Martec Pty Ltd v Beacon Lighting International Limited - [2015] APO 60

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Martec Pty Ltd v Beacon Lighting International Limited [2015] APO 60

Patent Application: 2012201780

Title:Improved combined ceiling fan and light fitting

Patent Applicant:  Beacon Lighting International Limited
Opponent:  Martec Pty Ltd
Hearing Officer:  P M Spann, Deputy Commissioner of Patents
Decision Date:  10 September 2015
Hearing Date:  Written submissions completed 3 September 2015
Catchwords:  PATENTS – inspection – whether direction allowing the opponent access to the applicants confidential evidence subject to conditions is valid – whether direction is inconsistent with the requirement for the evidence to be given to the opponent – direction made providing access to the evidence subject to conditions – direction that the evidence has been given to the opponent by allowing inspection.
Representation:   Patent applicant: Davies Collison Cave, Melbourne
Opponent:Griffith Hack, Melbourne

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2012201780
Title:Improved combined ceiling fan and light fitting

Patent Applicant:  Beacon Lighting International Limited
Opponent:  Martec Pty Ltd
Date of Decision:  10 September 2015
DECISION
I direct that the document titled “Confidential annexure: BM-3 to the 14 August 2015 declaration of Mr Barry Martens” is available for inspection by the legal representatives of Martec Pty Ltd on them giving an undertaking that the information contained in that document will only be used in relation to the present opposition and not be disclosed to any other person.
I further direct that for the purpose of r. 5.7(2) the document has been given to the opponent by allowing inspection.
I give notice to the opponent that the evidence in answer was completed on 14 August 2015 and therefore the date for the filing of evidence in reply under r. 5.8(4) is 2 months from the date of this decision.
I award costs in accordance with Schedule 8 against the opponent, Martec Pty Ltd.
REASONS FOR DECISION

This matter concerns evidence filed in the opposition to application 2012201780 to which a non-OPI order under r. 4.3(2)(b) has been made and whether the Commissioner has power to permit the opponent to inspect that evidence subject to conditions.
BACKGROUND
Patent application 2012201780 was filed in the name of Beacon Lighting International Limited (Beacon) on 27 March 2012 as a divisional application to 2008362348. The application was accepted and a notice of opposition filed by Martec Pty Ltd (Martec) on 24 October 2014. Consequently, the opposition is proceeding under the Patents Regulations as amended on 15 April 2013 by the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No 1).
Evidence in support of the opposition has been filed and the period for filing evidence in answer ended on 14 August 2015. On 3 August 2015 Beacon advised that it was considering filing as part of its evidence “confidential and commercially sensitive product sales information” and requested an order under r. 4.3(2)(b) that the sales information not be open to public inspection (OPI). It further requested a direction under s. 56 that the information only be made available to Martec’s legal representatives and only on the…

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.

Continue reading Martec Pty Ltd v Beacon Lighting International Limited

Details

AGLC: Martec Pty Ltd v Beacon Lighting International Limited [2015] APO 60
Case: [2015] APO 60
Decision Date: 10 September 2015

CaseChat Overview and Summary

In the case of Martec Pty Ltd v Beacon Lighting International Limited, the dispute revolved around the inspection of confidential evidence submitted in opposition to a patent application. Beacon Lighting International Limited, the patent applicant, sought to file confidential sales information as part of its evidence in opposition, requesting that it not be open to public inspection and that it only be accessible to Martec Pty Ltd's legal representatives under specific confidentiality undertakings. Martec opposed the proposed direction, arguing that the Commissioner lacked the power to permit inspection subject to conditions and that the Commissioner was obligated to provide a copy of all evidence to the other party in an opposition without qualification.

The legal issues before the court were whether the Commissioner had the power to permit inspection of a non-open-to-public-inspection document subject to conditions, and if so, the scope of such a direction. The Patents Act and Regulations do not provide for a disclosure and confidentiality regime specific to opposition proceedings, and the general public inspection and publication provisions apply unless exceptions are met. The Commissioner's powers to permit inspection of a non-open-to-public-inspection document under s. 56(2)(b) of the Patents Act were considered, as well as the requirement of r. 5.7(2) of the Patents Regulations for the Commissioner to give a copy of the evidence to the other party.

The court found that the Commissioner had the power to permit inspection of a non-open-to-public-inspection document subject to conditions, as this was consistent with long-established practice in the Patent Office and supported the intent to permit confidential information to be considered in proceedings before the Commissioner. The court also held that the requirement for the Commissioner to give a copy of the evidence to the other party could be fulfilled by permitting inspection under conditions. The direction made by the delegate allowing inspection by Martec's legal representatives subject to confidentiality undertakings was deemed appropriate, and the court awarded costs against Martec Pty Ltd in accordance with Schedule 8.

Orders