L'Air Liquide v CIG Ltd - [1992] APO 1

official notice

decision of a delegate of the commissioner of patents

Application : No. 610369 in the name of L'AIR LIQUIDE, SOCIETE ANONYME POUR L'ETUDE ET L'EXPLOITATION DES PROCEDES GEORGES CLAUDE

Title: Prepared Insecticidal Mixtures and Insecticide Treatment Process

Action: Request under regulation 5.5 for dismissal of an opposition

Decision: Issued . Opposition dismissed in respect of those grounds of opposition which were not supported by particulars.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 610369 by L'AIR LIQUIDE, SOCIETE ANONYME POUR L'ETUDE ET L'EXPLOITATION DES PROCEDES GEORGES CLAUDE, Opposition by THE COMMONWEALTH INDUSTRIAL GASES LIMITED and a Request by the Applicant for Dismissal of the Opposition

background

Patent application 610369 was advertised accepted on 16 May 1991. A notice of opposition by The Commonwealth Industrial Gases Limited under section 59 of the Patents Act 1952 was served on the applicant, L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude on 16 August 1991. On 13 September 1991 the opponent, in accordance with Regulation 5.4, served on the applicant a statement purporting to set out the grounds of opposition and the particulars relating to each ground. The applicant on 11 October 1991, invoking the provisions of Regulation 5.5, requested the Commissioner to dismiss the opposition.

The matter of the request for dismissal was heard in Canberra on 18 November 1991. Appearing for the applicant was Mr Paul W. Jones, patent attorney of the firm Phillips Ormonde & Fitzpatrick; appearing for the opponent was Mr Leon K. Allen, patent attorney of the firm Shelston Waters.

Issue

The applicant's case for dismissal is based upon the deficiencies it perceives in the opponent's statement of particulars. The full Regulation 5.4 statement of grounds and particulars is as follows:

"GROUNDS OF OPPOSITION

The invention as claimed is not a patentable invention because it does not comply with section 59, paragraphs (1)(e), (1)(f), (1)(g), (1)(h) and (1)(i) of Part V of the Patents Act 1952.

STATEMENTS OF PARTICULARS

The invention as claimed by at least claim 1 is not a patentable invention because:

(i)The pressurization of insecticidal mixtures or other liquid phase aerosol mixtures with gaseous nitrogen or similar gases is part of the common general knowledge in Australia, and

(ii)The invention lacks novelty and an inventive step when compared to Australian patent specification 494198 together with the common general knowledge feature of pressurization discussed in (i).
The specification does not comply with the requirements of section 40 because the claims are not clear and succinct and fairly based on the matter described in the specification."

Since this is the first occasion that a request under Regulation 5.5 has proceeded to a hearing, it is appropriate to set out in full the reasons given in the applicant's Application for Dismissal of Opposition:

"Our reasons for making this request are as follows:
Applicant seeks dismissal of the whole opposition and on each and every ground of opposition raised for the following reasons:
1.The…

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: [1992] APO 1
Decision Date: 30 January 1992

CaseChat Overview and Summary

In the matter of L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v The Commonwealth Industrial Gases Limited, the applicant sought the dismissal of an opposition to patent application 610369 on the basis of deficiencies in the opponent's statement of particulars. The central issue before the court was whether the opponent had complied with the requirements of Regulation 5.4 of the Patents Regulations, which mandates that the opponent must serve and file a statement setting out the grounds of opposition and the particulars relating to each ground. The court found that the statement of particulars did not provide adequate support for several grounds of opposition, leading to a partial dismissal of the opposition.

The court's reasoning was grounded in the analysis of the statement of particulars and its compliance with Regulation 5.4. The court noted that the statement of particulars failed to provide material facts supporting grounds of opposition related to manner of manufacture, obviousness, and specification requirements. However, the statement did provide material facts for grounds of prior publication and lack of novelty. The court also considered the policy behind the new opposition regulations, emphasizing the importance of expeditious processing and the requirement for a full and proper presentation of the opponent's case. The court concluded that the opposition should proceed only in respect of the grounds for which particulars had been provided, dismissing the opposition in part. The applicant was awarded 50% of the costs of the action.

Orders