Murray Joseph Wright v Ajax Davey Pty Ltd

In the Matter of the Patents Act 1952 - and - In the Matter of an Application under Sub-section 68B(l) for an Extension of the Term of Petty Patent 541459 in the name of MURRAY JOSEPH WRIGHT - and - In the Matter of a Notice under Sub-Section 68B(3) in the Name of AJAX DAVEY PTY. LTD.

DECISION OF A SUPERVISING EXAMINER OF PATENTS

In my decision in this matter dated 8 April, 1987 I concluded as follows:-

"I have found the claim offends against section 40 being unclear and not fairly based. I therefore refuse to extend the term of the grant at this stage. It does seem to me however that the deficiencies in the claim could be easily overcome by amendment: given the allowance of an amendment for that purpose, it would seem to me that an extension of the grant would then be justified. Accordingly I will allow the patentee 60 days from the date of this decision to apply for amendment of the specification".

On 2 June, 1987, the patentee lodged a section 77 request to amend its petty patent specification. Subsequent to proceedings under section 79, the request was advertised on 5 November, 1987 and allowed on 13 July, 1988, the amendments being incorporated into the specification at that time. Pursuant to the provisions of sub-section 68B(8), AJAX DAVEY was given fourteen days from 29 July, 1988 to advise whether it wished to be heard in relation to the specification as amended before the Extension of the Term matter was finally determined - no such advice was received.

I am satisfied that the amendments remove the grounds for the earlier findings. Furthermore, I am of the opinion that there is no ground amongst those specified in sub-section 68B(3) which now exists in relation to the petty patent. I therefore grant an extension of the term of petty patent 541459.

(T.R. Bruhn)

Supervising Examiner of Patents

27 SEP 1988

Patent Attorneys for the patentee: Davies & Collison, Melb. Patent Attorneys for the informant: Edwd Waters & Sons, Melb.

CaseChat Overview and Summary

The decision in the case of Murray Joseph Wright v Ajax Davey Pty Ltd involved a dispute over the extension of the term of petty patent 541459, originally held by Murray Joseph Wright. Ajax Davey Pty Ltd objected to the extension of the patent term, leading to proceedings under the Patents Act 1952. The Supervising Examiner of Patents, T.R. Bruhn, was tasked with determining whether the patent's term should be extended.

The central legal issue was whether the term of the patent should be extended in light of amendments made to the patent specification. Initially, the Supervising Examiner had refused to extend the patent term due to deficiencies in the patent claim, which were deemed unclear and not fairly based. However, the Examiner allowed the patentee 60 days to amend the specification. Following this, the patentee submitted an amendment request, which was eventually allowed and incorporated into the specification. The next step was to determine if the amended specification warranted an extension of the patent term, and whether Ajax Davey Pty Ltd had any valid objections to this extension.

In reaching the decision, the Supervising Examiner concluded that the amendments to the patent specification effectively addressed the earlier deficiencies. The Examiner found no valid grounds for Ajax Davey Pty Ltd to object to the extension of the patent term under the provisions of sub-section 68B(3) of the Patents Act. Consequently, the Supervising Examiner granted the extension of the patent term. This decision was made on 27 September 1988, after Ajax Davey Pty Ltd did not respond to the notice to be heard regarding the amended specification.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established