Marissa Pty Ltd v EPM Concrete Pty Limited Summary

official notice

decision of a delegate of the commissioner of patents

Application : No. 579968 in the name of MARISSA PTY LTD.

Title : BEAM / FLOORING SYSTEM.

Action : S 59 opposition by EPM CONCRETE PTY LIMITED; Final decision following amendment action.

Decision : Issued . Application and complete specification as amended to proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 579968 by MARISSA PTY LTD and Opposition under section 59 of the Patents Act 1952 by EPM CONCRETE PTY LIMITED.

background

In a decision dated 17 December 1991 I found the specification of application no. 579968 did not comply with section 40 and some of the claims were anticipated or obvious. I gave the applicant an opportunity to propose amendments in order to overcome these defects.

The applicant filed a request to amend the specification within the time allowed. After examination - taking into account the opponent's comments - the request was advertised in the Official Journal dated 1 October 1992. In the absence of opposition the request was allowed and advertised in the Official Journal dated 25 February 1993.

The opponent did not advise that it wished to be heard before the final decision.

decision

I am satisfied that the amendments remove the grounds for my earlier finding. In my opinion there is no lawful ground of objection to the application and complete specification. Therefore I direct that application no. 579968 proceed to sealing.

RAFIK EL-KILANY
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Grant Adams & Company, Brisbane.
Patent attorneys for the opponent : Davies Collison Cave, Sydney.

CaseChat Overview and Summary

In the case of Marissa Pty Ltd v EPM Concrete Pty Limited, Marissa Pty Ltd had applied for a patent for a beam/flooring system, which was opposed by EPM Concrete Pty Limited under section 59 of the Patents Act 1990. The decision of a delegate of the Commissioner of Patents was made in relation to the application number 579968. The central issue before the court was whether the patent application and its complete specification complied with the requirements of the Patents Act 1990, and if the earlier objections raised by the delegate could be overcome by the proposed amendments. The delegate had previously found that the specification did not comply with section 40 and that some claims were anticipated or obvious. However, Marissa Pty Ltd had been given the opportunity to amend the specification to address these issues.

The delegate examined the proposed amendments to the specification, taking into account the comments made by the opponent, and found that they adequately addressed the earlier objections. As a result, the delegate allowed the amendments and directed that the application and complete specification proceed to sealing. The opponent, EPM Concrete Pty Limited, did not raise any further objections or request a hearing before the final decision. The delegate concluded that there were no lawful grounds of objection to the application and complete specification as amended.

The court's decision was based on the thorough examination of the amended specification and the comments made by the opponent. The delegate found that the amendments successfully addressed the earlier objections raised in the decision dated 17 December 1991. The delegate was satisfied that the amended specification met the requirements of the Patents Act 1990, and therefore directed that the application proceed to sealing. The absence of further objections or a request for a hearing by the opponent further supported the delegate's decision.

In conclusion, the delegate of the Commissioner of Patents ruled that the patent application and complete specification, as amended, complied with the requirements of the Patents Act 1990 and that there were no lawful grounds of objection. The delegate directed that the application proceed to sealing, and the decision was made final following the amendment action. The orders of the delegate were that application number 579968 by Marissa Pty Ltd, and the complete specification as amended, proceed to sealing.

Marissa Pty Ltd v EPM Concrete Pty Limited

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established