Peerless Chain Company v Function Chains Pty Ltd - [2015] APO 52

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Peerless Chain Company v Function Chains Pty Ltd [2015] APO 52

Patent Application: 2009200745

Title:Flail Chain for Use in Debarking Trees

Patent Applicant:                   Function Chains Pty Ltd
Opponent:  Peerless Chain Company
Delegate:  R Subbarayan
Decision Date:  19 August 2015
Hearing Date:  2 June 2015 in Perth

Catchwords: PATENTS – section 59 - opposition to grant of patent – flail chain for debarking trees – shape of chain link - whether claims are novel – whether claims are inventive – whether claims are clear – whether claims are fairly based – whether claims are useful – none of the grounds made out – costs awarded

Representation: Patent applicant: Richard Baddeley of Watermark Patent and Trade Marks Attorneys
Opponent:FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2009200745

Title:Flail Chain for Use in Debarking Trees

Patent Applicant: Function Chains Pty Ltd
Date of Decision: 19 August 2015
DECISION
None of the grounds of the opposition have been made out. The claimed invention is novel, inventive, useful, clear and fairly based. I direct that the application proceed to grant subject to any appeal. I award costs according to schedule 8 against the opponent, Peerless Chain Company.
REASONS FOR DECISION
BACKGROUND

Application 2009200745 in the name of Function Chains Pty Ltd (“the applicant”) was filed on 25 February 2009. It does not claim any earlier priority. It was advertised as accepted on 21 March 2013. Peerless Chain Company (“the opponent”) filed a notice of opposition to the grant of the patent under section 59 of the Patents Act on 21 June 2013. This was followed by the Statement of Grounds and Particulars (SOGAP) that was filed on 24 September 2013. The matter was heard in Perth on 2 June 2015. The opponent advised that they would not appear at the hearing and that they rely on the submissions as set out in their SOGAP.
GROUNDS OF OPPOSITION
The SOGAP lists the grounds of opposition as Novelty, Inventive Step, Utility, Clarity and Fair Basis. The particulars for each ground also include submissions in relation to each of the grounds and I have relied on these as the submissions for the hearing.
EVIDENCE
The opponent’s evidence in support comprises copies of the prior art documents that they rely on. No expert evidence was filed.
The applicant’s evidence in answer comprises the following:
- Declaration of Jinhuan Huangfu dated 7 April 2014 with exhibits JH-1 and JH-2. Mr Huangfu is one of the named inventors of the opposed application.
- Copy of a declaration of John Wallingford dated 17 June 2013 with exhibits JW-1 to
JW-6 made in relation to an opposition to patent application 2006244311.
DTQ-1 to DTQ-10 made in relation to an opposition to patent application 2006244311.
- Copy of a declaration of David Thomas Quill dated 4 November 2013 with exhibits
SPECIFICATION
The specification states that the invention relates to a flail chain for use in debarking trees. Debarking is the process of removing the bark from felled tress before the trees…

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: [2015] APO 52
Decision Date: 19 August 2015

CaseChat Overview and Summary

The case before the Australian Patent Office involved a patent application for a flail chain for use in debarking trees, filed by Function Chains Pty Ltd. The opponent, Peerless Chain Company, raised an opposition to the grant of the patent on grounds of novelty, inventive step, utility, clarity, and fair basis. The hearing took place on 2 June 2015, with the opponent electing to rely on its written submissions. The court examined the claims, finding them clear and well-defined in light of the specification and drawings. In terms of novelty, the court held that the invention was not anticipated by prior art documents, as they did not clearly and unmistakeably disclose all the essential features of the claimed invention. The inventive step was also upheld, as the combination of the prior art did not suggest the claimed invention to a person skilled in the art. The court found the claims to be fairly based on the specification and concluded that the invention met the utility requirement. The court determined that none of the grounds of opposition were made out, directing that the application proceed to grant subject to any appeal. Costs were awarded to the applicant according to schedule 8.

Orders