Innovia Security Pty Ltd v Giesecke & Devrient GmbH - [2016] APO 64

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2016] APO 64

Patent Application: 2010327032

Title:Security element, value document comprising such a security element and method for producing such a security element

Patent Applicant:                   Giesecke & Devrient GmbH
Opponent:  Innovia Security Pty Ltd
Delegate:  O L Haggar
Decision Date:  4 October 2016
Hearing Date:  12 July 2016 in Canberra
Catchwords:  PATENTS – opposition to the grant of a patent – construction of the claims – whether recourse to the body of the specification resolves a genuine ambiguity in the claims – whether the claimed invention is novel – whether the claimed invention involves an inventive step – evidence from appropriately skilled but inventive workers in the field – whether certain patent documents were either common general knowledge or section 7(3) information – whether the specification describes the invention fully – whether the claims are clear – opposition dismissed – whether costs should be apportioned in light of amendment of the specification during the opposition

Representation: Patent attorney for the applicant: FB Rice
Patent attorney for the opponent: Nigel Eugene Pereira of Watermark

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010327032

Title:Security element, value document comprising such a security element and method for producing such a security element

Patent Applicant: Giesecke & Devrient GmbH
Date of Decision: 4 October 2016
DECISION
I dismiss the opposition, and award costs according to Schedule 8 against Innovia Security Pty Ltd. Subject to any appeal, I direct that the application proceed to grant.
REASONS FOR DECISION
The patent application

Patent application 2010327032 was filed by Giesecke & Devrient GmbH (G&D) on 3 December 2010 under the provisions of the Patent Cooperation Treaty as international application PCT/EP2010/007369 which claims priority from two basic applications filed in Germany on 4 October 2010 and 4 December 2009 respectively. The application was advertised as accepted on 24 July 2014. On 27 July 2015 G&D filed a request to amend the specification and claims. The amendments were subsequently allowed unopposed.
The opposition
Innovia Security Pty Ltd (Innovia) filed a notice of opposition to the grant of a patent on the application on 24 October 2014 followed by a statement of grounds and particulars on 27 January 2015.
The opposition was heard in Canberra on 12 July 2016. Innovia was represented by Nigel Eugene Pereire of Watermark. David Ian Lindsay, IP Manager at Innovia, also attended as an observer. G&D was not represented at the hearing and instead relied solely on the written outline of submissions it had filed on 5 July 2016.
Grounds of opposition
The statement of grounds and particulars identifies multiple grounds of opposition. All grounds were pursued by Innovia at the hearing and are as follows:
- the claimed invention is not novel;
- the claimed invention does not involve an inventive step;
- the specification does not describe the invention fully, including the best method known to G&D for performing the invention;
- the claims do not define the invention; and

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: [2016] APO 64
Decision Date: 4 October 2016

CaseChat Overview and Summary

Innovia Security Pty Ltd opposed the grant of a patent on a security element to Giesecke & Devrient GmbH (G&D) on the grounds that the invention was not novel, did not involve an inventive step, and the specification was insufficient and the claims unclear. The opposition was dismissed. The court found that the invention was novel, involving an inventive step and that the specification was sufficient and the claims clear. Innovia relied on two prior art documents and alleged that the common general knowledge within the field included the use of reflective facets to produce a glitter optical effect. However, the court found that the common general knowledge did not include all of the features of the invention and that the invention involved an inventive step. The court also found that the specification was sufficient and the claims clear. Costs were awarded in favour of G&D.

Orders