Robert Philip Wulff v GB Design Limited - [2019] APO 4

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Robert Philip Wulff v GB Design Limited [2019] APO 4

Patent:2004290566

Title:Umbrella

Patentee: GB Design Limited

Opponent: Robert Philip Wulff

Delegate: O L Haggar

Decision Date: 11 January 2019

Hearing Date: 13 November 2018 in Canberra

Catchwords: PATENTS – section 104 – opposition to allowance of amendments filed during re-examination – amendments found to contravene subsection 102(1) and paragraph 102(2)(b) – opposition succeeds – amendments refused – costs awarded against the patentee

Representation: Patent attorney for the patentee: Kate McHaffie of AJ Park
Patent attorney for the opponent: Robert Wulff of Griffith Hack

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent:2004290566

Title:Umbrella

Patentee: GB Design Limited

Date of Decision: 11 January 2019

DECISION

The opposition succeeds. I refuse the amendments, and award costs according to Schedule 8 against GB Design Limited.

BACKGROUND

Patent 2004290566 (the patent) was granted to GB Design Limited (the patentee) on 11 February 2010. The patent was subsequently re-examined as requested by Robert Philip Wulff on 25 August 2016. Mr Wulff is a registered patent attorney with the firm Griffith Hack. To date the re-examination has progressed as follows:

14 September 2016: initial adverse re-examination report issued

14 November 2016: response filed including a first statement of proposed amendments (the first statement)

14 December 2016: subsequent adverse re-examination report issued

13 February 2017: response filed including a second statement of proposed amendments (the second statement)
15 February 2017: non-adverse re-examination report issued

The non-adverse re-examination report noted (with added emphasis) that “Your submissions and amendments, once they have been allowed, will overcome the objections that were raised in [the re-examination report of 14 December 2016]”. It is thus apparent that re-examination of the patent pursuant to the request filed by Mr Wulff on 25 August 2016 will not conclude if the amendments the subject of the first and second statements are not allowed.

Leave to amend was advertised on 2 March 2017. On 2 May 2017 Mr Wulff filed a notice of opposition to the allowance of the amendments the subject of the first and second statements. A statement of grounds and particulars (the SGP) followed on 2 June 2017.
Evidence in support was completed on 4 September 2017, evidence in answer was completed on 7 November 2017, and evidence in reply was completed on 7 December 2017.

A second request for re-examination of the patent was filed by Mr Wulff on 31 March 2017. On 11 April 2017 the parties were advised that this request would not be dealt with until the opposition under section 104 had been finalised.

On 6 March 2018 the patentee proposed a “further amendment” and asked that the opposition be stayed until the further amendment had been examined. The patentee made the same request in respect of the “alternative amendment” it proposed on 23 May 2018. On each occasion the parties were advised that the Commissioner did not intend to consider the amendment in question until either:

the amendments currently under…

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: [2019] APO 4
Decision Date: 11 January 2019

CaseChat Overview and Summary

GB Design Limited is the patentee of patent 2004290566, titled "Umbrella". Robert Philip Wulff opposed the allowance of amendments proposed by the patentee during the course of re-examination. The opposition was heard by the Commissioner of Patents' delegate on 13 November 2018 in Canberra. The delegate found that the amendments proposed to the patent contravened subsection 102(1) and paragraph 102(2)(b) of the Patents Act 1990 (Cth). The delegate refused the amendments and ordered the patentee to pay the opponent's costs in accordance with Schedule 8. The opposition was confined to the proposed amendments contained in the first and second statements of proposed amendments, and to the independent claims 27, 40 and 49 and their dependent claims. The delegate found that if amended as proposed, claims 27, 30, 38 to 40, 41, 44 and 49 would contravene subsection 102(1) and paragraph 102(2)(b) of the Patents Act 1990 (Cth). The delegate refused the amendments and awarded costs against the patentee.

Orders