Kangatech Pty Ltd v Vald Performance Pty Ltd - [2022] APO 31

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vald Performance Pty Ltd v Kangatech Pty Ltd [2022] APO 31
Patent Application: 2017204276

Title:A Testing and Training Apparatus

Patent Applicant: Kangatech Pty Ltd

Opponent:Vald Performance Pty Ltd

Delegate:R Subbarayan

Decision Date: 10 May 2022

Hearing Date: Written submissions completed on 2 March 2022

Catchwords: PATENTS - opposition under section 104 – allowability under subsections 102(1) and 102(2) considered – whether the amendments extend beyond the disclosure as filed – whether as a result of the amendments, the claims are not supported or not clear – amendments allowable – costs awarded against the opponent

Representation: Patent attorney for the applicant: Griffith Hack
Patent attorney for the opponent: Davis IP Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017204276

Title:A Testing and Training Apparatus

Patent Applicant: Kangatech Pty Ltd
Date of Decision: 10 May 2022
DECISION

The specification would not, as a result of the proposed amendments, extend beyond the disclosure of the specification as filed or lead to the claims to not in substance fall within the scope of the claims of the specification before amendment or to lack support or clarity.
I therefore allow the amendment request of 7 April 2021.
I award costs against the opponent.
REASONS FOR DECISION
BACKGROUND

Patent application AU2017204276 in the name of Kangatech Pty Ltd (the applicant) was filed on 23 June 2017. Following expedited examination, it was advertised as having been accepted on 9 July 2020. Vald Performance Pty Ltd (the opponent) filed a notice of opposition to the grant of the patent on 22 July 2020. A Statement of Grounds and Particulars was filed on 22 October
2020. This was then followed with their evidence in support that was filed on 22 January 2021.
On 18 February 2021, the applicant filed a request to amend the specification. This amendment request was advertised as being allowable on 1 April 2021.
On 7 April 2021, the applicant withdrew the amendment request and filed a new request to amend the specification. Although the opponent filed submissions that these amendments were not allowable, the examiner found the amendments to be allowable and this was advertised on 12 August 2021.
On 12 October 2021, the opponent filed a notice of opposition to the allowance of the amendment request. A Statement of Grounds and Particulars was filed on 12 November 2021.
As both parties were content for the hearing on the s104 opposition to proceed by way of written
submissions, the Commissioner issued a direction on 20 January 2022 setting out the time periods for the filing of written submissions.
The opponent filed their written submissions in support on 3 February 2022, the applicant filed their written submissions in answer on 21 February 2022 and the opponent filed their written submissions in reply on 2 March 2022.
SPECIFICATION
The following discussion of the invention as described is with reference to the specification as filed.
The present invention relates to an apparatus for measuring “the maximum voluntary contraction (MVC) of…

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: [2022] APO 31
Decision Date: 10 May 2022

CaseChat Overview and Summary

Kangatech Pty Ltd (the applicant) filed a patent application for a testing and training apparatus on 23 June 2017. Vald Performance Pty Ltd (the opponent) opposed the grant of the patent. Following a successful opposition, Kangatech filed an amendment request to the specification. The opponent then opposed the allowability of these amendments. The central issue in this decision was whether the proposed amendments extended beyond the disclosure of the specification as filed, or led to the claims not being supported or clear. The delegate of the Commissioner of Patents held that the amendments were allowable and awarded costs against the opponent. The decision hinged on the interpretation of the relevant statutory provisions and the disclosure in the specification as filed. The specification as filed described an apparatus with a rotatable instrument support that could be adjusted in height. The proposed amendments included a new dependent claim that defined the instrument support as being rotatably mounted to sleeves, which could be adjusted in height. The opponent argued that this new claim extended beyond the disclosure of the specification as filed, and that the amended claims lacked support and clarity. However, the delegate found that there was sufficient disclosure in the specification as filed for the sleeves to not form part of the instrument support. The delegate also found that the amended claims did not extend beyond the disclosure of the specification as filed, and did not lack support or clarity. The delegate therefore allowed the amendment request and awarded costs against the opponent.

Orders