Lazaros Minas v Brooklite Pty Ltd - [2016] APO 90

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Lazaros Minas v Brooklite Pty Ltd [2016] APO 90

Patent Application: 2008258278

Title:Liquid waste disposal unit

Patent Applicant:                   Brooklite Pty Ltd
Opponent:  Lazaros Minas
Delegate:  R Subbarayan
Decision Date:  23 December 2016
Hearing Date:  7 March 2016 and 19 July 2016, in Melbourne;

Catchwords:  PATENTS – section 59 – opposition to grant of patent – whether claims are not novel by reason of prior use – whether claims lack inventive step – whether applicant obtained invention from opponent – entitlement to the invention – whether claims are fairly based – whether claims are entitled to priority date – grounds not made out – costs awarded

Representation: Patent applicant: Ben Fitzpatrick of Counsel instructed by Nadia Odorico of Griffith Hack
Opponent:Kerry Chrysiliou and Allen Chan of Chrysiliou IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008258278

Title:Liquid waste disposal unit

Patent Applicant: Brooklite Pty Ltd
Date of Decision: 23 December 2016
DECISION
The opposition is unsuccessful. The claimed invention is not anticipated by prior use. It is also inventive and fairly based. The applicant is also entitled to the invention.
Costs are awarded according to Schedule 8 against the opponent Lazaros Minas.
Subject to any appeal, I direct that the applicant proceed to grant.
REASONS FOR DECISION
BACKGROUND

Application 2008258278 in the name of Brooklite Pty Ltd (the applicant) was filed on 6 June 2008 as an international application (PCT/AU2008/000816) and claims an earlier priority date from priority application US 60/943007 filed on 8 June 2007. Following examination, the application was advertised as accepted on 26 June 2014. Grant of the patent has been opposed under section 59 of the Patents Act by Lazaros Minas (the opponent). The Statement of Grounds and Particulars (SGP) of the opposition was filed on 29 December 2014.
Evidence in support was completed on 30 March 2015 and the evidence in answer was completed on 30 June 2015.The opponent did not file any evidence in reply but however amended the SGP on 1 September 2015 on the basis of information that came to light in the evidence in answer filed by the applicant. The matter was heard on 7 March 2016. A few days prior to the hearing, on 4 March 2016, the opponent filed new evidence along with a request for the Commissioner to have regard to this new evidence under the provisions of regulation 5.23. At the hearing both parties presented submissions as to whether I should or should not bring this new evidence into the proceedings.
Post hearing, based on the submissions from the parties and having had regard to this evidence I decided to bring this new evidence into the proceedings and gave the parties an opportunity to file evidence in answer and evidence in reply. This further evidentiary stage was completed on 17 May 2016 and at the request of the parties, a further hearing took place on 19 July 2016 to hear submissions in relation to the new evidence.
GROUNDS OF OPPOSITION
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: [2016] APO 90
Decision Date: 23 December 2016

CaseChat Overview and Summary

Lazaros Minas opposed the grant of a patent to Brooklite Pty Ltd for a waste disposal unit for collecting waste liquid entrained with particles from a waste liquid source. The applicant’s patent application was opposed on various grounds including novelty, inventive step, entitlement and fair basis. The delegate of the Commissioner of Patents dismissed the opposition and found that the claimed invention was not anticipated by prior use and did not lack an inventive step. The invention was also fairly based and the applicant was entitled to the invention. The opponent was ordered to pay costs to the applicant. The opposition was dismissed and the applicant was directed to proceed to grant. The decision was made by R Subbarayan, the delegate of the Commissioner of Patents.

The key issues in the case were whether the claimed invention was anticipated by prior use, whether it lacked an inventive step, whether it was fairly based and whether the applicant was entitled to the invention. The evidence showed that the opponent had not strictly proved that the claimed invention was anticipated by prior use or that the applicant was not entitled to the invention. The evidence also showed that the claimed invention was not obvious in light of the common general knowledge and was fairly based on the specification as filed. The decision was based on the evidence and submissions from both parties and the relevant legal principles and authorities. The outcome was that the opposition was unsuccessful and the applicant was entitled to proceed to grant.

Orders