Legal Research
Cases
Magnum Magnetics Corporation

Magnum Magnetics Corporation

Link copied

Case Copied 11 January 2019 21 min read

Contents

On this page

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Magnum Magnetics Corporation [2019] APO 3

Patent Application: 2018201253

Title:Adhering Systems

Patent Applicant:                   Magnum Magnetics Corporation
Delegate:  Isaac Tan
Decision Date:  11 January 2019
Hearing Date:  Written Submissions due 11 November 2018

Catchwords: PATENTS – section 223 – extension of time to file a divisional application – error or omission pursuant to section 223(2)(a) – circumstances beyond the control pursuant to section 223(2)(b) – intention appears to be based on the realisation that relevant prior art could be avoided – the benefit of hindsight does not constitute an error or omission – no evidence that an error or omission reside with agent or attorney – grounds have not been made out – extension of time refused

Representation: Ernest Graf, Patent Attorney of Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018201253

Title:Adhering Systems

Patent Applicant: Magnum Magnetics Corporation
Date of Decision: 11 January 2019
DECISION
The requested extension of time is refused.
REASONS FOR DECISION
Background

Australian patent application 2018201253 (application) was filed on 21 February 2018 in the name of Magnum Magnetics Corporation (Applicant), as a divisional of AU 2016200401 and AU 2011227401 (‘401 application). The application claims a priority date of 15 March 2010, which is in dispute for reasons which will later become apparent.
The application comes with a somewhat complicated history. AU 2016200401 is a divisional of AU 2013202357, which claims a priority date of 14 February 2012 from international application PCT/US2013/026119 filed under the Patent Cooperation Treaty (PCT). Examination had commenced on AU 2016200401 and AU 2013202357 and in both cases, a single examination report was issued, but no response was filed. Consequently, AU 2016200401 and AU 2013202357 failed to gain acceptance within the required 12 month period. Relevantly, the examination reports both raised United States Patent Application 2011/0223428 A1 entitled ‘Adhering Systems’, in the name of Douglas William Rummer, having a publication date of 15 September 2011, and lists Magnum Magnetics Corporation as an Assignee (Rummer). Relevantly, for reasons that will later become apparent, Rummer is one of three documents listed as priority documents.
However, the ‘401 application claims a priority date of 15 March 2010 from international application PCT/US2011/028535. Relevantly, PCT/US2011/028535 lists three provisional documents under Priority Data, one of which is the same document that Rummer claims priority from. A Notice of Acceptance was issued on 25 January 2016 which indicated that the ‘401 application had been accepted on 13 January 2016, and was advertised in the Supplement to the Australian Official Journal of Patents (the journal) on 4 February 2016.
On 21 February 2018, when the application was filed, the Applicant submitted a request under section 223 of the Patents Act 1990 (the Act) for an extension of time to claim divisional status from the ‘401 application. The Applicant requested to be heard on 11 October 2018. On 23 October 2018, a delegate of the Commissioner responded stating:
Hearings relating to…

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.

Keep reading for free

Create a free CaseChat account to read Magnum Magnetics Corporation and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2019] APO 3
Decision Date: 11 January 2019

CaseChat Overview and Summary

Magnum Magnetics Corporation applied to the Australian Patent Office (IP Australia) for an extension of time to file a divisional patent application. The application was for a patent titled 'Adhering Systems'. The application was a divisional of earlier applications, and sought to claim priority from an international application filed in 2011. The Applicant sought an extension of time on the basis that there was an error or omission by the Applicant, or by their agent or attorney, which caused the failure to perform the relevant act, namely to file the divisional application within the stipulated time. The Applicant also submitted that there were circumstances beyond their control which prevented the filing of the divisional application. The delegate of the Commissioner of Patents refused the application. The delegate found that the Applicant had not provided a full and frank disclosure of the circumstances leading to the failure to claim priority from the relevant international application. The Applicant had remained unaware of the invalid priority until the present application was filed, despite the fact that it had been identified as an 'X' document in the international search report dated 2 June 2013 for International Application No. PCT/US2013/026119, and cited as relevant prior art in the first examination report for AU 2013202357 dated 24 April 2014. The delegate found that the Applicant’s inaction was inconsistent with there having been an intention to amend the priority of the grandparent application at the relevant time. The delegate found that the evidence suggests that it is a likely plausibility that the realisation was formed with the benefit of hindsight, which does not constitute an error or omission. The delegate also found that there were no circumstances beyond control that led to the failure to either amend the priority of AU 2016200401. The delegate concluded that the request for an extension of time was refused.

Orders