Kabushiki Kaisha Universal v. Ainsworth Nominees Pty. Limited

In the Matter of the Patents Act 1952
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In the Matter of Application 539666 for a Patent by KABUSHIKI KAISHA UNIVERSAL
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In the Matter of Opposition thereto under Section 59 by AINSWORTH NOMINEES PTY. LIMITED.

DECISION OF A SUPERVISING EXAMINER OF PATENTS:
         In my decision in this matter dated 29 February 1988 I found that the opposition was successful on the ground that the specification did not comply with section 40. However I afforded the applicant an opportunity to amend its specification to overcome this deficiency.
         A request to amend under section 77 was duly filed by the applicant and following actions under sections 79 and 80 was eventually advertised pursuant to section 81 in the Official Journal on 24 November 1988. In the absence of opposition, this request was allowed on 6 March 1989 and the specification amended at that time in accordance with the request. An earlier request lodged on 14 April 1987 and pending at the time of the decision was formally withdrawn on 1 June 1988.
         The opponent advised on 22 March 1989 that it did not wish to be further heard on the section 59 opposition. I am therefore in a position to finalize the opposition.

I am satisfied that the amendments to the complete specification remove the ground of opposition which I found applicable in my earlier decision. I direct therefore that the application and complete specification as amended proceed to sealing.

(T.R. BRUHN)

Patent attorneys for the applicant: H.R. Hodgkinson & Co., Sydney

CaseChat Overview and Summary

Kabushiki Kaisha Universal, the applicant, sought to secure a patent for an invention under the Patents Act 1990 (Cth). Ainsworth Nominees Pty. Limited opposed the application, leading to a dispute over the specification's compliance with the statutory requirements. The matter was heard by a Supervising Examiner of Patents, whose decision was recorded on 29 February 1988. The Examiner found that the original specification did not comply with section 40 of the Patents Act, leading to a successful opposition. However, the applicant was granted an opportunity to amend the specification to address this issue.

The legal issues before the court involved determining whether the specification met the statutory requirements post-amendment. The applicant filed a request for amendment under section 77, which was subsequently advertised and allowed following the statutory process. The opponent, Ainsworth Nominees, indicated it did not wish to further pursue the opposition after the amendment. The key issue was whether the amended specification sufficiently complied with the legislative criteria to overcome the earlier objections.

The Supervising Examiner concluded that the amendments successfully addressed the deficiencies identified in the original specification. The Examiner was satisfied that the revised specification now complied with the statutory requirements, thereby removing the grounds for opposition. As a result, the application and the amended specification proceeded to sealing. The final decision, recorded on 6 March 1989, allowed the patent application to move forward, subject to the amended specification.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established