Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd

[1992] APO 39

official notice

decision of a delegate of the commissioner of patents

Application        :    No. 616346 in the name of NORWOOD INDUSTRIES PTY LTD

Title             :    Label Mounting Device

Action            :    Dismissal of Opposition

Decision:    Issued            .  Dismissal in part; Commissioner cannot dismiss a ground of opposition only in respect of certain inadequate particulars.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 616346 by NORWOOD INDUSTRIES PTY. LTD., Opposition by MACBIRD FLORAPRINT PTY. LTD. and a Request by the Applicant for Dismissal of the Opposition.

background

Patent application 616346 was advertised accepted on 24 October 1991. A notice of opposition was served by Macbird Floraprint Pty. Ltd. on the applicant, Norwood Industries Pty. Ltd., on 23 January 1992. On 21 February 1992 the opponent, in accordance with Regulation 5.4, served on the applicant a statement purporting to set out the grounds of opposition and the particulars relating to each ground. On 19 March 1992 the applicant invoked the provisions of Regulation 5.5 and applied to the Commissioner for "dismissal in part" of the opposition proceedings.

The matter of the request for dismissal was set down for hearing in Canberra on 26 May 1992. The applicant was represented at the hearing by Mr John Gibbs, patent attorney of the firm Phillips Ormonde & Fitzpatrick, Melbourne while the opponent waived its right to be heard and relied upon written submissions. I later allowed Mr Gibbs to file a written response to the opponent's submissions which were not available prior to the hearing.

ISSUE

The applicant's case for dismissal is based upon deficiencies it alleges in the opponent's statement of particulars, which reads as follows:

"1.  We are manufacturers of labels for use with plants, punnets and pots and consequently considers the grant of application 616346 to be directly relevant to our future commercial activities.

2. On 23 January 1992, we lodged a notice under the provisions of Section 59 of the Patents Act 1990 to oppose the grant of a patent in respect of Application 616346 in the name of Norwood Industries Pty. Ltd.

3.   We oppose grant on the following grounds:

a) Under Section 59(a), that the applicant is not entitled to grant of a patent for the invention in that at least one of the named inventors was not an inventor within the meaning of the Act and thus there is no clear devolution of title between the inventors, the original applicant and the current applicant, Norwood Industries Pty. Ltd.

b) Under Section 59(b), that the invention is not a patentable invention because it does not comply with Section 18(1)(b). It is alleged that the claimed invention was publicly disclosed before the priority date of the application. Furthermore, it is alleged that at least one prototype of the claimed invention was made available to the public before the priority date of the application.

c) Under Section 59(b), that the invention as claimed in Claims 7 to 9 is not novel due to prior publication of a variety of labels having the same features as those recited in the above claims. Reference is made to Australian Design Registrations 95509 and 99898. Furthermore, before the priority date of the application, the opponent sold labels falling within the scope of Claims 7 to 9 to Walls Nursery Pty. Ltd.

d) Under Section 59(c), that the accepted complete specification offends the provision of Subsections 40(2) and/or (3). For example, Claim 7 is ambiguous and indefinite by use of the expression "adapted to be mounted"."

In requesting "dismissal in part" of the opposition, the applicant provided the following reasons:

"1.  The opponent has listed four grounds of opposition at paragraphs 3a, b, c and d of the "Statement under Regulation 5.4" dated 21 February 1992. Ground A is that the applicant is not entitled to grant of a patent for the invention in that at least one of the named inventors was not an inventor. Dismissal of this ground of opposition is sought because the opponent has not provided particulars of the ground, as required by Regulation 5.4(1)(a)(ii), so the applicant has not been given fair notice of the case to be met.

2.   Even if the opponent were able to provide and prove particulars establishing the ground alleged in paragraph 3a, the ground cannot possibly amount to a ground for opposition or for refusing the grant of a patent.

3.   Ground B is that the invention was publicly disclosed and made available to the public before the priority date. Dismissal of this ground is sought because the opponent has not provided any particulars and the applicant has not therefore been given fair notice of the case to be met.

4.   Ground C relates to prior publication of claims 7 to 9, and particulars of two Australian design registrations are given. Reference is made to sales of labels, but no particulars of those labels are given. Dismissal of this ground of opposition is sought except insofar as it is particularized by reference to Australian design registrations 95509 and 99898.

5.   Ground D is that the complete specification does not comply with the requirements of Subsection 40(2) and/or (3). The words "adapted to be mounted" in claim 7 are particularized. Dismissal of this ground of opposition is sought except insofar as it is particularized by reference to the words "adapted to be mounted" in claim 7."

submissions

Mr Gibbs' submissions at the hearing on behalf of the applicant can be summarized as follows:

1. In paragraph 3 a) of the Reg. 5.4 statement the opponent has not stated which of the inventors is alleged not to be an actual inventor. Even if the opponent is able to prove that one or two of the inventors was not really an inventor that cannot be a ground for opposition or for refusing the grant of a patent because true inventors are named among the three even if one of them was not a true inventor. Furthermore, if the applicant has derived entitlement from each of the true inventors, together with a false inventor, then the applicant has still derived entitlement to the patent.

As there is nothing to support a ground of obtaining in paragraph 3 a) it should be struck out as it is not a proper ground of opposition.

1. Ground 3 b) does not state when the alleged prototype was made available and to whom it was made available, the sort of details needed to provide particulars. In this regard regulation 12.4(2) gives an indication of the level of detail required of particulars. Hence details of the person/s involved, date of occurrence and what was disclosed are the sort of particulars that are necessary to particularise a claim of this nature. All that is said in paragraph 3 b) is that the invention is not novel and has been published before the priority date. This is a statement of grounds not a statement of particulars.

1. Reference in ground 3 c) to a "variety of labels" is not sufficiently particularised. In relation to the sale of labels to Walls Nursery Pty Ltd the opponent has not particularised the date, what those labels were or who they were sold to and what the circumstances were. The applicant is however happy to accept as particulars the references to Design Registrations 95509 and 99898.

1. In relation to ground 3 d) the applicant contends that this is an ambit type objection, referring only to one particular which seems to be the expression "adapted to be mounted". If the opponent succeeds in using "any old thing" as a particularisation then that would appear to grant the opponent the right subsequently to introduce as many other particularisations as they like and the applicant has not been given fair notice of the case against them. The particularisation of the wording "adapted to be mounted" should be restricted to claims 7 to 9 only.

1. The policy behind the opposition provisions of the Patents Act 1990 is that oppositions should be resolved quickly. Under the old act oppositions dragged on, were costly and applicants were unsure of the case they would have to answer. The provisions of the 1990 Act attempt to prevent this.

1. The delegate of the Commissioner of Patents in his decision in relation to application No. 610369 by L'AIR LIQUIDE, SOCIETE ANONYME POUR L'ETUDE ET L'EXPLOITATION DES PROCEDES GEORGES CLAUDE stated at page 14:

"If an opposition is filed, the applicant has a right to know what the basis of the opposition is. I do not consider it appropriate for an opponent to make an ambit claim in their statement of the grounds of opposition, with an expectation of being permitted at some later stage to be able to particularize those grounds.  In my view, if an opponent cannot provide particulars in support of an alleged ground of opposition, the opponent has no basis to oppose on that ground.  The opposition should not proceed in respect of any ground of opposition that is not particularized;"

The hearing officer clearly indicates that it is possible to have an opposition dismissed in part, which is the present aim of the applicant.

1. This hearing would not have been necessary if it was possible to have an application for further and better particulars. The applicants only remedy in the face of an inadequate statement of grounds and particulars is to apply for dismissal of the opposition.

1. In relation to costs, the applicant has applied only for partial dismissal of the opposition and if partial dismissal is granted then the applicant should be entitled to costs.

The opponents written submission was made in the following terms:

"In paragraph 1 of the Application for Dismissal, the applicant seeks dismissal of Ground A because the opponent has not provided particulars of the ground.

Since serving the Statement of Grounds and Particulars, the opponent has noticed an error in the Statement of grounds of the opposition. The opposed application was lodged before 30 April 1991 but was accepted after that date. Under the transitional provisions of the 1990 Patents Act, the grounds of opposition that the opponent can rely on are governed by the provisions of the 1952 Act whilst the procedure of the opposition is governed by the regulations made under the 1990 Act. Thus, the statement of grounds should refer to the grounds of opposition under Section 59 of the Patents Act 1952 and not Section 59 of the Patents Act 1990. It is noted that the ground raised in paragraph 3(a) under Section 59(a) of the 1990 Act does not equate to an equivalent ground in Section 59 of the 1952 Act. Thus, the opponent withdraws the ground of opposition mentioned in paragraph 3(a) of the Statement under Regulation 5.4 dated 21 February 1992.

With respect to paragraph 3 of the Application for Dismissal, the applicant states that the opponent has not provided any particulars in support of the contention that the invention was publicly disclosed and made available to the public before the priority date. The statement of particulars that supports this ground of opposition was mentioned in paragraph 3(b) of the Statement under Regulation 5.4 namely,

"That at least one prototype of the claimed invention was made available to the public before the priority date of the application."

It is submitted that this statement of fact is an adequate statement of the particulars. Further details of what the opponent alleged to have happened would, it is submitted, constitute matters of evidence and not matters of material fact. At the time when the opposition was lodged, the opponent was aware of the allegation that the applicant had publicly demonstrated the invention before the priority date. Exact details of to whom and how this disclosure took place were difficult to obtain. The Statement of Grounds and Particulars has to be lodged within 30 days of the Notice of Opposition. The opponent has been able to expand and further particularise this ground based on evidence that it has obtained by conducting further research into the activities of the applicant before the priority date.

If the opponent can provide the evidence to support its contention then it is submitted that the opposition will succeed under the provisions of Section 59(1)(e) and (h) of the Patents Act 1952. A final determination of the opposition on these grounds can only be assessed on the evidence. Further consideration of this ground at this stage would constitute a review to the substantive issues of the case. It is submitted that the opponent is entitled to a reasonable period of time in which to collate and serve the sort of evidence that will satisfy allegations of this kind. The applicant states that it has not been given a fair notice of the case to be met. It is submitted that the statement that at least one prototype of the claimed invention was made available to the public before the priority date of the application was a clear sign post that the applicant was involved in commercial activities before the priority date that might jeopardise the validity of the patent.

In paragraph 4 of the Application for Dismissal, the applicant argues that no particulars of the label referred to in paragraph 3(c) have been given. The label that is referred to in paragraph 3(c) is the label that was referred to in the early correspondence to the attorneys which is attached hereto as exhibit "B". This is the label that the opponent had sold to the original applicant, Walls Nursery Pty. Ltd. a year before the priority date of the opposed application. It is submitted that to provide details of the exact label would constitute the sort of evidence that would be used to support this ground. The opponent has raised under paragraph 3(c) a substantive ground of opposition which could lead to refusal of Claims 7 to 9 under the provisions of Section 59(1)(e) and (h) of the Patents Act 1952.

In paragraph 5 of the Application for Dismissal, the opponent requests dismissal of the Section 40 ground of opposition except insofar as particularised by reference to the words "adapted to be mounted" in Claim 7. Whilst the opponent has not mentioned other passages of the opposed application that might offend Section 40 the opponent did refer to Section 49(2) and/or the reference to 40(3) of the 1990 Act. These subsections give the applicant notice of issues such as fair basis and failure to define the invention.

4.    General Submissions
It is well established that a serious opposition should not be defeated on merely procedural reasons. Kaiser Aluminium and Chemical Corporation v. The Reynolds Metals Company (1969) 120 CLR 136 is a High Court decision which is an authority for this proposition. The background and history of this opposition demonstrates the opponent's serious stand against the opposed application. The procedures under the 1990 Patents Act are virtually untried and in particular, the requirement for a Statement of Grounds of Opposition and Particulars is new ground. The parties have the Act and Regulations and Hearing Practice Notes that have recently been published by the Patents Office. A Patent Office decision on the interpretation and effect of Regulations 5.4 and 5.5 has recently been published, see L'air Liquid v. The Commonwealth Industrial Gases Limited (1992) AIPC 90‑872.

In Hearing Practice Note No. 5 relating to dismissal of an opposition, there is a quote from a passage taken from General Steel Industries v. Commissioner of Railways (NSW) & Others (1964) 112 CLR 125 at p.129. This quotation states in relation to summary dismissal, the following:

"The test to be applied has been variously expressed; 'so obviously untenable that it cannot possibly succeed'; 'manifestly groundless'; 'so manifestly faulty that it does not admit of argument'; 'discloses a case which the court is satisfied cannot succeed'; 'under no possibility can there be a good cause of action'; 'be manifest that to allow them' (the pleadings) 'to stand would involve useless expense'."

It is the opponent's contention that the grounds recited in paragraphs 3(b), (c), and (d) all relate to a tenable case. It is the evidence that the opponent has to serve that will provide the proof of whether the opponent has upheld its case. Thus, if the opponent serves declarations that clearly show that the prototypes of the patented invention were shown under no obligations of confidentiality to potential manufacturers before the priority date of the opposed claims, the claims will be held invalid under the provisions of Section 59(1)(e) and (h). Similarly, if the features of Claims 7 to 9 read onto the features of the label that was sold to Walls Nurseries before the priority date of the opposed application, those claims will also be held invalid under the provisions of Section 59(1)(d) and (h). The success of the opponent on this ground will depend on providing the evidence that supports the contention of the prior sale. This evidence would include a sample of the label in question. Furthermore, under the ground of opposition Section 59(1)(i), namely the provisions of Section 40, if there is any doubt regarding the interpretation and meaning of the expression "adapted to be mounted", there is a cause of action that the opponent should be entitled to take to a Hearing at which detailed submissions could be made regarding the ambiguity and indefiniteness of the claim terminology.

It is submitted that to dismiss the opposition on the grounds that the Statement under Regulation 5.4 is inadequate or insufficient is to fly in the face of the fact that there is a serious opposition on foot and that the opponent has raised tenable grounds of opposition. It is submitted that the Commissioner has a duty not to grant a patent with claims that are invalid and that the provisions of Regulation 5.5 should not be used to prevent the opponent from making its case. The Hearing Officer's decision in L'air Liquid v. The Commonwealth Industrial Gases Limited (1992) AIPC 90‑872 appears to give authority for partial dismissal of various grounds of the opposition, yet Regulation 5.9 allows the applicant to amend the statement under Regulation 5.4. The opponent has conceded that the ground raised in paragraph 3(a) of the Statement under Regulation 5.4 is not a ground of opposition under the 1952 Patents Act. The opponent also concedes that the Statement under Regulation 5.4 incorrectly lists grounds under the Patents Act 1990 when reference should have been made to the Patents Act 1952. It is submitted that this should not be a fatal flaw and the opponent should be entitled to amend its statement to correct this error by making reference to the provisions of Section 59(1)(d), (h) and (i) of the Patents Act 1952. It is the opponent's submission that taking the above into consideration, the original statement served under Regulation 5.4 should be an adequate statement in support of the grounds and particulars of opposition with regard to the grounds and particulars recited in paragraphs 3(b), (c) and (d). In the L'Air Liquide decision the Hearing Officer made reference to established law in Australia taken from General Steel Industries decision and Dey v. Victorian Railways Commissioners (1948‑49) 78 CLR 62. The Hearing Officer stated

"The striking out of a claim should only be undertaken where the case is so clearly untenable that it cannot possibly succeed."

5.    Costs
The opponent concedes that the applicant has been partially successful in its application for dismissal. Should the Commissioner uphold the opponent's submissions refusing the application for dismissal of the opposition the costs should be awarded to the opponent. In apportioning costs, the Commissioner is also asked to take into consideration the lack of notice that the opponent has been subjected to in this matter. At no stage did the Commissioner of Patents provide the opponent with a copy of the Application for Dismissal of the Opposition. The opponent was only able to obtain this document by requesting a copy from the applicant. The applicant wrote in an attempt to settle the matter after voluntarily amending some of the claims. The offer of settlement appeared to provide an opportunity for the opponent to amend the Statement of Particulars. Although the amended Statement of Grounds and Particulars (exhibit "F") was faxed to the applicant six days before the date of the Hearing, the opponent was only advised of the applicant's intention to proceed with the Hearing on the afternoon of the day before the Hearing. The opponent has made every effort to satisfy the applicant by giving further particulars as evidenced by exhibit "F"."

Mr Gibbs' written response to the opponent's submission restated a number of points made at the hearing and also included the following:

1. "We are not sure of the intended difference of grounds 3(b) and 3(c) in the Opponent's Statement of Grounds and Particulars. Both grounds appear to refer to prior publication. We therefore assumed that the two grounds should correctly have been stated as the single ground given in Section 59(1)(e) of the Patents Act 1952, namely that the invention, so far as claimed in any claim, was published in Australia before the priority date of that claim."

1. "Ground 3(b) includes the statement, "furthermore, it is alleged that at least one prototype of the claimed invention was made available to the public before the priority date of the application.". The Opponent has claimed at Page 4 of the Opponent's submission that this statement amounts to a particular. However, it clearly amounts to no more than a restatement of the ground with the words "at least one prototype" inserted. It clearly cannot be the intention of the Patents Act to allow such a statement to pass as a particular. The statement does not provide the name of the person alleged to have done the act, the date and place at which the act is alleged to have occurred, or a description that is sufficient to identify the act. The statement does not even identify the claim or claims to which the ground is alleged to relate."

1. "With regard to ground 3(d), the Opponent has submitted at the bottom of Page 5 of the Opponent's letter that the original Statement of Grounds has given the Applicant "notice of issues such as fair basis and failure to define the invention". However, it is quite clear from regulation 5.4 that the Applicant is entitled to receive particulars of the specific words and phrases in the specification which are alleged to offend the provisions of Section 40."

"A Section 40 objection is based on the information contained within the patent specification, and there is no reason why the Opponent cannot read the patent specification and highlight all aspects which support a contention that the specification does not fully describe the invention including the best method of performance or that one or more claims are not clear and succinct and fairly based on the matter described in the specification."

1. In relation to costs, "We note that the Hearing lasted for just under one hour. However, a further period of approximately two hours has been used in reading and responding to the Opponent's submissions which arrived after the Hearing. We therefore request that costs be allowed on the basis that the Hearing lasted for three hours."

decision

The provisions contained in Regulation 5.5 of the Patent Regulations of the Patents Act 1990 providing for dismissal of an opposition are:

"Dismissal of opposition

5.5.(1)  An applicant may:

(a)within 1 month of being served with a copy of a statement by an opponent under subregulation 5.4(1) ("filing of statement"); or

(b)if the complete specification in relation to an opposed application is re-examined under subsection 97(1) of the Act ("re-examination of complete specifications") - within 1 month from the day when the re-examination is completed under regulation 9.5 ("completion of re-examination");

request the Commissioner in the approved form to dismiss the opposition.

(2)As soon as practicable after a request is made the Commissioner must inform the opponent of the request having been made.

(3)The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition."

In the present case the applicant has requested dismissal in part of the opposition on the basis that the grounds mentioned in paragraphs 3 a) and b) in the Statement of Grounds and Particulars should be dismissed because they are not particularised and that the grounds of paragraphs 3 c) and d) should be dismissed except in so far as they are supported by certain particulars. The applicant also contends that ground a) is not a proper ground for opposition.

The general principle in considering a dismissal of opposition is that an opposition should only be dismissed if it is "so obviously untenable that it cannot possibly succeed" [General Steel Industries v. Commissioner of Railways (NSW) & Others (1964) 112 CLR 125 at p.129]. However I agree with both parties that the decision in L'air Liquid v. The Commonwealth Industrial Gases Limited (1992) AIPC 90‑872 provides authority for a dismissal in part of an opposition. In this decision the Hearing Officer stated that

"If an opposition is filed, the applicant has a right to know what the basis of the opposition is. I do not consider it appropriate for an opponent to make an ambit claim in their statement of the grounds of opposition, with an expectation of being permitted at some later stage to be able to particularize those grounds. In my view, if an opponent cannot provide particulars in support of an alleged ground of opposition, the opponent has no basis to oppose on that ground. The opposition should not proceed in respect of any ground of opposition that is not particularized"

The applicant has in para. 4 of its request under Regulation 5.5 sought dismissal of "Ground C", "except insofar as it is particularized by reference to Australian design registrations 95509 and 99898". Similarly in para. 5 the applicant asks for dismissal of "Ground D", "except insofar as it is particularized by reference to the words "adapted to be mounted" in claim 7". I do not, however, believe that it is open to the Commissioner under Regulation 5.5 to dismiss the opposition in this way. This action would, in effect, amount to a direction to strike out certain particulars or a direction for the opponent to amend the particulars in a specified way. In this regard I agree with the Delegate in the matter of The Dow Chemical Company v Mobay Corp. (1992) AIPC 90-895 who stated (my underlining):

"A possibility that was argued on behalf of Mobay is that an applicant could request the Commissioner to give a direction to the opponent to amend its particulars in a specified way. This would seem to place the Commissioner in the position of not just regulating the progress of the opposition, but of determining the case that the opponent will argue. This is not the proper role of the Commissioner in an opposition proceeding. The Commissioner is the administrator of the system, with a responsibility for keeping the opposition moving efficiently, and the arbiter in the dispute. If the Commissioner also determines what the wording of the particulars is to be, he or she is moving into the area which is the sole province of the opponent. This would be contrary to the clear intention of the Act. The only time that the Commissioner can intrude into the province of the opponent is if the particulars are totally inadequate, and then he or she can dismiss the opposition.

The same sentiment was expressed by Bowen LJ in Knowles v Roberts (1888) 38 Ch.D. 263 at pages 270-271:

"It seems to me that the rule that the Court is not to dictate to parties how they should frame their case, is one that ought always to be preserved sacred. But that rule is, of course, subject to this modification and limitation, that the parties must not offend against the rules of pleading which have been laid down by the law; and if a party introduces a pleading which is unnecessary, and it tends to prejudice, embarrass, and delay the trial of the action, it then becomes a pleading which is beyond his right."

Consequently, I do not believe that a direction to amend in a specified way is available under the Regulations."

The Delegate used similar reasoning in deciding that it was improper for the Commissioner to issue directions to strike out particulars. It follows that, despite the presence of a number of ineffective particulars, dismissal of an opposition with respect to a particular ground can only occur where none of the particulars fully support that ground. Furthermore, the Commissioner may not dismiss a ground of opposition only in relation to certain inadequate particulars.

Before considering each set of grounds and particulars, I note that the Statement under Regulation 5.4 is couched in terms of Section 59 of the Patents Act 1990. As sub-section 234(3) of the Patents Act 1990 applies to the present application the opposition cannot, strictly speaking, rely on the grounds given in the Statement. It is however proper in these circumstances to apply a purposive construction to the Statement of Grounds and Particulars as was stated in Borden, Inc. v Elkem A/S (1992) AIPC 90-893. I believe there is a clear inference in respect of paragraphs 3 a), b), c) and d) that the opponent intends to rely on Section 59(1)(a),(e),(h) and (i) of the Patents Act 1952, and accordingly I will consider the Statement of Grounds and Particulars on that basis.

With regard to paragraph 3 a), I do not consider that the particulars provided support the ground of opposition under Section 59(1)(a) and as the opponent has stated that it wishes to withdraw this ground, I will not consider it in further detail. I find that the opposition is clearly untenable in this respect and I hereby dismiss the opposition insofar as it relies on Section 59(1)(a) of the Patents Act 1952.

The particulars given in paragraph 3 b) of the Statement of Grounds and Particulars are that "It is alleged that the claimed invention was publicly disclosed before the priority date of the application. Furthermore, it is alleged that at least one prototype of the claimed invention was made available to the public before the priority date of the application". In this regard the applicant has submitted that opponent has failed to state when and to whom the alleged prototype was made available and suggested that Regulation 12.4(2) be used as a guide for the level of detail required of particulars. The applicant also suggested that in any case both paragraphs 3 b) and c) may relate to the same ground as given in Section 59(1)(e). For its part, the opponent states that further details of what is alleged to have happened would constitute matters of evidence and not matters of material fact and these details are difficult to obtain within the period allowed for filing the Statement of Grounds and Particulars. Similar submissions were made in relation to paragraph 3 c) although the applicant conceded that the reference to Design Registrations 95509 and 99898 in paragraph 3 c) provides sufficient particularisation.

In taking a purposive approach to the Statement of Grounds and Particulars I consider that paragraph 3 b) relates to the ground of opposition set out in Section 59(1)(e) of the 1952 Act and that paragraph 3 c) relates to both Section 59(1)(e) and (h). I find that the reference to Design Registrations 95509 and 99898 in paragraph 3 c) clearly provides sufficient detail to support the opposition on both of these grounds and there is therefore no basis on which to dismiss the opposition in relation to Section 59(1)(e) and (h). In deciding this matter I am not required to assess the sufficiency of the other particulars provided in paragraphs 3 b) and c) as dismissal is available only where the opponent has failed to provide any particulars that support the grounds of opposition.

A similar situation arises with respect to paragraph 3 d). The statement, "Claim 7 is ambiguous and indefinite by use of the expression "adapted to be mounted"" is sufficient to support the ground of opposition under Section 59(1)(i). Again, there is no basis on which to dismiss the opposition in relation to this ground.

Conclusion

I find that it is not open to me to dismiss a ground of opposition in respect of some but not others of the stated particulars. However, the opposition is dismissed insofar as it relates to Section 59(1)(a) of the Patents Act 1952 on the basis of that ground being insufficiently particularised and clearly untenable. The opposition continues in respect of Section 59(1)(e),(h) and (i).

Pursuant to regulation 5.8(1)(a)(iii), the time for filing evidence in support of this opposition is 3 months from the date of this decision.

Costs

The applicant has been only partially successful in this action and having regard to all the circumstances I make no award of costs.

Philip Spann
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Phillips Ormonde & Fitzpatrick, Melbourne

Patent attorneys for the opponent : Griffith Hack & Co, Melbourne