Mitsubishi Seiko Kabushiki Kaisha v. Eisen Und Drahtwerk Erlau Aktiengesellschaft Summary

In the Matter of the Patents Act 1952
‑ and ‑

In the Matter of Application No. 504094 for Letters Patent by MITSUBISHI SEIKO KABUSHIKI KAISHA
‑ and

In the Matter of Opposition thereto by EISEN‑UND DRAHTWERK ERLAU AKTIENGESELLSCHAFT.

FINAL DECISION OF A SUPERVISING EXAMINER OF PATENTS:
        In an interim decision in this matter dated 7 August, 1982 I found that the complete specification failed to comply with the provisions of section 40 of the Act and that the invention as claimed in claim 1 was not novel. The Applicant was given sixty days to request amendment of the complete specific‑
ation.
        On 6 October, 1982 the Applicant lodged a section 77 request to amend the complete specification.   Subsequent to proceedings under sections 79 and 80 the request to amend was advertised on 26 June, 1982.   A notice of opposition to the request to amend was lodged on 23 September, 1982 but was subsequently withdrawn.   Following withdrawal of the section 82 opposition the request was allowed and the amendments were incorporated into the complete specification.
        I am satisfied that the amendents remove the basis for my earlier finding that the specification did not comply with section 40 and that the invention as claimed in claim 1 was not novel.

I am of the opinion that there is no lawful ground of objection to the application or complete specification and, accordingly, I direct that the application and amended specification may proceed to sealing, subject to any appeal.
Costs in the matter of the section 59 opposition are as determined at the time of and as set out in my interim decision.

(W.S. PATTERSON)

CaseChat Overview and Summary

The case involves Mitsubishi Seiko Kabushiki Kaisha, the applicant, and Eisen Und Drahtwerk Erlau Aktiengesellschaft, the opponent. The dispute revolves around the application for a patent and the subsequent opposition by the opponent. The matter was heard by a Supervising Examiner of Patents. The applicant sought to amend its patent application following an interim decision that the complete specification did not comply with section 40 of the Patents Act 1990 and that the invention was not novel. The opponent had initially opposed the amendment but later withdrew the opposition.

The legal issues before the court included whether the amendments made to the patent application were sufficient to address the earlier findings that the specification did not comply with section 40 and that the invention was not novel. The court also needed to determine if there were any lawful grounds of objection to the amended application and specification.

The court found that the amendments removed the basis for the earlier findings, and there were no lawful grounds of objection to the application or the complete specification. Consequently, the court directed that the application and amended specification could proceed to sealing, subject to any appeal. The costs of the section 59 opposition were as previously determined.

The court's decision ultimately allowed the patent application to move forward, subject to the possibility of appeal, and clarified that the amendments addressed the previously identified issues.

Mitsubishi Seiko Kabushiki Kaisha v. Eisen Und Drahtwerk Erlau Aktiengesellschaft

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established