Mackenzie Richard Dowling v Riverton Engineering Co

[1993] APO 51

OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application        :  No. 621806 in the name of MACKENZIE RICHARD DOWLING

Title:  Absorbing Pole

Action:  Objection to extension of term under S.28 by RIVERTON ENGINEERING CO.

Decision           :   Issued
  Claims valid, term extended.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Petty Patent No.621806 by MACKENZIE RICHARD DOWLING, application for extension of term, and objection thereto by RIVERTON ENGINEERING CO.

BACKGROUND

Application No 87783/91 was filed on 12 November 1991 by Mackenzie Richard Dowling for a petty patent entitled "Absorbing Pole". Petty Patent No 621806 was sealed on the application on 6 February 1992. On 26 March 1992 the patentee applied for an extension of term and on 1 December 1992 Riverton Engineering Co. (the "informant") filed notice under sub-section 28(1) of the Patents Act 1990 and filed evidence in support of the notice. On 30 March 1993 the patentee filed evidence-in-answer, and a hearing was set down for 26 May 1993. Both parties indicated that they would not be attending the hearing, and the patentee filed written submissions instead.

THE SPECIFICATION

The specification indicates that the invention relates to energy absorbing poles such as street light poles designed to crumple upon impact by a motor vehicle. Claim 1 defining the invention reads:

"An energy absorbing pole comprising a tube which, in use, is stood projected from the ground and which is provided with a pattern of slits in its wall, the pattern extended upwardly from ground level, the slits comprising elongate slots in the wall of the tube arrayed with their elongate length in lines along the tube wall, the lines extended axially, the pattern of slits comprising a plurality of first and second alternating lines of slits in the wall, the first lines spaced about the wall having their slit lengths substantially equal to slit spacing, the second lines having slit spacing therein substantially longer than slit length, every second line of the plurality of first and second lines extending to a greater distance above ground level."

The specification refers to prior Australian patent specification 546648, which is for a similar impact absorbing pole; the only difference between the two poles being the arrangement of slots in the walls. The present specification states that "the object of the slots is to establish an energy absorbing character for the pole", that "it is an object of the present invention to provide a pole of the above type with improved energy absorbing characteristics" and that the pattern of the invention "is found by testing to provide good impact qualities".

GROUNDS OF OBJECTION & THE EVIDENCE

In its notice under S.28(1) the informant alleged that the petty patent was invalid because it was not novel, did not involve an inventive step and did not comply with S.40.

The notice recognises that Patent No 546648 was considered by the examiner during prosecution of the patent application, and adds "we do not believe that the Patent Office would have been able to properly consider the importance and relevance of that citation without assistance from a person skilled in the art." Thus the notice refers to a declaration, yet to be filed, "from a person in our client's organization who is able to attest to the knowledge and understanding of a person skilled in the art ..."  The notice then goes on to submit that the different arrangement of slots in the petty patent

. does not provide a substantial contribution to the working of the invention,

.   is a mere workshop variation, and

.lacks an inventive step in the light of the common general knowledge.

The informant's notice also submits that the petty patent specification is insufficient because the invention has not been fully described, and that the claims are not clear and not fairly based.  With regard to insufficiency the notice states:

"... we submit that where the skilled addressee in reading a patent specification is directed to a prior art version of the device of the invention and is told that the invention about to be described constitutes an improvement to that prior art device, then if the specification fails to provide a description for the skilled addressee of an `invention' that provides such an improvement, then the specification is bad as not having `fully' described the invention."

A declaration by Gregory James Bartlett, the informant's patent attorney, was received with the notice under S.28; this declaration inter alia refers to the petty patent and "re-writes" claim 1 by breaking it into component integers.

The declaration from the person skilled in the art, referred to above and in the S.28 notice, was not filed. In a letter to the Office dated 7 January 1993 the informant's attorney stated "...no further evidence will be forthcoming."

The evidence-in-answer comprises a declaration by the patentee, Mackenzie Richard Dowling. Mr Dowling states inter alia that
.   he has been involved in the design and manufacture of lighting and other poles for the past 11 years
.   computer programmes have been used to determine the arrangement of slots described in the petty patent
.   the arrangement provides for high wind load whilst maintaining a satisfactory degree of impact absorption.

DECISION

On the matter of inventive step, I have Mr Dowling's declaration which suggests to me that some practical difficulties have been overcome in designing the arrangement of slots in his patent. See Gadd & Mason V Mayor of Manchester (1892) 9 RPC 516 at 524 and Willmann v Petersen (1904) 2 CLR 1 at 17. Also, I have no contradictory evidence from the informant. On the matter of novelty, the petty patent specification prima facie suggests that the arrangement of slots is an essential feature of the invention, and again I have no evidence to the contrary. Thus I am satisfied that the petty patent claims are novel and involve an inventive step.

On the matter of insufficiency, I agree that the specification of an improvement invention should be clear as to what is the improvement which constitutes the invention. See Nelson v Hillmark (1991) AIPC 90-768, Sami S Svendsen Inc v Independent Products Canada Ltd (1968) 119 CLR 156, and Intellectual Property in Australia- Patents, Designs and Trade Mark Law, by Lahore et al, at [1.6.014]. In the present case though I think the invention is sufficiently distinguished from the prior art: the prior art is clearly identified, by reference to the patent number; and as indicated above, the petty patent specification suggests at several places that the present invention has some advantages over the prior art. This case can be distinguished from  Nelson v Hillmark, supra, where the specification had scant reference to the prior art.

CONCLUSION

I find that the claims of Mr Dowling's petty patent specification are valid, and accordingly, under S.69(2), I extend the term of petty patent No 621806. Applying the usual practice of costs following the event, I award costs in the matter against Riverton.

John Welsh
Delegate of the Commissioner of Patents

Patent attorneys for the patentee: Grant Adams & Co, Brisbane

Patent attorneys for the informant: Wray & Associates, Perth