Lynx Engineering Consultants Pty Ltd v Bradken Resources Pty Ltd

[2009] APO 22

ABSTRACTS OF DECISIONS

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application  :          No. 749848 in the name of LYNX ENGINEERING CONSULTANTS PTY LTD

Title:          Side Reinforced Bulk Material Transport Container

Action: Final determination of an opposition under Section 59 of the Patents Act by BRADKEN RESOURCES PTY LIMITED

Decision:          Issued  13 November 2009

Abstract

In a decision issued on 13 March 2007 it was found that certain claims lacked novelty.   Amendments have been filed and allowed that overcome the deficiencies identified in the decision, and do not introduce any new deficiencies.  Nevertheless, the application could not proceed to sealing at this time due to a pending appeal and cross-appeal against the decision.  

Subject to the outcome of the appeal and cross-appeal, the applicant can ask for a direction that the application proceed to sealing.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 749848 in the name of Lynx Engineering Consultants Pty Ltd and the final determination of an opposition under section 59 by Bradken Resources Pty Limited

BACKGROUND

1. Patent application 749848 in the name of Lynx Engineering Consultants Pty Ltd (Lynx) was opposed by Bradken Resources Pty Limited (Bradken).  On 13 March 2007, I issued a decision in which I found that the opposition succeeded only for the reason that claim1 and certain of its dependent claims lacked novelty (Bradken Resources PtyLimited v Lynx Engineering Consultants Pty Ltd [2007] APO 11). My decision is presently the subject of appeal and cross-appeal in the Federal Court (NSD 439 of 2007).

2. I allowed Lynx 60 days from the date of my decision to propose amendments to overcome these deficiencies.  The amendments proposed by Lynx were advertised on 1 November 2007, and opposed by Bradken on 31 January 2008.  The opposition to the amendments was subsequently dismissed by a Delegate of the Commissioner (Bradken Resources Pty Limited v Lynx EngineeringConsultants Pty Ltd [2009] APO 15 (18 August 2009)). The amendments have now been incorporated into the specification.

3. The present matter is the final determination of the opposition to the grant of a patent.  Both parties advised that they did not wish to be heard.

4. A final determination is an opportunity to examine whether the amendments to the specification overcome the deficiencies identified in my decision, and whether the amendments introduce any new deficiencies (ie. grounds of opposition that arise solely from the amendments, as opposed to pre-existing deficiencies).  Matters that were decided in my decision have been decided once and for all (subject to the appeal and cross-appeal), and are not open to challenge at this stage of the opposition to the grant of a patent.  This is made very clear in Perkin-Elmer Corp v Varian Techtron Pty Ltd 5 IPR 321 at 322-3.

   DECISION

5. I consider that all deficiencies identified in my decision have been overcome by the amendments to the specification.  The main effect of the amendments was to exclude claim 1 and replace it with a new claim based on independent claim 2 as it stood at acceptance, which I had found to be novel, with additional limitations.  It therefore follows that the novelty of the claims is no longer in issue.  Further, the Delegate who heard the opposition to the amendments found that they did not introduce any section 40 deficiencies.  I see no reason to conclude otherwise.

   CONCLUSION

6. I have found that the amendments to the specification have overcome all deficiencies identified in my decision, and have not introduced any new deficiencies.  I therefore find that application 749848 is in order to proceed to sealing.  However, in view of the pending appeal and cross-appeal against my decision, I cannot direct that the application proceed to sealing at this time. 

7. Subject to the outcome of the appeal and cross-appeal, Lynx can ask the Commissioner for a direction that the application proceed to sealing.

8. I make no award of costs in relation to this final determination.

   O L Haggar
   Delegate of the Commissioner of Patents
   13 November 2009

   Patent attorneys for the applicant: Watermark Patent & Trademark Attorneys, Melbourne 

   Patent attorneys for the opponent: Griffith Hack, Sydney