Michael Stephen Frawley v Hunter Douglas Limited - [1992] APO 49

official notice

decision of a delegate of the commissioner of patents

Application : No. in the name of

Title :

Action :

Decision : Issued .

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 587900 by MICHAEL STEPHEN FRAWLEY and opposition thereto under Section 59 of the Patents Act 1952 by HUNTER DOUGLAS LIMITED

background

Patent application No.587900 was lodged on 18 June 1987 as a complete specification in respect of provisional specification No.PH 6990 lodged on 20 June 1986 and provisional specification No.PH 9438 lodged on the 10 October 1986.

Acceptance of the application was advertised on 31 August 1989. Hunter Douglas Limited lodged a notice of opposition on 23 November 1989.

The matter came to hearing in Canberra on 9 July 1992.
Mr. Michael J Grant, patent attorney of Patent Attorney Services represented the applicant and Mr Peter R Heathcote, patent attorney of Shelston Waters represented the opponent.

As the application was both lodged and advertised accepted before the commencement of the Patents Act 1990, the provisions of section 234(3) of the 1990 Act, and Regulation 23.3, are applicable and therefore the opposition is in substance determined in accordance with the relevant provisions of the Patents Act 1952 and the regulations thereto.

Although the notice specified the grounds of opposition as those listed in paragraphs (a) to (i) inclusive of sub-section 59(1) of the Patents Act 1952, the submissions at the hearing were limited to the grounds specified in paragraphs (e), (f), (g), (h) and (i); i.e. prior publication, not a manner of manufacture within the meaning of section 6 of the Statute of Monopolies, obviousness, lack of novelty and non-compliance with section 40.

EVIDENCE

Prior to the hearing, the opponent had filed Evidence-in-Support and Evidence-in-Reply in the form of statutory declarations and accompanying documentary evidence provided by Mr. Peter Rex Heathcote, patent attorney and Mr. Allan Robert Pavey and Ms. Julie Somerfield, Projects Manager and Technical Products Manager respectively of Hunter Douglas Limited while the applicant, Michael Stephen Frawley, had filed Evidence-in-Answer in the form of a statutory declaration and accompanying documentary evidence.

THE SPECIFICATION

The specification commences by stating that

"This invention relates to the mounting of panels,
such as wall and ceiling panels, in buildings."

Then follows a discussion of the prior art and its associated disadvantages.

The objects of the invention are subsequently set out as follows:

"It is an object of the present invention to provide
an improved panel mounting system which can be
simple to erect and effective in operation.

It is a further object of the present invention to
provide a ceiling structure which is relatively
simple to erect."

Following the objects of the invention is a first consistory statement corresponding to the first independent claim, claim 1, with preferred features exemplified and a second consistory statement corresponding to the second independent claim, claim 19, again with preferred features exemplified.

Embodiments of the invention are followed by the claims which read as follows:

1.…

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.

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Details

Case: [1992] APO 49
Decision Date: 1 September 1992

CaseChat Overview and Summary

Michael Stephen Frawley (the Applicant) lodged a patent application for a panel mounting system, which was opposed by Hunter Douglas Limited (the Opponent) on the grounds of non-compliance with section 40 of the Patents Act 1952, prior publication, obviousness, lack of novelty, and not being a manner of manufacture. The dispute was heard in Canberra on 9 July 1992 by a delegate of the Commissioner of Patents, who found in favour of the Opponent on the ground of non-compliance with section 40 and dismissed the other grounds as not proven. The Applicant was granted 60 days to amend the specification to overcome the defect and costs were awarded against the Applicant. The Opponent was represented by Mr. Peter R. Heathcote, patent attorney of Shelston Waters, and the Applicant by Mr. Michael J. Grant, patent attorney of Patent Attorney Services.

The court found that the complete specification did not meet the requirements of section 40 of the Patents Act 1952 because it contained claims that were unclear and not fairly based on the description. The claims were considered ambiguous and did not clearly define the invention, making it uncertain what competitors could or could not do. The court also found that the expert evidence provided by the Opponent was not admissible as it was not strictly confined to rebutting the Applicant's evidence. Therefore, the court allowed the Opponent's opposition on the ground of non-compliance with section 40 and dismissed the other grounds as not proven.

The court acknowledged that the Applicant had 60 days to amend the specification to overcome the defect and awarded costs against the Applicant. The decision was made in accordance with the relevant provisions of the Patents Act 1952 and the regulations thereto. The Applicant's patent attorney was from Patent Attorney Services, Box Hill, and the Opponent's patent attorney was from Shelston Waters, Sydney.

Orders