Kenneth William Hope v Heggies Bulkhaul Ltd

[1997] APO 47

official notice

decision of a delegate of the commissioner of patents

Application  :          No. 643600 in the name of KENNETH WILLIAM HOPE

Title:          Soil substitute

Action:          Opposition by: HEGGIES BULKHAUL LTD.

Decision:          Issued            .

Abstract

Patent application refused following an earlier decision dated 15 April 1996.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 643600 by KENNETH WILLIAM HOPE, and opposition thereto by HEGGIES BULKHAUL LTD.

background

A notice of opposition to the grant of a patent on this application was filed by Heggies Bulkhaul Ltd on 18 February 1994 and the matter was heard on 26 October 1995.

In a decision dated 15 April 1996, I found that the claims of the specification did not define inventive or patentable subject matter and that there was a clarity deficiency.  I allowed the applicant a period of 60 days from the above decision date within which to propose amendments responsive to the adverse findings of the decision.

An appeal (following the grant of an extension of time to file) and a cross-appeal against the decision were filed with the Federal Court in June 1996.  All proceedings on the application in the Federal Court were, however, terminated by 17 April 1997.

Proposed amendments to the specification were filed on 14 June 1996. An adverse examiner's report on those proposed amendments issued on 19 July 1996.  The opponent filed comments on the proposed amendments.  A copy of the opponent's comments was sent to the applicant's attorney on 12 September 1996 together with a further examiner's report which invited a response to those comments.

It is my understanding that shortly thereafter, Mr Hope instructed the patent attorney firm of Davies Collison Cave, Sydney that he no longer wished them to represent him and that he obtained from them the relevant file for 643600 including copies of all relevant correspondence.

By letter from the Patent Office dated 24 April 1997, addressed to Mr Hope's last known home and business addresses, Mr Hope was advised:

"I note that you have not communicated with this Office at all concerning the aforesaid proposed amendments since they were filed over 10 months ago, let alone responded to the examiner's reports or comments by the opponent.  Thus there has been inaction over a considerable period on your part in relation to this matter.  Furthermore, whereas the amendments presently proposed go to the issue of clarity they do not on the face of it even attempt to address the patentability or inventiveness issues raised in the delegate's decision.

Given these circumstances, please be advised that unless additional proposed amendments, which on the face of it overcome all of the adverse findings of the delegate's decision, are received by this Office within one month from the date of this letter, the Commissioner will set the matter for a hearing with a view to formal refusal to grant a patent."

No response was received to that letter or to the subsequent letter from the Patent Office dated 28 July 1997 advising Mr Hope that a hearing in the matter had been set down for 27 August 1997.  Mr Hope did not appear on that date at the time and place set for the hearing.

CONCLUSION

Since my decision of 15 April 1996, proposed amendments have only been filed in response to my finding of lack of clarity. No amendments have been filed which address my findings of lack of inventive or patentable subject matter. Accordingly I refuse the application on the grounds that the invention as claimed lacks an inventive step and does not define patentable subject matter.

I award any costs that have arisen since the issuance of my decision of 15 April 1996, against the applicant.

A. Moore
Delegate of the Commissioner of Patents

Patent attorneys for the opponent : Spruson & Ferguson, Sydney