Memcor Australia Pty Ltd (ACN 003 581 566) v GE Betzdearborn Canada Company

The case between Memcor Australia Pty Ltd and GE Betzdearborn Canada Company involves a dispute over the patentability of a microfiltration device. The matter was heard in the Federal Court of Australia. Memcor opposed the grant of a patent to GE for a microfiltration device, arguing that the invention did not fall within the scope of the claims in an earlier patent application filed by GE. The primary issue before the court was whether the invention claimed in GE’s application 855 fell within the scope of the claims in the accepted specification for application 364. Memcor argued that several key elements and restrictions in the earlier specification were not present in the later application, rendering the invention in the latter application outside the scope of the former.

The court considered the submissions and evidence provided by both parties, focusing on the technical specifications and claims of both patent applications. It examined the differences between the claims of the accepted specification for application 364 and those of application 855, particularly in relation to the microfiltration device's operational characteristics and structural components. The court concluded that despite the differences identified by Memcor, the invention claimed in application 855 still fell within the scope of the broader claims in the earlier specification. The court found that the broader terms and the absence of certain restrictive elements in the later application did not exclude the invention from the scope of the earlier patent claims.

In affirming the Commissioner’s delegate decision, the court dismissed Memcor’s grounds of appeal. It held that the invention in GE’s application 855 was indeed within the scope of the earlier patent application’s claims, thereby upholding the priority date determination. Consequently, the court dismissed Memcor’s opposition to GE's patent application and directed that the application proceed to grant. The court also ordered that the appeal be dismissed with costs, the decision of the delegate be affirmed, and the patent application proceed to grant.