Mlning Technologies Inc v the Broken Hill Proprietary Company Limited - [1995] APO 23

official notice

decision of a delegate of the commissioner of patents

Application : No. 644257 in the name of MINING TECHNOLOGIES, INC.

Title: LAUNCH VEHICLE FOR CONTINUOUS MINING APPARATUS

Action: Opposition to grant by THE BROKEN HILL PROPRIETARY COMPANY LIMITED. Request to amend the statement of grounds and particulars.

Decision: Issued .
Abstract: Request refused. Issue of undue prejudice considered. Extra particulars arose incidental to the preparation of the case. Unnecessary delay in seeking a relevant amendment. Amendment would add inadequate particulars to the statement.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No.644257 by MINING TECHNOLOGIES, INC., Opposition by THE BROKEN HILL PROPRIETARY COMPANY LIMITED, and a request to amend the statement of grounds and particulars

background

Patent application number 644257 by Mining Technologies, Inc., (MTI) was advertised accepted on 2 December 1993. On 2 March 1994 a notice of opposition to the grant of a patent was lodged by The Broken Hill Proprietary Company Limited (BHP). The statement of grounds and particulars was served on 1 June 1994.

Evidence in support was due to be served by 1 September 1994. Two extensions of time extended this time till 8 November 1994. Part of the evidence in support was served on 21 September 1994 and the rest was served on 8 November 1994.

On 6 December 1994 the opponent requested an amendment to the statement of grounds and particulars. The applicant objected to this request.

A hearing was held in Canberra on 31 January 1995. The applicant was represented by Mr. Tony Smeeton of Davies Collison Cave, Sydney. The opponent was represented by Mr. Greg Munt of Griffith Hack & Co., Melbourne.

AMENDMENTS TO THE STATEMENT OF GROUNDS AND PARTICULARS

In support of its request to amend the statement of grounds and particulars the opponent stated that:

"The reason for requesting the amendment....is that in the course of preparing evidence-in-support of the opposition, we became aware of a significant amount of information relating to the activities of the opponent in the field of the opposed patent application extending over a considerable period of time before the earliest possible priority date of the opposed application. The information is relevant to the grounds of opposition that the alleged invention claimed in the opposed patent application does not comply with Sections 18(1)(a) or 18(1)(b).
The evidence-in-support of the First Amended Statement of Grounds and Particulars has been served on the applicant under cover of letters dated 21 September and 2 November 1994. In a letter dated 20 October 1994, the Applicant was advised that the Opponent would be amending the Statement of Grounds and Particulars as is now being effected."

To help determine the nature and extent of the changes being sought by the opponent I have summarised below the original statement, and the proposed amended statement. I note that Ground 3 (in the original statement of grounds and particulars) raises Section 40 issues and remains unchanged in the proposed amended…

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

AGLC: Mlning Technologies Inc v the Broken Hill Proprietary Company Limited [1995] APO 23
Case: [1995] APO 23
Decision Date: 21 April 1995

CaseChat Overview and Summary

In the case of Mining Technologies Inc v The Broken Hill Proprietary Company Limited, the court considered an application to amend a statement of grounds and particulars of opposition to a patent application. The opposition was filed by The Broken Hill Proprietary Company Limited against Mining Technologies Inc's patent application for a launch vehicle for continuous mining apparatus. The court was required to decide whether the amendments to the statement of grounds and particulars were allowable under the Patents Regulations 1991.

The court found that the proposed amendments sought to add new particulars for the grounds of manner of manufacture, novelty, and inventive step. The court concluded that the amendments would change the case the applicant had to answer and were therefore prejudicial in nature. The court also found that the amendments would unduly prejudice the applicant due to the unnecessary delay in seeking the amendment, the inadequate nature of the particulars, and the substantial change to the case to be answered. The court refused to allow the amendments and directed that the deadline to serve evidence-in-answer expire three months from the date of issue of the decision. The court awarded costs to the applicant.

In summary, the court found that the amendments to the statement of grounds and particulars were not allowable as they would unduly prejudice the applicant. The court considered factors such as the unnecessary delay in seeking the amendment, the inadequate nature of the particulars, and the substantial change to the case to be answered in reaching its decision. The court refused to allow the amendments and directed that evidence-in-answer be filed within three months of the decision.

Orders