Preference Manufacturing (Aust) Pty Ltd v Breezway Australia (Holdings) Pty Ltd
[2011] APO 81
•25 October 2011
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Preference Manufacturing (Aust) Pty Ltd v Breezway Australia (Holdings) Pty Ltd [2011]
APO 81
Patent2007201165
Title:A Louvre System
Patentee: Breezway Australia (Holdings) Pty Ltd
Opponent: Preference Manufacturing (Aust) Pty Ltd
Delegate: Dr S. K. Aggarwal
Decision Date: 25 October 2011
Submission Filed: 13 September 2011, in Canberra
Catchwords: PATENTS – request under subregulation 5.5(1) - request for dismissal of opposition to grant of leave to amend notice of entitlement - no grounds of opposition available under section 102 and regulation 10.3 - patentee may ask for leave to amend without specifying a reason for making the amendment - establishment of a clerical error or an obvious mistake not an allowablilty criteria under section 104
Representation: Patentee: Cullens Patent and Trade Mark Attorneys, Brisbane
Opponent:Fisher Adams Kelly Patent & Trade mark Attorneys,
Brisbane
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2007201165
Title:A Louvre System
Patentee: Breezway Australia (Holdings) Pty Ltd
Date of Decision: 25 October 2011
DECISION
None of the grounds of opposition stand. The opposition is dismissed.
I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the opponent, Preference Manufacturing (Aust) Pty Ltd.
REASONS FOR DECISION
Background
Patent application 2007201165 (‘patent application”) was filed on 16 March 2007 as a divisional of patent application 2002342406 by Breezway Australia (Holdings) Pty Ltd (“patentee”). The patent application proceeded to acceptance and was advertised accepted and sealed on 28 May 2009 and 24 September 2009 respectively.
On 5 January 2011, the patentee filed a request to amend the Notice of Entitlement to correct a clerical error or an obvious mistake. Leave to amend the Notice of Entitlement was granted by the Commissioner on 4 February 2011 and the details of the amendments were advertised for opposition purposes on 17 February 2011.
On 9 May 2011, Preference Manufacturing Pty Ltd (“opponent”) filed a notice of opposition to the allowance of amendment to the Notice of Entitlement. A statement of grounds and particulars was served on 9 August 2011.
On 18 August 2011, the patentee requested a dismissal of the opposition under subregulation 5.5(1) along with their submission in support of the request for dismissal.
On 23 August 2011, the Patent Office advised the parties that the matter could be heard by way of written submissions and allowed the parties two weeks from the date of advice to provide written submissions in relation to the above matter to the Commissioner. The parties were also given one week (after the two weeks time) to provide any further submissions to the Commissioner and to the other side.
Subsequent to a request from the opponent for an extension of time to file written submissions, the time to provide submissions on the matter and any further submissions in response was extended until 13 September 2011 and 20 September 2011 respectively.
The opponent provided their submissions on 13 September 2011 via their patent attorney. On 21 September 2011, the patentee advised the Commissioner that they relied on their submissions filed on 18 August 2011 along with their request for the dismissal of the opposition without any further substantive submissions.
The law on dismissal of opposition
Dismissal of an opposition is provided for by regulation 5.5 of the Patents Regulations 1991 as follows
5.5 (1) An applicant may:
(a) within 1 month of being served with a copy of a statement by an opponent under paragraph 5.4(a); or
(b) if the complete specification in relation to an opposed application is re-examined under subsection 97(1) of the Act - within 1 month from the day when the re-examination is completed under regulation 9.5;
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 request for dismissal was made by the patentee within one month of being served with a copy of a statement by the opponent. The Commissioner informed the opponent of the request on 22 August 2011. Consequently the procedural prerequisites for dismissal have been satisfied.
Office practice in relation to dismissal of oppositions is set out in Les Laboratories Servier v Apotex Pty Ltd [2008] APO 11, where the delegate noted:
“a proceeding may be dismissed where a party has “no reasonable prospect of successfully prosecuting the proceeding” (see for example Garrett v Macks [2006] FCA 601, White Industries Aust Ltd v Commissioner of Taxation [2007] FCA 511, Boston Commercial Services Pty Ltd v GE Capital Finance Australasia Pty Ltd [2006] FCA 1352, Rogers v Asset Loan Co Pty Ltd & Ors [2007] FCA 195, Vans, Inc. v Offprice.Com.Au Pty Ltd [2006] FCA 137, E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 136, and Alphapharm Pty Ltd v Merck & Co Inc [2006] FCA 1227).”
Relevant to the present matter, the delegate in Les Laboratories Servier (supra) concluded several key principles as follows:
·“An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.
·In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than fanciful issue to be decided. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident. This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.
·A dismissal will generally be inappropriate where expert evidence is required to determine an issue. However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.
·Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success. However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed. If no particulars have been provided in relation to a ground of opposition then it may be considered to have no reasonable prospects of success.
·Care must be taken not to cause an injustice to a party by dismissing an opposition.”
It is the established practice of the Commissioner that an opposition can be dismissed either in whole or in part (see L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v Commonwealth Industrial Gases Ltd (1991) 24 IPR 77).
The question of when an opposition has no reasonable prospects of success is determined by considering the statement of grounds and particulars, which briefly outlines and circumscribes the case for the opponent. The statement identifies the material facts necessary for the particular grounds of opposition (see Mobay Corporation v The Dow Chemical Company (1992) 24 IPR 379). Where the statement of grounds and particulars does not disclose an arguable ground of opposition, then it may be appropriate to dismiss the opposition.
Details of the request for dismissal
The application for dismissal filed by the applicant states as follows:
“A request to amend the Notice of Entitlement filed in relation to the above mentioned patent was filed on 5 January 2011. An Opposition has been filed against allowance of this request for leave to amend. The Grounds of Opposition set out in the Statement lack any correct statutory basis and therefore, the Opposition has no reasonable prospect of success.”
Consideration of the grounds and particulars of the opposition
In the statement of grounds and particulars, two grounds of opposition are identified. As I have been asked to dismiss all grounds of opposition, I will deal with both the grounds together.
The grounds of opposition read as follows:
“1: Opposition under Section 104(4)
That the amendment of the Notice of Entitlement requested on January 5 2011 [sic] to amend wording to change the nominated applicant and the chain of title does not comply with section 104 and hence is not allowable.
2: Opposition under Reg 10.7 sub Reg (4) and/or Reg 10.5 sub Reg (3)
That the amendment of the Notice of Entitlement requested on 5 January 2011 to amend the name of the applicant and the chain of title does not comply with Section 228 and Regulation 10.7 sub Reg 1 and/or Reg 10.5
sub Reg 1.That the amendment of the Notice of Entitlement to remove reference to Breezway Australia Pty Ltd as applicant to introduce an assertion of an assignment from Breezway Australia Pty Ltd to Breezway Australia (Holdings) Pty Ltd does not comply with Section 228 and Regulation 10.7 sub Reg (1) and /or Regulation 10.5 sub Reg(1) and is therefore not allowable.”
The patentee submitted that each of subsection 104(4), subregulation 10.7(4) and subregulation 10.5(3) merely establishes who may lodge an opposition, section 228 deals with the power of the Commissioner to make regulations, and subregulation 10.5(1) requires the Commissioner to grant leave to amend a patent request or complete specification or other filed document. It was also submitted that regulation 10.7 relates solely to an entry in the Register and therefore does not apply in this case. The patentee argued that neither of these provisions provides a ground of opposition and therefore, the opposition has no reasonable prospect of success based on either of the above grounds.
The patentee also put the view that the grounds for the present opposition must lie either in section 102 or in regulation 10.3 which deal with amendments that are not allowable. However, none of these provisions apply to their request to amend the Notice of Entitlement (“any other document”) in relation to the patent.
While conceding that subregulation 10.7(4) relates to an entry in the Register as opposed to “any other filed document”, the opponent asserted that the grounds of opposition are that the amendment does not comply with section 104 and/or subregulation 10.5(3), and that the particular of most relevance is that the patentee has not established an obvious mistake or clerical error.
Criticizing the patentee’s submissions, the opponent stated that those submissions would mean that while the Patents Act 1990 and Patents Regulations 1991 provide the right to oppose a material alteration of “any other filed document”, they do not provide any grounds to do so. The opponent submitted that this is incorrect.
The opponent argued that subregulation 10.5(3) specifies that the Minister or another person may oppose allowance of an amendment if a notice is published under subregulation 10.5(2) which outlines the mechanics of implementing the rights specifically granted under section 104. They stated that subregulation 10.5(3) imports its own grounds, and that non-compliance with section 104 is itself a ground. In support of their contention, they referred me to HRC Project Design Pty Ltd v Orford Pty Ltd [1997] APO 12 where the Deputy Commissioner stated:
“Regulation 22.21(4) does not set out any specific grounds for opposing an application under Regulation 22.21(2) although they clearly must relate to the basis for granting the licence.”
The opponent advocated that the above statement, with appropriate changes, is also applicable to subregulation 10.5(3), and that section 102 and regulation 10.3 do not set out an exhaustive list of grounds available under section 104 and/or regulation 10.5.
The opponent put the view that correcting a clerical error or an obvious mistake is an allowability criteria for amendment to “any other filed document’ under section 104, and that the patentee has not established either a clerical error or an obvious mistake.
Based on the submissions before me, there appears to be no disagreement between the parties that the Patents Act and the Regulations (specifically section 102 and regulation 10.3) do not expressly specify any grounds for opposing an amendment to “any other filed document”. The question before me is whether the establishment of a clerical error or an obvious mistake is an allowability criteria or the basis of granting leave to amend under section 104, and whether it constitutes a ground of opposition.
Subsection 104(1) of the Patents Act 1990 reads as follows:
104(1)An applicant for a patent or a patentee, may subject to this Act, and subject to and in accordance with the regulations, ask the Commissioner for leave to amend the relevant patent request or complete specification, or any other filed document, for any purpose including either or both of the following:
(a) removing a lawful ground of objection to the request or specification, whether that objection is raised in the course of an examination or re-examination or otherwise;
(b) correcting a clerical error or an obvious mistake.
According to subsection 104(1), a patentee may ask the Commissioner for leave to amend “any other filed document” for any purpose. Since the application for leave to amend may be made for any purpose, it is clear to me that a patentee may ask the Commissioner for leave to amend without specifying a reason for making the amendment. It follows that even if the patentee were to specify a purpose for the amendment, there cannot be a requirement whereby they have to establish that particular purpose by way of some proof before the amendment is allowed.
While the opponent tried to apply the HRC (supra) decision to the present matter, I note that subregulation 22.21(2) is very restrictive as only persons who have taken certain actions may apply and are entitled to the grant of licenses. It is, therefore, clear that subregulation 22.21(2) specifies allowability criteria in terms of who can apply and obtain licenses. On the contrary, subsection 104(1) only specifies that an applicant or a patentee may apply. The substantive allowability criteria are found elsewhere.
In view of the above, I cannot agree that the establishment of a clerical error or an obvious mistake constitutes an allowablilty criteria and a ground of opposition under section 104.
I conclude that the statement of grounds and particulars has not identified any legitimate grounds of opposition. Therefore, there is no reasonable prospect of success of the any of the grounds of opposition in the present matter.
Conclusion
None of the grounds of opposition stand. The opposition is dismissed.
Costs
Ordinarily in proceedings such as these, costs follow the event. There appears to be no special circumstances applying in relation to this matter which warrants varying that approach. Therefore, I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the opponent, Preference Manufacturing (Aust) Pty Ltd.
Dr S. K. Aggarwal
Delegate of the Commissioner of Patents
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