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Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd

Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd

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Case Copied 23 May 2006 34 min read

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OFFICIAL NOTICE

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Application : No. 662163 in the name of MODULINE PTY. LTD.

Title: Ducting System Assembly

Action: Opposition by ELECTRIC CABLE DUCT SYSTEMS PTY. LTD. under Section 104 of the Patents Act 1990

Decision: Issued 23 May 2006
Abstract

The amendments that were the subject of the opposition were filed in response to an adverse finding in a section 59 opposition. There had been a previous attempt to amend the complete specification after the opposition, but this amendment had been refused. The grounds of the present opposition were non-compliance with subsection 102(1) (claims matter not in substance disclosed), paragraph 102(2)(a) (the claims do not in substance fall within the scope of the claims before amendment) and paragraph 102(2)(b) (as a result of the amendment the complete specification does not comply with subsections 40(2) or 40(3)).

The invention relates to a ducting assembly for electric current carrying cable. The first item of amendment with which the opposition was concerned involved the deletion of the word “external”. This was held to be one of those unusual occasions, contemplated on the authorities, where the deletion of a word or integer from a claim does not result in new matter being claimed or the scope of the claim being expanded. The second item of amendment objected to by the opponent resulted in a reference to a chamber being isolated being substituted by a reference to a cable in the chamber being isolated. This was held to have been implicit.

Two minor issues of non-compliance with section 40 were also held to be not sustained.

Costs were awarded against the opponent.

PATENTS ACT 1990

DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS

Re:Patent Application No. 662163, in the name of MODULINE PTY. LTD. and an opposition by ELECTRIC CABLE DUCT SYSTEMS PTY. LTD. under Section 104 of the Patents Act 1990.

BACKGROUND

Patent Application No. 662163 in the name of Moduline Pty. Ltd. was advertised accepted on 24 August 1995. The application was opposed by Electric Cable Duct Systems Pty. Ltd. (ECDS). In his decision on the opposition (Electric Cable Duct Systems Pty. Ltd. v Moduline Pty. Ltd. [1998] APO 28 (issued 13 May 1998)) the delegate found that there were valid objections to the specification in relation to lack of novelty and non-compliance with section 40, and allowed the applicant the opportunity to amend.

To this end amendments under section 104 were filed by Moduline Pty. Ltd. on 10 July 1998, and further proposals for amendment were filed on 13 July and 31 August 1998. These amendments were advertised accepted on 22 October 1998. An opposition to these amendments was filed by ECDS on 18 January 1999. The decision in this opposition was issued on 9 November 2000 ([2000 APO 69]. It upheld the opposition in respect of the grounds of non-compliance with paragraphs 102(2)(a) and 102(2)(b) of the Patents Act.

Subsequently, on 8 December 2000 the applicant filed…

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: [2006] APO 19
Decision Date: 23 May 2006

CaseChat Overview and Summary

Moduline Pty Ltd sought to amend patent application No. 662163 in relation to a ducting system assembly for electrical cables. Electric Cable Duct Systems Pty Ltd opposed the amendments. The dispute was heard by E J Knock, a delegate of the Commissioner of Patents. The primary issues were whether the proposed amendments complied with subsection 102(1) of the Patents Act 1990 (Cth), paragraph 102(2)(a) and paragraph 102(2)(b), and section 40(2) and 40(3). The delegate found that the proposed amendments were allowable and dismissed the opposition. The opposition was also ordered to pay costs.

The invention related to a ducting system assembly for electrical cables. The first amendment concerned the deletion of the word “external” from the claims. The second amendment involved a change in the language to specify that it was the cable, and not the chamber, that was isolated. The third amendment concerned the use of the term “passageway” in relation to a displaceable portion of the inner wall. The opponent argued that these amendments claimed matter not in substance disclosed, broadened the scope of the claims, and did not comply with section 40 of the Patents Act.

The delegate considered the evidence and found that the amendments did not claim matter not in substance disclosed, did not broaden the scope of the claims, and complied with section 40. The deletion of the word “external” did not result in new matter being claimed or the scope of the claim being expanded. The change in the language to specify that it was the cable, and not the chamber, that was isolated was implicit in the specification. The use of the term “passageway” in relation to a displaceable portion of the inner wall was a normal English usage. The delegate dismissed the opposition and allowed the amendments. The opposition was ordered to pay costs.

Orders