Liquid Retaining Structures (Aust) Pty Ltd v DELTA CORPORATION Ltd

official notice

decision of a delegate of the commissioner of patents

Application : No. 565757 in the name of LIQUID RETAINING STRUCTURES (AUST.) PTY. LTD.

Title: STRUCTURAL MEMBERS

Action : Opposition by DELTA CORPORATION LTD.
Final Decision.

Decision: Issued . Application directed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 565757 by LIQUID RETAINING STRUCTURES
(AUST.) PTY. LTD. and Opposition thereto by DELTA CORPORATION LTD.

background

The opposition in this matter was heard in Canberra on 14 June 1991, and I issued my decision on 30 December 1991. In that decision, I said:

"I find that the specification of Application No. 565757 as
accepted does not meet the requirements of section 40 of the
Patents Act 1952 and that claims 1 to 3 and 6, 7 & 9 are not
novel."

and I gave the applicant 60 days to ask for leave to amend the
specification to overcome the defects.

On the 27 February 1992 and 14 April 1992 respectively, the applicant filed proposed amendments under section 104 of the Patents Act 1990 and, pursuant to regulation 10.2(6) of the Act the opponent was invited to comment on the proposed amendments. The amendments were advertised on 1 October 1992 and allowed on 16 February 1993 with the allowance being advertised on 11 March 1993. Following the allowance of the amendments the opponent was offered a further opportunity to be heard on the application prior to the final determination. The offer was declined and no further submissions on the matter were filed by the opponent.

DECISION

I am satisfied that the amendments made overcome the defects identified in my earlier decision. Consequently, I am of the opinion that there is no reason why the application should not proceed to sealing.

CONCLUSION

I direct the application proceed to sealing.

J.M.Sellars
Delegate of the Commissioner of Patents

Patent Attorneys for the applicant: Fisher & Kelly, Milton, QLD.
Patent Attorneys for the opponent : Wray & Associates, Perth, WA.

CaseChat Overview and Summary

Liquid Retaining Structures (Aust) Pty Ltd sought to secure a patent for their invention, titled "Structural Members." Delta Corporation Ltd opposed the patent application, leading to a dispute which was heard by a delegate of the Commissioner of Patents. The opposition was initially decided on 30 December 1991, finding that the application did not meet the requirements of section 40 of the Patents Act 1952 and that certain claims were not novel. The applicant was given 60 days to propose amendments to the specification. After the applicant submitted proposed amendments and the opponent had an opportunity to comment, the delegate found that the amendments overcame the defects identified in the earlier decision.

The legal issues before the court involved whether the patent application met the statutory requirements for disclosure and novelty, as set out in the Patents Act 1990. Specifically, the court had to determine if the amendments to the specification were sufficient to address the deficiencies identified in the initial decision. The court also had to consider if the claims in the amended specification were novel and met the disclosure requirements.

The delegate of the Commissioner of Patents found that the amendments to the specification were satisfactory in addressing the deficiencies identified in the earlier decision. The delegate was satisfied that the amended claims were novel and met the statutory requirements for disclosure. As the opponent declined to make further submissions following the amendments, the delegate concluded that there was no reason to prevent the patent application from proceeding to sealing. The delegate directed that the application proceed to sealing, thus resolving the opposition in favour of the applicant.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established