Pagoda Holdings Limited (Formerly Nomad Structures International Limited) v Tensile Structures Pty Ltd (Formerly Heyring Proprietary Limited)

official notice

decision of a delegate of the commissioner of patents

Application : No. 575494 in the name of PAGODA HOLDINGS LIMITED

Title: MODULAR TENT STRUCTURES

Action: S.59 opposition by TENSILE STRUCTURES PTY LTD; final decision following amendments.

Decision: Issued . Application to proceed to sealing.

patents act 1990

decision of a delegate of the commissioner of patents

Re:Patent Application No. 575494 by PAGODA HOLDINGS LIMITED (formerly NOMAD STRUCTURES INTERNATIONAL LIMITED) and opposition under S.59 of the Patents Act 1952 by TENSILE STRUCTURES PTY LTD (formerly HEYRING PROPRIETARY LIMITED).

background

In my decision in this matter dated 14 April 1992, I found the opposition succeeded in that the specification did not comply with S.40 and that one claim was not novel. I gave the applicant an opportunity to propose amendments to overcome these defects. On 5 May 1992 notice of appeal (No WAG 55 of 1992) was filed, by the opponent, in the Federal Court of Australia. On 12 June 1992 the patent applicant requested leave to amend the specification; and in this light the Federal Court decided that it was inappropriate to continue with the appeal proceedings until the amendments were dealt with.

When a decision has been appealed, the Commissioner will, with the agreement of the parties, consider any proposed amendments, but will not allow them unless all parties and the court agree to them being allowed.

In this case, the parties agreed to allowance of the amendments, on 17 February 1993 the court ordered that the appeal be discontinued, the request to amend was advertised on 25 February 1993, and allowance of the amendments was advertised on 1 July 1993. Also, the opponent has not indicated that it seeks to be further heard in the matter of the opposition.

decision

I am satisfied that the amendments remove the grounds for my earlier findings and I now consider that there is no lawful objection to the application and complete specification. Thus I direct that the application and specification as amended proceed to sealing.

John Welsh
Delegate of the Commissioner of Patents

Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Watermark, Perth

CaseChat Overview and Summary

Pagoda Holdings Limited, formerly known as Nomad Structures International Limited, filed a patent application for modular tent structures which was opposed by Tensile Structures Pty Ltd, formerly known as Heyring Proprietary Limited. This opposition was lodged under section 59 of the Patents Act 1990. The dispute centred on whether the patent application complied with the requirements of the act and whether the claims were novel. The matter was initially decided in favour of the opponent, finding that the specification did not comply with section 40 and one claim lacked novelty. The applicant was given an opportunity to amend the specification, which they subsequently did.

The legal issues before the court involved assessing the validity of the patent application after the proposed amendments, specifically whether the amendments overcame the earlier objections and if the application was now in compliance with the legislative requirements. Additionally, the court needed to determine whether the amendments were acceptable to all parties involved and if the opponent had any further objections to the application proceeding to sealing.

Upon reviewing the amendments, the delegate of the Commissioner of Patents found that the changes effectively addressed the previous objections. Consequently, the delegate concluded that there were no lawful objections to the patent application and the complete specification. The delegate directed that the amended application and specification proceed to sealing. The court's decision took into account the agreement of both parties and the absence of any further objections from the opponent.

The final orders of the court included the discontinuance of the appeal, the advertisement of the request to amend the patent application, and the allowance of the amendments. The opponent had not indicated any further objections to the amended application. Therefore, the court granted permission for the application to proceed to sealing.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established