devices

Patent Applicant: De La Rue International Limited
Date of Decision: 24 November 2015
DECISION
Claims 1-28 lack an inventive step in light of D1 (WO 2008/043981) whether dependent claims are appended to either claim 1 or claim 2.
I allow the applicant 2 months from the date of this decision in which to propose suitable amendments to overcome the above findings.
Costs are awarded against the Applicant, De La Rue International Limited.
REASONS FOR DECISION
Background

Application 2010311176 in the name of De La Rue International Limited (the Applicant) is the national phase entry of WO 2011/051682 which was filed on 29 October 2010 with a priority date of 30 October 2009. The acceptance of the application was published on 6 March 2014. A notice of opposition was filed by Innovia Security Pty Ltd (the Opponent) on 6 June 2014 and a Statement of Grounds and Particulars was filed on 4 September 2014. Amendments to the Statement of Grounds and Particulars were proposed on 14 August 2015.
Evidence in support was acknowledged as complete on 4 December 2014. Evidence in Answer was completed on 4 March 2015.
The hearing was held in Canberra on 19 August 2015. The Applicant was represented by Tom Cordiner of counsel for Davies Collison Cave. The Opponent was represented by Dr Grant Jacobsen of Watermark Patent and Trade Mark Attorneys and Ian Lindsay of Innovia Security Pty Ltd.
The request for examination for this application was filed prior to 15 April 2013. As a consequence, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present patent application. In other words, the consideration of grounds of opposition is under the Act as it existed prior to the Raising the Bar amendments. However, the notice of Opposition was filed after 15 April 2013, thus the opposition procedures that apply are those prescribed under the Regulations of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.
Preliminary matters
Amendments to the Statement of Grounds and Particulars were proposed on 14 August 2015. The purpose of the amendment was to add the citation D10 (US 5,766,738) as a particular under the grounds of novelty and inventive step as this document was referred to by the expert (Dr Moia) in the Opponent’s Evidence in Support. I am satisfied that the amendment is for the purpose of conforming the Statement of Grounds and Particulars to the Opponent’s evidence and thus should be made. The amendment is allowed pursuant to Reg 5.16(4).
Evidence
The Opponent’s Evidence in Support comprises a declaration of Dr Franco Moia filed on 2 December 2014 accompanied by exhibits FM-1 to FM-5. The Applicant’s Evidence in Answer comprises a declaration of Richard Jotcham filed on 4 March 2015 accompanied by exhibits RBJ‑1 to RBJ-4.
Specification
The specification ends with 28 claims comprising: 2 independent claims, 24 dependent claims, and 2 omnibus claims. The claims are reproduced below:
1. A security device comprising a first colourshifting layer, a second colourshifting layer which exhibits different reflective characteristics to the first colourshifting layer, said colourshifting layers exhibiting a visible colour at normal incidence, a partial first light absorbing layer between first surfaces of the first and second colourshifting layers and a second light absorbing layer applied to a second surface of the second colourshifting layer, wherein the colour of the partial first absorbing layer is selected to substantially match the colour of light reflected at a normal angle of incidence by the combination of the second colourshifting layer and the second absorbing layer.
1. A security device comprising a first colourshifting layer, a second colourshifting layer which exhibits different reflective characteristics to the first colourshifting layer, said second colourshifting layer being a multilayer polymer, a partial first light absorbing layer between first surfaces of the first and second colourshifting layers and a second light absorbing layer applied to a second surface of the second colourshifting layer, wherein the colour of the partial first absorbing layer is selected to substantially match the colour of light reflected at a normal angle of incidence by the combination of the second colourshifting layer and the second absorbing layer.
1. A security device as claimed in claim 1 or claim 2 in which one or both of the colourshif ting layers are partial layers.
1. A security device as claimed in any one of the preceding claims in which the second light absorbing layer is a partial layer.
1. A security device as claimed in any one of the preceding claims in which one or both of the light absorbing layers form indicia.
1. A security device as claimed in claim 5 in which the indicia comprise one or more design, pattern, symbols or alphanumeric characters or a combination thereof.
1. A security device as claimed in any one of the preceding claims in which the light absorbing layers are formed from a pigmented ink or coating.
1. A security device as claimed in any one of claims 1 to 6 in which the light absorbing layers are formed from a nonpigmented dye.
1. A security device as claimed in any one of the preceding claims in which the light reflected by one of the colourshifting layers at certain angles of view is in the non-visible wavelength of the electromagnetic spectrum.
1. A security device as claimed in claim 9 in which the light reflected by the multilayer films at certain angles of view is in the inf rared region of the electromagnetic spectrum.
1. A security device as claimed in any one of the preceding claims further comprising a machine readable element.
1. A security device as claimed in claim 11 in which the machine readable element is in a light absorbing layer.
1. A security device as claimed in claim 10 in which the machine readable element is in an independent layer.
1. A security device as claimed in any one of claims 11 to 13 in which the machine readable element comprises a fluorescent, phosphorescent, infrared absorbing, thermochromic, photochromic, magnetic, electrochromic, conductive or piezochromic material.
1. A security device as claimed in any one of the preceding claims further comprising a layer of adhesive on one or both sides of the device.
1. A security device as claimed in any one of the preceding claims in which one or both of the colourshifting layers are liquid crystal layers.
1. A security device as claimed in any one of claims 1 to 14 in which one or both of the colourshifting layers are multilayer polymer films.
1. A security document comprising a substrate and security device as claimed in any one of the preceding claims.
1. A security document as claimed in claim 18 in which the security device is applied to a surface of the substrate.
1. A security document as claimed in claim 18 in which the security device is at least partially embedded in the substrate and visible in windows in at least one surface of the substrate.
1. A security document as claimed in any one of claims 18 to 20 comprising a voucher, passport, banknote, cheque, certificate or other document of value.
1. A security document as claimed in any one of claims 18 to 21 in which the document is printed with identifying information and designs formed by the reflection of light from the much larger films of the security device are linked to the identifying information.
1. A security document as claimed in claim 22 in which the link is by content and/or registration of the designs.
1. A method of manufacturing a security device as claimed in any one of claim 1 to 17 comprising the steps of:-
applying the partial layer of light absorbing material to a first colourshifting layer;
applying the second colourshifting layer to cover the partial absorbing layer and the exposed regions of the first colourshifting layer; and
applying a second layer of light absorbing material to cover an exposed surface of the second colourshifting layer.
1. A method of manufacturing a security device as claimed in claim 24 in which a layer of metal is applied to cover the second layer of light absorbing material.
1. A method of manufacturing a security device as claimed in any one of claims 24 or claim 25 further comprising the step of applying a layer of adhesive to one or both surfaces of the device.
1. A security device substantially as hereinbefore described with reference to and as shown in the accompanying drawings.
1. A method of manufacturing a security device substantially as hereinbefore described with reference to and as shown in the accompanying drawings.
Features of independent claims
The invention defined in claim 1 can be divided into the following essential integers:
(a)A security device comprising
(b)a first colourshifting layer,
(c)a second colourshifting layer which exhibits different reflective characteristics to the first colourshifting layer,
(d)said colourshifting layers exhibiting a visible colour at normal incidence,
(e)a partial first light absorbing layer between first surfaces of the first and second colourshifting layers
(f)and a second light absorbing layer applied to a second surface of the second colourshifting layer,
(g)wherein the colour of the partial first absorbing layer is selected to substantially match the colour of light reflected at a normal angle of incidence by the combination of the second colourshifting layer and the second absorbing layer.
The invention defined in claim 2 can be divided into the following essential integers:
(a)A security device comprising
(b)a first colourshifting layer
(c)a second colourshifting layer which exhibits different reflective characteristics to the first colourshifting layer
(d*) said second colourshifting layer being a multilayer polymer
(e)a partial first light absorbing layer between first surfaces of the first and second colourshifting layers
(f)a second light absorbing layer applied to a second surface of the second colourshifting layer,
(g)wherein the colour of the partial first absorbing layer is selected to substantially match the colour of light reflected at a normal angle of incidence by the combination of the second colourshifting layer and the second absorbing layer.
The invention
The invention is a security device with an image that is visible when viewed when tilted (at an oblique angle), but the image disappears when viewed directly (at a normal angle). This effect is achieved using an arrangement of colourshifting and colour absorbing elements.
Light transmission and reflection characteristics of the materials
A colourshifting material is a material which changes colour according to the angle at which it is viewed. This is described at page 10 lines 4 to 11:
“When light strikes the colourshifting layers 12, 13, some of the light is reflected. The wavelength of the reflected light depends on the structure and composition of the colourshift material/structure and the reflected light will appear coloured. The wavelength of the reflected light is also dependent on the angle of incidence, which results in a colour change perceived by the viewer as the colourshifting layer is tilted away from the normal.”
The description states at page 4 lines 8 to 10:
“It has been found that multilayer polymer films provide a colourshift effect which is comparable to that of liquid crystals, yet are sufficiently strong to be self supporting.”
Thus liquid crystal and multilayer film have the same colourshifting property.
The description states at page 4 lines 8 to 23:
“It has been found that multilayer polymer films provide a colourshift effect which is comparable to that of liquid crystals, yet are sufficiently strong to be self supporting. Such films are described in EP-A-1047549, US-B-5089318 and WO-A-9619347 and are formed of multiple layers (hundreds or thousands) of at least two different materials. The various layers may have different actual and/or optical thickness and different indices of refraction. These films contain no dye or pigment or other element which may fade in time, as they just use selective reflection to provide the colourshift effect. As incident white lights strikes the film, light of a specific wavelength is reflected whilst other wavelengths are transmitted through the layers to be reflected at different angles to the normal. Thus when viewed at different angles of light different colours can be seen.”
Thus liquid crystals and multilayer film have the same unusual property of reflecting light of one colour and transmitting light of all other colours.
A light absorbing material is a material that absorbs light of particular wavelengths independent of angle at which light impinges or at which it is viewed. The colour of the material is provided by the wavelengths of light that are not absorbed (and thus reflected). An image can be produced by printing light absorbing material onto colourshifting material.
Additive colour
Because colourshifting materials such as liquid crystals and thin film interference layers have the unusual property of reflecting light of one colour and transmitting light of all other colours, the light reflecting off the layers of the device will combine additively. If the colourshifting material behaved like ordinary semi-transparent materials and transmit the same frequency as it reflects, the light reflecting off the layers would combine subtractively.
The following diagram illustrates additive colour mixing:
Embodiment of the invention
The first embodiment of the invention is provided at page 12 lines 23 to page 13 line 18:
“In this example where layer 12 exhibits a green to blue colourshift and layer 13 exhibits a red to green colourshift the reflected light from Region A will appear yellow from the combination of green and red. In Region B there is an absorbing layer 14, which in this example is red, between the two multilayer films 12, 13 and the wavelength of reflected light, at any given angle of incidence, is solely the reflected light from the second multilayer film 13 as influenced by the colour of the underlying regions of the partial absorbing layer 14. As the colour of the first absorbing layer 14 matches the colour of the light reflected by the combination of the second colourshifting layer and the second absorbing layer 15, the security device 10 has a uniform yellow appearance at normal incidence.
However, when the security device 10 is tilted at an angle away from normal, (i.e. the viewing angle is changed away from normal incidence), the first colourshifting layer 12 now reflects blue light, which will appear as magenta in regions B when viewed over the underlying regions of the red absorbing layer 14. The second colourshifting layer [13] reflects green light, so the regions A will appear turquoise as a result of the additive mixing of the individual wavelengths of the blue and green light reflected from the two colourshifting layers 12,13 respectively.”
This embodiment is illustrated below when viewed at normal incidence (i.e. without tilt):
This embodiment is illustrated below when viewed from a tilted angle:
Thus when the bottom colourshifting layer is the same colour as the partial light absorbing layer when viewed directly (at a normal angle), the image formed by the partial light absorbing material will be camouflaged against the colourshifting background of the same colour. When viewed from an oblique angle (tilted) the colourshifting material which forms the background will change colour, while the partial light absorbing material will remain the same colour; thus the image formed by the partial light absorbing layer will become visible.
The light reflected from each of the two regions (i.e. the partial light absorbing layer and the bottom lightshifting layer) additively combines with the top colourshifting layer. Thus the top layer of colourshifting material provides both regions of the device with a colour shift effect.
OPPOSITION UNDER SECTION 59
Onus of proof
The request for examination in this case was filed on 14 March 2012. Therefore, the substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, including subsection 60(3A) which allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists, do not apply to the present application. Instead, the onus of proof in this opposition proceeding lies with the opponent, who must establish that it is clear that a valid patent cannot be granted (F.Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182; 79 IPR 426).
Grounds of Opposition
The patent application was opposed on the grounds that the claims of the patent application lack novelty and an inventive step.
Novelty [s 18(1)(b)(i)]
A claimed invention is deprived of novelty if it has been given to the public before the priority date, either by prior use of a product or process, or by publication of information that equates to the claimed invention (Justice Bennett in Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248]). It is well established that the general test for anticipation is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20]; [1977] HCA 19; (1977) 137 CLR 228 at 235:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”
This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; (1990) 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions” to the claimed invention (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co [2005] FCAFC 224 at [314]; [2005] FCAFC 224; (2006) 68 IPR 1 at 67 [314]). However, if the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in such a way that would not do so, the patentee’s claim will not be anticipated (General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 at 138). Where a prior publication does not explicitly disclose all of the integers of the claimed invention, it would still deprive the claimed invention of novelty if (i) the skilled reader understands the disclosures of the prior publication to include a missing integer, and (ii) if the document contains a direction to use a process that inevitably or inexorably results in something within the claim (Justice Bennett in Danisco (No 2) [2011] FCA 282 at [248]; [2011] FCA 282; (2011) 91 IPR 209 at [248]).

The Opponent argued the following documents anticipated the claimed invention:
- D1 – WO 2008/043981 A1 (DE LA RUE INTERNATIONAL LIMITED) 17 April 2008
- D10 – US 5,766,738 (PHILLIPS et al) 16 June 1998
D1 - WO 2008/043981 (DE LA RUE INTERNATIONAL LIMITED) 17 April 2008
First embodiment of D1
The Opponent argued that the following embodiment anticipated the claimed invention. D1 discloses at page 12 lines 25 to page 13 line 4:
“Whilst the use of a black, or very dark, substantially totally absorbing layer may give rise to the most strong colourshift effects, other effects may be generated by the use of a partially absorbing layer 14 of other colours or a combination of colours, giving rise to differing apparent colourshift colours. The use of different coloured partially absorbing layers 14 enables the number of optically variable regions to be increased further. The absorbing layers 14, 15 of the present invention may comprise a pigmented ink or coating or alternatively a non-pigmented absorbing dye can be used.”
The Opponent stated in their submissions that:
“It is submitted that Lister does include the possibility that other colours could be used and that therefore substantial colour matching would occur. On this basis, Lister anticipates claim 1.”
I understand this argument to be that it would be inherent that matching colours would be used. However, I do not consider this to be the case; an arbitrarily chosen colour for the absorbing layer is unlikely to match the colourshifting material colour when viewed at a normal angle. A feature can only be considered inherent if it would necessarily be present in the prior art document.
Dr Moia describes at paragraphs 49 and 50 an example of a choice of colour shifting layer and partial absorbing layer such that an image is visible when viewed at a normal angle and disappears when tilted. In this example the absorbing layer matches the first colourshifting layer (rather than the second colourshifting layer).
Dr Moia goes on to state at paragraph 50:
“Therefore, feature 1. 7 of claim 1 of the Application is not essential to obtaining the required optical effect, namely: i) a security device incorporating a latent image or information which can be visualized to the human eye by changing the observation angle and, ii) at the same time a security device which shows at one observation angle a single colour and at a different observation angle colour changes of both regions A and B (A: from cyan to yellow and B: from cyan to green).”
This explanation does not adequately explain why the claims lack novelty for three reasons. Firstly, the claims are not directed to the resulting effect, but rather the features of the security device. Secondly, even if the claims were directed to the resulting effect, Dr Moia’s example results in a different effect than the resultant effect of the claimed invention (the image becoming invisible at an oblique angle, whereas the claimed invention results in an invisible image at a normal angle). Thirdly, Dr Moia’s explanation requires the matching of colours (albeit with a different layer), the very feature that Dr Moia says is not an essential feature of the invention.
Therefore this embodiment of D1 discloses all features except feature (g) – matching the colour of the first partial absorbing layer with the combination of second colour shifting layer and the second light absorbing layer.
Other embodiment of D1
Another embodiment of D1 discloses an image that is hidden at normal incidence and appears at tilted incidence. D1 discloses at page 19 line 8 to page 20 line 3:
“In one example, illustrated in Figures 12a and 12b, and referring to the cross-section in Figure 5, the first liquid crystal layer 12 reflects light in the infrared region of the electromagnetic spectrum when at normal incidence (Figure 12a) , appearing colourless and transparent, and reflects red light when tilted away from normal incidence (Figure 12b). The second liquid crystal layer 13 exhibits a red-green colourshift when viewed against a dark absorbing background. Regions A and B are defined by the partial dark absorbing layer 14 between the two liquid crystal layers 12, 13 which, in this example, is applied in the form of alphanumeric characters such that Region B is a repeating pattern of the words DE LA RUE and Region A is the background. When viewed in reflection and at normal incidence both Regions A and B will appear red due to the transparent colourless appearance of the first liquid crystal layer 12 having no visible effect on the appearance of the device 10. On tilting the device 10 such that it is viewed away from normal incidence Region A appears yellow, due to the additive colour mixing from the red reflected light from the first liquid crystal layer 12 and the green reflected light from the second liquid crystal layer 13, and Region B appears green due to the reflected light coming solely from the second liquid crystal layer 13. To the authenticator the device 10 appears uniformly red at normal incidence but on tilting away from normal incidence the repeating legend DE LA RUE appears in a yellow colour against a green background.”
I have illustrated this embodiment at normal and tilted viewing angles in the figures below.
Feature (g) of independent claims 1 and 2 require that the colour of the first absorbing layer to match the colour of light reflected at normal incidence of the combination of the second colour shifting layer and the second absorbing layer.
When the second colour shifting layer is clear, the combination of second absorbing layer and second colour shifting layer is simply the colour of the second absorbing layer. So the first absorbing layer is dark (black) which matches the second absorbing layer (also black). Thus feature (g) is disclosed in this embodiment of D1.
This embodiment of D1 does not feature (d) of claim 1 – the colour shifting layer exhibiting a visible colour at normal incidence. Therefore claim 1 is novel in light of D1.
D1 does not disclose integer (d*) of the claim 2 – the use of a multilayer polymer, in any of the embodiments. Therefore claim 2 is novel in light of D1.
D10 – US 5,766,738 (PHILLIPS et al) 16 June 1998
D10 discloses an optically variable device, the optically variable structures having the same colour at one angle of incidence and different colours at all other angles of incidence. The description states at column 20 lines 43 to 65:
“In FIGS. 18. 19 and 20 there is disclosed another embodiment of a paired optically variable article 91 utilizing paired optically variable pigments incorporating the present invention. The optically variable article 91 is mounted on a substrate 92 of the type hereinbefore described having a surface 93. An optically variable structure 94 having an optically variable pigment in the form of flakes 96 disposed in a solidified clear vehicle 97 is provided on the surface 93. Another optically variable structure 98 which utilizes an optically variable pigment 99 disposed in a clear solidified toner vehicle 101 is provided on surface 102 of the optically variable structure 94 and provides a symbol or message which for example can be in the form of a logo 106. The symbol or logo 106 disappears at one angle of incidence with the optically variable pigments 96 and 99 having the same color as for example green so that the symbol is masked at normal incidence but appears when the device is tilted to a different angle to cause color shifts to occur as for example a color shift from green to blue with one pigment and green to magenta with the other pigment. Thus by way of example there would appear a green square at normal incidence and at an angle, the symbol 106 would appear in blue on a magenta background as depicted in FIG. 19.”
Dr Moia states at paragraph 92:
“Referring to Figure 20 of D10 and the above description, D10 discloses a first colour-shifting layer (97) a second colour-shifting layer (98) having different reflective characteristics and having a visible colour. The substrate represents the second light absorbing layer. The partial light absorbing layer is also the colour shifting layer (98). That is, one single layer in D10, which is layer (98), performs the function of the two layers (second colour-shifting layer and partial light absorbing layer) of claim 1 and claim 2 of the Application. As noted at column 20, lines 43-65 of D10 this construction gives the same optical effect of the device of claim 1 or claim 2 of the Application.”
The second colourshifting layer cannot be considered a light absorbing layer between the surfaces of the two colourshifting layers. Consequently this feature of the independent claims is not disclosed in D10.
During the hearing, another embodiment of D10 was discussed at column 22 lines 5 to 37:
“Although the embodiment shown in FIGS. 21. 22 and 23 has been disclosed as being a hot stamp transfer device it should be appreciated that the same principles can be utilized in conjunction with a paint or an ink incorporating the optically variable pigments of the present invention.
From the foregoing, it can be seen that the paired optically variable articles of the present invention all utilize the same principal of having two interference designs having optically variable properties and that the paired optically variable designs have the same color at one angle of incidence and at all other angles have non-matching colors. Thus, in the case of pigments it can be seen that even though it is difficult to even replicate one of the pigments with its color shift to provide a pair of pigments in which the pair of pigments have the same matching color at the same angle would be much more difficult to replicate. Therefore the use of paired optically variable pigments contained in a printed image would make counterfeiting very difficult if not impossible. In accordance with the present invention it should be appreciated that these paired optically variable structures can be paired with another pair of optically variable pigment structures or paired with non-shifting pigments. Also, one interference optically variable pigment structure can be paired with a non-shifting pigment structure so that the non-shifting pigment structure matches the color of an optically variable pigment structure at a certain angle. Thus by example in FIGS. 21 and 22. the dot matrix can include a set of dots in registration having a pigment which is in the form of a non-shifting color which matches the color of a shifting pigment as for example green so that the composite would have an overall green color at one angle and at different angles there would be a number 20 in magenta against a green background.”
Figures 21, 22 and 23 are reproduced below:
This embodiment is of non-overlapping elements and thus does not disclose all the claimed features. The claims are novel in light of D10.
Inventive step [s 18(1)(b)(ii)]
The test for obviousness is whether it would have been a matter of routine to proceed to the claimed invention. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12 Justice Aickin stated:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
The Opponent argued that the claims lack an inventive step in light of the following documents:
D1 – WO 2008/043981 A1 (DE LA RUE INTERNATIONAL LIMITED) 17 April 2008
D10 – US 5,766,738 (PHILLIPS et al) 16 June 1998
D1 when combined with D2 – US2007/0241553 (HEIM et al) 18 October 2007
For completeness I will also consider the inventive step of the claims in light of D2.
Person skilled in the art
Both the experts who provided evidence, Mr Jotcham and Dr Moia, clearly have a great deal of experience in the field of security device technology and thus are each considered to have knowledge representative of a person skilled in the art.
The Opponent’s submissions state:
“Innovia submits that the person skilled in the relevant art is a person with higher level qualifications in physics, with a good knowledge of optically variable effects and their application to security devices.”
I am satisfied with this characterisation of a person skilled in the art.
The problem
The description states at page 1 lines 9 to 26:
“The increasing popularity of colour photocopiers and other imaging systems and the improving technical quality of colour photocopies has led to an increase in the counterfeiting of banknotes, passports and identification cards and the like. There is, therefore, a need to add additional authenticating or security features to existing security features. Steps have already been taken to introduce optically variable features into substrates used in such documentation that cannot be reproduced by a photocopier. There is also a demand to introduce features which are discernible by the naked eye but which are "invisible" to, or viewed differently, by a photocopier. Since a photocopying process typically involves scattering high-energy light off an original document containing the image to be copied, one solution would be to incorporate one or more features into the document which have a different perception in reflected and transmitted light, an example being watermarks and enhancements thereof.”
The description states at page 5 lines 1 to 4:
“It is an object of the present invention to provide an improved optically variable security device which has a distinctive and easily recognisable colourshifting security feature.”
In the absence of submissions on this point, the problem which the person skilled in the art would address is derived from these passages of the description. Thus, relying on the aforementioned passages, I consider the problem to be overcome is the need for optically variable security devices which have distinctive and easily recognisable effects to the human eye, but that effects would not be detectable by an imaging device (e.g. scanner or photocopier).
Ascertained, understood and regarded as relevant
As the art of security documents is competitive and well documented in patents, research papers, conference papers, and textbooks, I consider it reasonable that a person skilled in the art would review all these relevant sources of information.
The Applicant states at 9.9 of their submissions:
“The Opponent fails to provide evidence, other than by way of bare submission, that Lister and Heim could have been located by the hypothetical person skilled in the art. There is no evidence of the searches that could have been conducted by such a person to find that prior art, and Dr Moia’s evidence shows that he did not arrive at that prior art in the searches he conducted with very specific instructions.”
Documents D1, D2 and D10 all relate to security documents utilising the visible effects of optically variable (specifically colourshift) material (D1 is acknowledged in the description at page 4 lines 1 to 6 as relevant prior art) and thus are clearly relevant to the problem. Given that the person skilled in the art would routinely review technical documents including patents, I am satisfied that a person skilled in the art would have ascertained, understood and regarded as relevant these documents.
Is ‘colour matching’ common general knowledge?
The Opponent states in their submissions at paragraphs 58 to 60:
“Dr Moia indicates that D7 [‘Optical Document Security’, Ruldolf L. van Renesse, third edition, Artech House 2005] is a well known reference book in the field of document security and it is submitted that its contents form part of the common general knowledge in the field. Mr Jotcham does not dispute that D7 is a well known reference book in the field.
More specifically, the use of colourshift layers and light absorbing layers in security devices was well-known, and also formed part of the common general knowledge in the field.
The use of such layers in security devices, so as to provide images which are hidden at one angle of view, but visible at another angle of view, also formed part of the common general knowledge in the field.”
I do not accept the assertion that using layers of light absorbing material and colourshifting material to provide images which are hidden at one angle of view but visible at another angle of view was common general knowledge. Only D1 and D2 disclose this feature and I am not satisfied that these disclosures are enough to establish common general knowledge.
The more general concept of colour matching of two elements such that the colours match at normal incidence (thus hiding an image) and the colours are different at oblique incidence is known in three documents: D1, D2 and D10. I am not satisfied that the disclosure of this general concept in these three documents is enough to establish it to be common general knowledge.
D2 – US2007/0241553 (HEIM et al) 18 October 2007
D2 discloses a security element with an optically variable layer that imparts different colour impressions at different viewing angles. Paragraphs 82 and 83 state:
“For this, FIG. 8 shows the principle layer structure of a security element 90 according to the present invention, in which the optically variable layer includes one or more layers composed of liquid crystal material. For this, a smooth foil 92, for example a PET foil of good surface quality, is provided with an absorbent, dark background layer 94. To this background layer 94 is/are applied one or more layer/s 96-1, 96-2, ... 96-n composed of a cholesteric liquid crystal material. Between the liquid crystal layers, alignment layers and/or adhesive layers 98 can be provided that serve to align the liquid crystals in the liquid crystal layers or to join the individual liquid crystal layers and compensate for surface irregularities in the background.
A sub-area of the security element 90 is provided with a semi-transparent ink layer 100. Here, the semitransparent ink layer and the liquid crystal structure are coordinated with each other in such a way that, at a vertical viewing angle, they evoke substantially the same color impression. When the security element 90 is tilted, the liquid crystal structure presents the viewer with a changing color impression, while the color impression of the area provided with the ink layer 100 remains substantially constant.”
I note the purpose of the semi-transparent ink is given at paragraph 70:
“Thus, when an opaque printing ink is used for covering, the color impression of the vertical tilt color and the printing ink will be different even if the chromaticity coordinates (expressed by the red-green color information a and the blue-yellow color information b in the CIELab system) are nearly identical. When a semi-transparent ink layer is used, in the covering area 32, an additional light contribution of the thin-film element 20 is obtained such that its brilliance is increased and, in this way, the color impression of the non-covered area 36 is further approached.”
This disclosure acknowledges that the appearance of opaque printing ink is different from the liquid crystal layer and solves this problem by making the ink layer semi-transparent. This is in contrast to the present invention which uses another layer of colour shifting material covering both the partial light absorbing layer and first colour shifting layer, such that the appearance of the two regions are similar.
D2 states at paragraph 9:
“If an area of a security element exhibits merely a simple color-shift effect, this effect is often only a little conspicuous and is easily overlooked as an authenticity feature. Two adjoining areas that each display a color-shift effect having a different color change are indeed more conspicuous, but are often felt by viewers to be confusing.”
I consider that this teaches away from the entire device having a colourshift effect. Thus a person skilled in the art would not be motivated to add another colourshifting material over the device. Consequently the claims are inventive in light of D2.
D10 – US 5,766,738 (PHILLIPS et al) 16 June 1998

Mr Moia states at paragraph 171:
“D10 discloses all of the features of claim 1 of the Application except the second light absorbing layer. However, this is not a necessary feature to obtain the desired optical effect. It would have been obvious to the skilled person at the priority date of the application to employ a second light absorbing layer and that such a layer would not substantially change the optical effect of the device compared to that of D10.”
The Applicant states in their submissions at 9.12 to 9.14:
“Having read and understood the claimed invention, and having identified the missing ingredient in Phillips, Dr Moia posits that it would have been obvious to apply a second light absorbing layer to the device in Phillips. That hindsight and conclusionary analysis cannot be accepted as evidence in support of a lack of inventive step.
Even if adding a second light absorbing layer were obvious (which is not accepted), Dr Moia does not explain how it would have been obvious to use it in the strict manner required in claims 1 and 2 of AU’176 to produce the particular optical effect claimed. Instead, the closest he gets is to assert that such a layer “would not substantially change the optical effect” – thus conceding it would change, but failing to descend into the detail required to establish lack of inventive step.
As Jotcham rhetorically asked in respect of Dr Moia’s analysis of D11: “If, in Dr Moia’s opinion, the second colour shifting layer [or in the case of Phillips, the second light absorbing layer] “would not substantially change the optical effect of the device”, then why would it be obvious to use it?”. See also Jotcham at [91] and [92], which apply equally to Dr Moia’s analysis of Phillips.”
I am not satisfied that the person skilled in the art would be motivated to modify D10 such that a second light absorbing layer would be used in addition to the light shifting layer disclosed. Consequently the claims are inventive in light of D10.
The combined disclosure of D1 with D2
The Opponent argued that the information in disclosures of D1 and D2 was of the type that a person skilled in the art could have been reasonably expected to have combined pursuant to s 7(3)(b).
I have already found D2 teaches away from the entire device having a colourshift effect. Consequently I am not satisfied that a person skilled in the art would have combined the information in D1 and D2.
D1 – WO 2008/043981 A1 (DE LA RUE INTERNATIONAL LIMITED) 17 April 2008
Claim 1
The Opponent states at paragraph 68:
“If the Hearing Officer is of the view that Lister does not anticipate claim 1 of the Application because the feature of 'selecting the colour of the partial first absorbing layer to substantially match the colour of light reflected at a normal angle of incidence by the combination of the second colourshifting layer and the second absorbing layer' is not disclosed then this feature would be obvious to the skilled person based on the teachings of Lister combined with common general knowledge in the art. It would have been obvious to the skilled person to match the colours so as to obtain a device that had a hidden image at a normal angle of view. As explained by Dr Moia, the device of Lister shows two different colours at normal angle of view and two different colours when tilted away from the angle of incidence. There is no invention or ingenuity involved in selecting a colour match so that a single colour is displayed at a normal angle of incidence. As explained by Dr Moia, it would be no more than the result of routine experimentation. Mr Jotcham does not dispute this view.”
Dr Moia states at paragraph 107:
“Further, it would have been obvious to utilise a coloured absorbing layer based on the teachings of D1. At 30 October 2009 it was common knowledge to use coloured layers within security devices. Knowing that the partial absorbing layers could be of other colours and with the further knowledge that this gives rise to different apparent colour-shift colours, it is easy to deduce that matched colours can be used, especially when considered that patent documents were available before 30 October 2009 which mentioned explicitly such a colour match or coordination (e.g. when taken one of the documents D2 (at least abstract or paragraph [0083]) or D10 (at least column 20, lines 54-65 or claim 1)). It is no more than the result of routine experimentation to provide matched colours. I also note that claim 1 requires the colours to only substantially match rather than exactly match. This would make it even simpler for the skilled person to choose a colour that would fulfil all the elements of claim 1.”
Mr Jotcham states at paragraphs 48 and 49:
“In my opinion, the paragraph referenced above [D1 at page 12 lines 25 to page 13 line 4] teaches the reader to use a nonblack coloured absorbing material for the purpose of increasing the number of coloured regions available, whereas the Invention requires selecting the colour of the absorbing material to reduce the number of coloured regions (as it must do for the colour of the absorbing material to match the colour of the light reflected from the underlying layers at normal incidence).
Thus I do not consider that the paragraph gives rise to the colour matching feature of the Invention, and it seems clear that this possibility did not occur to the inventors at the priority date. In this regard I note that it apparently took the inventors an additional three years after the priority date to develop the Invention and file the Patent Application.”
D1 discloses at page 12 lines 25 to page 13 line 4:
“Whilst the use of a black, or very dark, substantially totally absorbing layer may give rise to the most strong colourshift effects, other effects may be generated by the use of a partially absorbing layer 14 of other colours or a combination of colours, giving rise to differing apparent colourshift colours. The use of different coloured partially absorbing layers 14 enables the number of optically variable regions to be increased further. The absorbing layers 14, 15 of the present invention may comprise a pigmented ink or coating or alternatively a non-pigmented absorbing dye can be used.”
I will now consider what ‘other effects’ using a partial absorbing layer of ‘other colours or a combination of colours’ would be considered routine variations by a person skilled in the art. I note that the ‘other effects’ must be ‘distinctive and easily recognisable’ as set out in the identified problem.
I consider that one purpose of the non-black partial absorbing layer is for “increasing the number of coloured regions available” as noted by Mr Jotcham, however this does not exclude the type of ‘other effects’ that may be generated. I consider that there are a limited number of distinct effects that can be achieved with layers of absorbent and colourshift materials – the different regions of the combined layers can be made such that when viewed the colourshift effect creates colours of contrasting, complementary, similar, or the same colour at various angles.
In routine experimentation with different partial absorbing colours, the person skilled in the art could be expected to experiment with images in the partial absorbing layer using each distinct colour of the spectrum. In doing so, the person skilled in the art would inevitably notice at least one of the coloured images disappearing as the device was tilted (and the colourshifting layer transitioning through a range of colours) such that, at one angle (or small range of angles), it substantially matched the colour of the partial absorbing layer. The person skilled in the art would readily identify the image disappearing as a ‘distinctive and easily recognisable’ effect.
Consistent with Dr Moia’s declaration, I consider that the person skilled in the art would then, as a matter of routine, be able to select a partial absorbing layer colour such that this effect occurs at any particular or predetermined angle. Although there may be an advantage in the effect occurring at a normal angle (e.g. the image would be ‘invisible’ to photocopiers), this does not constitute a surprising or unexpected result. Furthermore, in light of the identified problem, the person skilled in the art would be motivated to create the effect at the normal angle. Thus selecting this effect to occur at a normal angle is considered an obvious choice.
Consequently, claim 1 lacks an inventive step in light of D1.
Claim 2
D1 does not disclose the use of multilayer polymer as a colourshifting material. Dr Moia states at paragraph 109:
“Claim 2 requires that, the second colour-shift layer is a multilayer polymer. I consider this to be a mere technical equivalent to a liquid crystal layer. These were well known at the priority date of the Application. The Application refers at page 4 to the use of such multilayer polymers in 1994. Therefore claim 2 lacks an inventive step in view of the teachings of D1 alone or combined with the knowledge of a technical expert in the field or in view of information set out in D1 combined with information set out in any one of D2, D9, D10 or D11.”
The description states at page 4 lines 8 to 13:
“It has been found that multilayer polymer films provide a colourshift effect which is comparable to that of liquid crystals, yet are sufficiently strong to be self supporting. Such films are described in EP-A-1047549, US-B-5089318 and WO-A-9619347 and are formed of multiple layers (hundreds or thousands) of at least two different materials.”
The words ‘it has been found’ are somewhat ambiguous about whether the substitution of multilayer polymer film for liquid crystal was: a) already known, or b) just discovered by the applicant. To resolve this ambiguity, I have looked at the other prior art documents. For example, D2 (US 2007241553) discloses at paragraphs 4 and 5:
“To prevent reproduction of the security elements even with top-quality color copiers, the security elements exhibit multiply optically variable elements that, from different viewing angles, convey to the viewer a different image impression and show, for example, a different color impression or different graphic motifs.
In this connection, it is known to use security elements having multilayer thin-film elements in which the color impression for the viewer changes with the viewing angle, and when the security feature is tilted, shifts for example from green to blue, from blue to magenta or from magenta to green. Such color changes when a security element is tilted are referred to in the following as color-shift effects.”
D2 discloses at paragraph 81:
“In the exemplary embodiments described so far, the optically variable layer is always formed by a thin-film element having a color-shift effect. However, the combination of optically variable layer and semi-transparent ink layer according to the present invention is not limited to such embodiments, but rather can likewise be used for all other types of optically variable layers, as shown below using the example of a liquid crystal structure (FIG. 8) and a diffraction pattern (FIG. 9).”
D2 thus notes that “it is known to use security elements having multilayer thin-film” and equivalently other optically variable layers such as liquid crystal can be used. I consider the prior art acknowledgement of the known equivalence of multilayer polymer film and liquid crystal layers resolves the aforementioned ambiguity – the Applicant is also acknowledging the technical equivalence of these types of optically variable materials.
Given the technical equivalence of optically variable materials, a person skilled in the art would as a matter of routine substitute a multilayer polymer film for the liquid crystal layer disclosed in the main embodiment of D1. I note that claim 2 does not have the restriction that the colourshifting layer reflect visible colour at normal incidence. Thus I also consider that a person skilled in the art would as a matter of routine substitute the disclosed colour shifting layer composed of liquid crystal disclosed in the embodiment of D1 at page 19 line 8 to page 20 line 3 with a colour shifting layer composed of multi-layered polymer film.
Consequently claim 2 lacks an inventive step in light of D1.
Claim 3
Dr Moia states at paragraph 110:
“Claim 3 is dependent on claim 1 or claim 2, in which one or both of the colourshifting layers are partial layers. This is disclosed in D1 at least at page 13, second paragraph. Therefore claim 3 lacks an inventive step in view of the teachings of D1 alone or combined with the knowledge of a technical expert in the field or in view of information set out in D1 combined with information set out in any one of D2, D9, D10 or D11.”
D1 discloses at page 13 lines 17 to 28:
“In a further embodiment one or both of the liquid crystal layers 12, 13 is a partial layer. This can be achieved by gravure printing the liquid crystal material onto the carrier strip 17 or onto the first liquid crystal layer 12 using a printable polymerisable liquid crystal material as described in US-A-20040155221. Where the second liquid crystal layer 13, for example, is a partial layer, such that in certain regions the first liquid crystal layer 12 is exposed, then a further optically variable region can be created in which the wavelength of reflected light, at any given angle of incidence, is solely the reflected light from the first liquid crystal layer 12.”
Consequently, claim 3 when appended to claim 1 lacks an inventive step.
D1 discloses at page 14 lines 1 to 10:
“An alternative method of forming a partial second liquid crystal layer 13 is to remove regions of the exposed second liquid crystal layer 13 once the multilayer device 10 has been formed. This can be achieved by creating a weak 5 interface between the partial absorbing layer 14 and the first liquid crystal layer 12. If a mechanical force is applied such that the second liquid crystal layer 13 is pulled away from the first liquid crystal layer 12 it will be removed along with the absorbing layer 14 only in the 10 regions where this weak interface exists.”
I consider that this same method could equally apply to multilayer polymer film. Consequently, claim 3 when appended to claim 2 lacks an inventive step.
Claims 4, 5 and 6
A second light absorbing layer being a partial layer is disclosed in figure 10 and page 17 line 24 to page 18 line 22. Consequently, claims 4, 5 and 6 lack an inventive step when appended to either claim 1 or 2.
Claims 7 and 8
D1 discloses at page 15 lines 20 to 24:
“The absorbing layers 14,15 of the present invention, which may comprise a pigmented ink or coating or alternatively a non-pigmented absorbing dark dye, can be straightforwardly applied using any standard printing process for example gravure printing.”
Consequently, claims 7 and 8 lack an inventive step when appended to either claim 1 or 2.
Claim 9 and 10
D1 discloses at page 19 lines 8 to 14:
“In one example, illustrated in Figures 12a and 12b, and referring 10 to the cross-section in Figure 5, the first liquid crystal layer 12 reflects light in the infrared region of the electromagnetic spectrum when at normal incidence (Figure 12a) , appearing colourless and transparent, and reflects red light when tilted away from normal incidence (Figure 12b).”
I have found that multilayer film can be substituted for liquid crystal in claim 2. As the liquid crystal layer can be chosen to reflect at non-visible frequencies (e.g. infrared) at certain angles, I infer that multilayer polymer can also be similarly chosen to do so. Consequently, claims 9 and 10 lack an inventive step when appended to either claim 1 or 2.
Claims 11, 12 and 14
D1 discloses at page 22 line 27 to page 23 line 7:
“Security devices comprising liquid crystal materials are inherently machine-readable due to the polarisation properties and wavelength selectivity of the liquid crystal materials. The machine readable-aspect of the security device 10 of the present invention can be extended further by the introduction of detectable materials in the existing liquid crystal or absorbing layers 12,13,14,15 or by the introduction of separate machine-readable layers. Detectable materials that react to an external stimulus include but are not limited to fluorescent, phosphorescent, infrared absorbing, thermochromic, photochromic, magnetic, electrochromic, conductive and piezochromic materials.”
Consequently, claims 11, 12 and 14 lack an inventive step when appended to either claim 1 or 2.
Claim 13
D1 discloses an independent layer of machine readable elements at page 24 line 25 to page 26 line 14. Consequently, claim 13 lacks an inventive step when appended to either claim 1 or 2.
Claim 15
D1 discloses at page 11 lines 21 to 23:
“Adhesive layers 19 can be applied to the outer surfaces of the device 10 to improve adherence to the secure document 11.”
Consequently, claim 15 lacks an inventive step when appended to either claim 1 or 2.
Claim 16
D1 discloses at page 6 lines 23 to 29:
“The present invention provides a security device comprising a first layer of an optically variable liquid crystal material, a second layer of an optically variable liquid crystal material which exhibits different reflective characteristics to the first layer, and a partial first layer of a light absorbing material between the first and second liquid crystal layers.”
Consequently, claim 16 lacks an inventive step when appended to either claim 1 or 2.
Claim 17
Claim 17 is substantially the same scope as claim 2 and thus similarly lacks inventive step when appended to either claim 1 or 2.
Claim 18, 20
D1 discloses at Figures 1 and 4 and page 7 lines 4 to 17 a security document incorporating a partially embedded security device optionally visible in windows. Consequently, claims 18 and 20 lack an inventive step when appended to either claim 1 or 2.
Claim 19
D1 discloses at security device applied to a substrate at page 10 lines 12 to 21:
“In the case of a stripe or patch, the security device 10 is prefabricated on a carrier strip 17 and transferred to the substrate in a subsequent working step. The security device 10 can be applied to the document using an adhesive layer, which is applied either to the security device 10 or the surface of the security document 11 to which the device 10 is to be applied. After transfer, the carrier strip 17 is removed leaving the security device 10 exposed. Alternatively the carrier strip 17 can be left in place to provide an outer protective layer.”
Consequently, claim 19 lacks an inventive step when appended to either claim 1 or 2.
Claim 21
D1 discloses the use of the security device in valuable documents at page 9 lines 5 to 14. Consequently, claim 21 lacks an inventive step when appended to either claim 1 or 2.
Claims 22 and 23
D1 discloses the use of the security device within a document printed with identifying information at page 10 lines 28 to 31:
“In a preferred embodiment, and to increase the effectiveness of the 30 security device 10 against counterfeiting, the design of the security device 10 can be linked to the document 11 it is protecting by content and registration to the designs and identifying information provided on the document 11.”
Consequently, claims 22 and 23 lacks an inventive step when appended to either claim 1 or 2.
Claim 24
D1 discloses the method of manufacturing in Claims 40 and 41:
“40. A method of manufacturing a security device as claimed in any one of claim 1 to 33 comprising the steps of:
Applying a first layer of optically variable liquid crystal material to a carrier substrate;
applying a partial layer of light absorbing material to the first liquid crystal layer; and
applying a second layer of optically variable liquid crystal
material to cover the partial absorbing layer and the
exposed regions of the first liquid crystal layer.
41. A method of manufacturing a security device as claimed in claim 38 further comprising the step of applying a second layer of light absorbing material to the carrier substrate before the first liquid crystal layer is applied.”

These claims are a convenient summary of the process that is disclosed, and as would be understood by a person skilled in the art, in D1. I consider this to be a sufficient and enabling disclosure of the manufacturing process. Consequently, claim 24 lacks an inventive step when appended to either claim 1 or 2.
Claim 25
Dr Moia states at paragraph 132:
“[I]t was common practice at the priority date to utilise metallic layers in security devices. Metallisation aspects are also mentioned in D1, page 21, lines 1-17 and in claim 19.”
D1 discloses in Figure 13 a layer of metal (26) that covers a second layer of light absorbing material (27). Consequently, claim 25 lacks an inventive step when appended to either claim 1 or 2.
Claim 26
Page 17 lines 15 to 17:
“An adhesive layer 19 is applied to cover the partial absorbing layer 15 and exposed areas of the first liquid crystal layer 12.”
Consequently, claim 26 lacks an inventive step when appended to either claim 1 or 2.
Claims 27 and 28
Claims 27 and 28 (omnibus claims) are directed to a security device and method of manufacturing a security device “as hereinbefore described” which makes it difficult to determine precisely the scope of monopoly being sought. However, I note that the previous claims have covered a significant proportion of the disclosed inventions and since all previous claims have been found to lack an inventive step, it follows that the omnibus claims too lack inventive step.
Conclusion
Claims 1-28 lack an inventive step in light of D1 whether dependent claims are appended to either claim 1 or claim 2.
It is unclear as to whether any amendments could be made to provide the claims with an inventive step, however I am not certain that there is no patentable subject matter that could validly be claimed. Accordingly I allow the applicant an opportunity to propose suitable amendments to overcome the above findings within 2 months of the date of this decision.
Costs
Costs typically follow the event, however a variation of costs can be made to reflect actions of parties during the opposition. For example, the amendment to the specification or to the Statement of Grounds and Particulars may warrant a variation in costs. The amendment of the Statement of Grounds and Particulars added document D10 to bring the SGP in conformance with the evidence. As D10 was not determinative of the opposition, there is no need to vary the costs on the basis of the amendment.
Costs are awarded against the Applicant, De La Rue International Limited, according to Schedule 8.
Xavier Gisz
Delegate of the Commissioner of Patents