Innovia Security Pty Ltd v Visual Physics LLC - [2014] APO 76

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 76

Patent Application: 2010226869
Title:Micro-optic security and image presentation system

Patent Applicant:  Visual Physics LLC
Opponent:  Innovia Security Pty Ltd
Delegate:  Dr S. K. Aggarwal
Decision Date:  25 November 2014
Submission Filed:  15 September 2014, in Canberra
Catchwords:  PATENTS – opposition to the allowance of amendments under subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990 – amended claims in-substance disclosed – amended claims in-substance fall within the scope of the granted claims and comply with subsection 40(3) – amendment allowed - cost in accordance with Schedule 8 awarded against the opponent.

Representation: Patent applicant: Shelston IP, Sydney, NSW
Opponent:Watermark, Hawthorn, Victoria

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010226869

Title:Micro-optic security and image presentation system

Patent Applicant: Visual Physics LLC
Date of Decision: 25 November 2014
DECISION
I have found that the proposed amendments satisfy the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990, and consequently the opposition fails on all grounds. Thus subject to appeal, I dismiss the opposition and allow the amendments.
I award costs against the opponent.
REASONS FOR DECISION
Background

Patent application 2010226869 (“the application”) directed to a Micro-optic security and presentation system was filed on 30 September 2010 as a divisional of 2004294182 by Visual Physics LLC (“the applicant”). The application proceeded to acceptance and was advertised accepted on 17 November 2011. A notice of opposition was filed in the name of Securency International Pty Ltd on 17 February 2012. A statement of grounds and particulars was filed on 17 May 2012 and the evidence in support was completed on 24 May 2013. The opponent advised the Commissioner of its change of name to Innovia Security Pty Ltd (“the opponent”) on 19 March 2013.
On 8 August 2013, the applicant filed a request to amend the complete specification together with a request to the Commissioner to stay the opposition proceedings. The request to stay the opposition proceedings was refused. On 22 August 2013, the applicant filed a further statement of proposed amendments. On 26 August, the applicant completed its evidence in answer. The opponent filed an intention to file evidence in reply on 26 September 2013.
On 2 October 2013, a delegate of the Commissioner directed the opponent to file their comments on the applicant’s proposed amendments by 13 October 2013. The opponent provided their comments on the proposed amendments on 14 October 2013.
On 24 February 2014, a delegate of the Commissioner granted leave to amend the complete specification of the application in accordance with the statement of proposed amendment filed on 8 August 2013 and 22 August 2013 by the applicant. The amendments were advertised on 13 March 2014 for the purpose of opposition.
A notice of opposition to the allowance of amendments was filed by the opponent on 13 May 2014 and a statement of grounds and particulars was filed on 13 June 2014. The grounds…

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 Visual Physics LLC

Details

AGLC: Innovia Security Pty Ltd v Visual Physics LLC [2014] APO 76
Case: [2014] APO 76
Decision Date: 25 November 2014

CaseChat Overview and Summary

In the case of Innovia Security Pty Ltd v Visual Physics LLC, the Australian Patent Office heard an opposition to amendments proposed by Visual Physics LLC to their patent application 2010226869 for a Micro-optic security and image presentation system. Innovia Security Pty Ltd opposed the amendments, asserting that they did not comply with the provisions of the Patents Act 1990. The central issue before the court was whether the proposed amendments satisfied the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Act. The court had to determine if the amendments were in substance disclosed in the original specification, fell within the scope of the claims before amendment, and complied with the requirement of being clear and succinct and fairly based on the matter described in the specification.

The court found that the proposed amendments met the criteria set out in the Act. It concluded that the amended claims were fairly based on the matter disclosed in the specification as filed, did not extend beyond the scope of the original claims, and complied with the clarity and succinctness requirements. Specifically, the court noted that the introduction of a new claim did not broaden the scope of the other claims and that both claims were clearly and succinctly described. Consequently, the opposition was dismissed, and the amendments were allowed, with costs awarded against the opponent.

Orders