Nicola Leonardis v. John Wolfe Stalban - [1992] APO 38

official notice

decision of a delegate of the commissioner of patents

Application : No. 615580 in the name of NICOLA LEONARDIS

Title: Improvements relating to foundation reinforcement support chairs.

Action: Opposition by JOHN WOLFE StALBAN under section 59 (Patents Act 1952)

Decision: Issued . Opponent failed to establish the grounds of opposition specified in their statement of grounds and particulars. Claims found not novel. Applicant given opportunity to amend.
Discussion of the application of regulation 5.11, and of the effect of statement of grounds and particulars on conduct of the opposition. Reference to a direction issued under regulation 5.10(1)

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 615580 by NICOLA LEONARDIS, and opposition thereto under section 59 (Patents Act 1952) by JOHN WOLFE StALBAN

background

Patent application 615580 was applied for on 7 October 1988 as provisional application no. PJ0824. The application was completed under section 41 (Patents Act 1952) by the lodgement of a complete specification on 6 October 1989, and was allocated the number 42724/89. The application is titled "Improvements Relating to Foundation Reinforcement Support Chairs"

The application was advertised as accepted on 3 October 1991. Consequently, this opposition falls to be determined under section 59 of the Patents Act 1952, and Chapter 5 of the Patents Regulations 1991; in fact it is the first opposition to be determined under the procedures of Chapter 5 of the Patents Regulations under the Patents Act 1990.

A notice of opposition was filed by Mr. StAlban on 11 November 1991, together with a statement of 'Grounds and Particulars'.
The statement of grounds and particulars is as follows:

"The Reinforcement Bar Spacer Company has been manufacturing for years prior to the application date a support chair for supporting reinforcements comprising a body comprised of plastics material, the body including a central turret, which includes upwardly open slots, being defined by the edges of the wall, having a part which is narrower located above a part which is wider and further characterised in that these upwardly open slots are adapted to interengage with gripping effect a reinforcement rod or rods. It follows we believe that this application for a patent has no novelty whatsoever having been already manufactured and offered for sale by ourselves prior to date of application."

On Dec. 11 1991 Mr. StAlban filed a copy of correspondence sent to the applicant's attorney on Dec. 9. The covering letter stated "We have today complied with the requirements of regulation 5.8(1)..". There was subsequent correspondence between the Patent Office and Mr StAlban concerning the material he had filed. On 4 May 1992 Mr. StAlban filed a statutory declaration reciting substantially the text of the statement of grounds and particulars, together with 3 exhibits (although the accompanying letter indicates the presence of only two. - I also note here that at the hearing the applicant asserted that he had not received the exhibits.) This correspondence culminated in my issuing,…

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 38
Decision Date: 27 July 1992

CaseChat Overview and Summary

In the matter of Nicola Leonardis v. John Wolfe Stalban, the dispute revolved around the validity of a patent application for improvements relating to foundation reinforcement support chairs. The case was heard under the Patents Act 1952, and the opposition was filed by John Wolfe Stalban against Nicola Leonardis's patent application number 615580. The key issue before the court was whether the claimed invention was novel and if the opposition grounds raised by Stalban were substantiated.

The court had to determine the applicability of regulation 5.11, which allows the Commissioner to refer to documents available in the Patent Office, and how the statement of grounds and particulars affected the conduct of the opposition. The court ruled that regulation 5.11 could not be invoked to consider material that should have been included in the opposition's evidence, but the court also had to consider the documents provided by Stalban under a bar-to-sealing action. The court found that Stalban had not provided sufficient evidence to establish that the claimed invention lacked novelty, as the documents were not publicly available before the priority date of the patent application.

The court concluded that Stalban failed to establish the grounds of opposition and that the invention claimed in the patent application was not novel. However, the court allowed Leonardis 60 days to amend the specification to potentially overcome the novelty issues. The court did not award costs as Stalban's evidence was instrumental in determining the lack of novelty. This decision concluded the opposition proceedings in favour of Leonardis.

Orders